“I am very grateful to have Danielle co-chair our Intellectual Property Group and extremely confident in her ability in moving the group forward to help us accomplish our goals. Having worked with Danielle for nearly ten years, I can attest that she has proved to be a great leader to our group. I am certain that her exceptional talents will be a great benefit to both the firm and our clients,” said Londa.
“At Norris McLaughlin, I have been fortunate to benefit from the mentorship and guidance of consummate professionals that provide top tier legal services to our clients. I am honored to help impart that knowledge on the next generation of attorneys at Norris McLaughlin,” said DeFilippis.
The Intellectual Property Practice Group at Norris McLaughlin provides sophisticated intellectual property counsel to domestic and international clients on patent, trademark and copyright matters. Several members of the group have a background in a broad range of engineering and sciences, including chemical, biochemical, biotechnology, electrical, mechanical, and computer software and hardware. They serve clients in manufacturing, marketing, and service industries, including chemicals, pharmaceuticals, biotechnology, electronics, telecommunications, consumer foods, computer hardware and software, Internet, medical devices, health care, and banking. Many members of the group are registered to practice before the United States Patent and Trademark Office.
DeFilippis focuses her practice on intellectual property matters and litigation. She represents individual and corporate clients in all phases of litigation, from commencement through trial, and regularly serves as lead counsel in cases before federal and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and alternative resolution forums. DeFilippis has handled cases involving trademark and copyright infringement, false advertising, commercial disparagement, business torts, deceptive trade practices, Lanham Act claims, state and federal unfair competition laws, and other business disputes. She is an author for Norris McLaughlin’s trademark, copyright, and unfair competition blog, More Than Your Mark. DeFilippis received her J.D. from Seton Hall University School of Law and her B.A. from The Pennsylvania State University.
New York, NY (January 8, 2014) – Bruce S. Londa, a Member of the Bridgewater-based law firm Norris McLaughlin, P.A., has been named Chair of the firm’s Intellectual Property Group. Londa practices out of the firm’s New York City office, where the IP Group is based.
“We are very grateful to have Bruce chairing our Intellectual Property Group with his many years of leadership experience. We are extremely confident in his ability to move the group forward and help the firm accomplish its goals,” said Alison L. Galer, Managing Partner of Norris McLaughlin, P.A..
The Intellectual Property Group at Norris McLaughlin, P.A. provides sophisticated intellectual property counsel to domestic and international clients on patent, trademark and copyright matters. Several members of the group have a background in a broad range of engineering and sciences, including chemical, biochemical, biotechnology, electrical, mechanical, and computer software and hardware. It serves clients in manufacturing, marketing, and service industries, including chemicals, pharmaceuticals, biotechnology, electronics, telecommunications, consumer foods, computer hardware and software, Internet, medical devices, health care, and banking. Nine members of the group are registered to practice before the United States Patent and Trademark Office.
Londa, a resident of Brooklyn, concentrates his practice on domestic and international patent and trademark prosecution in the firm’s New York City office. He has extensive experience on technology licensing, transfer counseling, opinion work, copyright law, and related litigation. His areas of technical expertise include the chemical, metallurgical, mechanical, computer software, internet business method, medical and biological arts. He has authored articles on the international trademark system, arbitration of international licenses, and the similarity of U.S.-European pharmaceutical patent law.
Londa earned his B.S. in Chemical Engineering from the University of Pennsylvania in 1985 and his J.D. from the Fordham University School of Law in 1988. He is admitted to practice in New York and before the United States District Court for both the Southern District and Eastern District of New York. He is also registered to practice before the United States Patent and Trademark Office. Prior to joining Norris McLaughlin, Londa was managing partner at Londa & Gluck LLP of New York, NY.
Norris McLaughlin, P.A. Wins Preliminary Injunction in Trademark Case for COINTREAU
New York, NY (October 16, 2012) – In an important ruling by a federal judge in Dallas, Texas, Cointreau Corporation, owner of rights in the famous “COINTREAU” trademark for orange liqueur, has succeeded in its request for a preliminary injunction prohibiting the sale of a competing orange liqueur product sold under the trademark “CONTROY.” Cointreau Corporation, represented by Norris, McLaughlin & Marcus, P.A., was able to convince the court that Cointreau was likely to succeed in showing that the use of the trademark Controy, on a product manufactured by Mexico’s La Madrilena S.A. de C.V. and distributed in the United States by Pura Vida Tequila Company, LLC, dilutes Cointreau’s rights in its famous brand by blurring its distinctiveness, based on the close similarity of the two marks. The injunction bars the defendants from importing into, or selling, any orange liqueur in the United States under the “CONTROY” name. In so ruling, the Court noted “In this case, damage to the goodwill and selling power associated with the Cointreau Marks would be difficult if not impossible to calculate in monetary terms. Cointreau Corp. has thus shown a substantial threat that it will suffer irreparable injury in the absence of an injunction.”
Edouard Cointreau first distilled his eponymous orange liqueur in 1875. The Cointreau distillery began selling the liqueur in that same year and brought it to market in the United States by 1885. Today, Cointreau is the second-most-popular orange liqueur in the United States by volume. “With the court’s decision supporting the fame and distinctiveness that our brand has earned over the past 140 years, Cointreau can put aside the legal issues, and focus on our mission to provide consumers with our premium orange liqueur,” says Cointreau Vice-President and General Counsel David Babkow.
Londa has experience in both domestic and foreign patent and trademark prosecution, as well as technology licensing and transfer, counseling and opinion work, copyright law, and related litigation. Londa is admitted to practice law in New York and before the U.S. District Court for both the Southern and Eastern Districts of New York. He is also registered to practice before the United States Patent and Trademark Office. He received his J.D. from Fordham University School of Law in 1988 and his B.S. degree in Chemical Engineering from the University of Pennsylvania in 1985. He is a member of the New York and American Intellectual Property Law Associations and the International Trademark Association. Bruce practices out of the firm’s New York City Office.
Hamburg has expertise in all aspects of trademark and copyright law, handling both transactions and litigation. Practicing in the firm’s New York City office, she assists clients in a broad range of industries with their intellectual property needs. For the past three years, Hamburg has been recognized as a New York Super Lawyer® for Intellectual Property and Intellectual Property Litigation. Only five percent of New York lawyers are given this honor. Hamburg earned her J.D. from Columbia University School of Law, where she was a member and editor of the Columbia Law Review, in 1990, and her B.A., magna cum laude, in English from Wellesley College in 1987.
DeFilippis has represented clients in cases involving trademark and copyright infringement, business torts, deceptive trade practices, Lanham Act claims, and state and federal unfair competition laws. Her commercial experience includes claims involving breach of contract, breach of fiduciary duty, fraud and other business disputes. DeFilippis earned her J.D. from Seton Hall University School of Law, where she was Editor and Director of Staffing and Symposia of the Legislative Journal, in 2004, and earned her B.A. in International Politics with a minor in Japanese from The Pennsylvania State University in 2001.
The Intellectual Property (“IP”) Group at Norris McLaughlin, P.A. is dedicated to providing sophisticated intellectual property counsel to domestic and international clients having a need for patent, trademark and copyright counsel. In the trademark and copyright areas, the firm’s IP Group services include litigation, arbitration and dispute resolution of complex federal court cases involving trademarks and copyrights as well as transactional work, clearance and counseling with respect to trademarks and copyrighted content, and prosecution of applications before the U.S. Trademark Office and U.S. Copyright Office. The IP Group also has expertise in litigating contentious proceedings before the U.S. Trademark Office and cybersquatting proceedings in arbitral forums approved by the Internet Corporation for Assigned Names and Numbers.
Norris McLaughlin, P.A. 721 Route 202-206, Suite 200
P.O. Box 5933
Bridgewater, NJ 08807-5933
Contact: Edward C. Miller, Jr.
Chief Marketing Officer
(908) 722-0700 x4224
Intellectual Property Attorneys to Present CLE Program to the Bar Association of Lehigh County
Allentown, PA (September 29, 2011) – The Intellectual Property Law Group of Tallman Hudders & Sorrentino, the Pennsylvania Office of Norris McLaughlin, P.A. , will present IP for the General Practitioner: Patents and Trade Secrets to the Bar Association of Lehigh County on October 4, 2011. Presenters include firm Members William R. Robinson, Bruce S. Londa, and Jeanne Hamburg. Registration and lunch will begin at 11:15 a.m., and the program will run from 12:15 p.m. to 1:15 p.m. Attendees will receive 1 CLE credit. For more information and to register for this event, visit the BALC website.
The presentation will give an overview of what intellectual property (IP) attorneys do, and how to spot common IP issues in an attorney’s everyday practice. The speakers will review the differences between patents, trademarks, and copyrights. Attendees will learn to deal with common copyright and trademark issues their clients will likely encounter in advertising and the promotion of goods on the internet, including the recovery of domain names using clients’ trademarks, remedies for the purchase of clients’ marks as key words from search engines such as Google, and the theft of copyrightable content on the internet. The discussion will cover how best to protect a client who has hired a third party to develop a web site, deal with common IP issues posed by the sale of a business, and respond when a client receives a demand of copyright infringement from a software provider.
Robinson has practiced intellectual property law since 1972, and joined Norris McLaughlin, P.A. in 1998 as Chair of the firm’s worldwide Intellectual Property Group. Prior to joining the firm, Robinson was the managing member of Brooks Haidt Haffner & Delahunty, a New York City intellectual property boutique; and before that a member of the legal department at Bestfoods, where he served as both Senior Patent Attorney and Corporate Counsel. He has also served as in-house counsel to Stauffer Chemical Co., and as an associate with Brumbaugh Graves Donohue and Raymond (now Baker Botts L.L.P.). Robinson is a member of the New Jersey and New York Bars and is admitted to practice before the United States Patent and Trademark Office, the U.S. District Courts for the Southern and Eastern Districts of New York and the District of New Jersey, the U.S. Court of Appeals for the Federal Circuit, and the Supreme Court of the United States. Robinson graduated from the University of Maryland School of Law with a J.D. in 1972, and from Rutgers University with a B.S. in Chemical Engineering in 1969.
Londa has experience in both domestic and foreign patent and trademark prosecution, technology licensing and transfer, counseling and opinion work, copyright law, and related litigation. His areas of technical expertise include the chemical, metallurgical, mechanical, computer software, Internet business method, medical, and biological arts. Londa has authored articles on topics including the international trademark system, arbitration of international licenses, and the similarity of U.S.–European pharmaceutical patent law. Londa is admitted to practice in New York; and before the U.S. District Court for both the Southern and Eastern Districts of New York, and the United States Patent and Trademark Office. He received his J.D. from Fordham University School of Law in 1988 and his B.S. degree in Chemical Engineering from the University of Pennsylvania in 1985. Londa is a member of the New York and American Intellectual Property Law Associations and the International Trademark Association.
Hamburg, Chair of the firm’s Internet Law Group, has expertise in all aspects of copyright and trademark law, both in litigation and in the transactional area. She assists clients in a broad range of industries with their IP needs, including Internet-based businesses and those in the financial services, publishing, jewelry, clothing, and gaming industries. Hamburg litigates copyright, trademark and cybersquatting cases through trial. Additionally, she has recovered domain names for clients in many Uniform Domain Name Dispute Resolution Proceedings, and prosecuted and defended numerous opposition and cancellation proceedings and ex parte appeals before the Trademark Trial and Appeal Board. In the transactional area, Hamburg is experienced in trademark and copyright licensing, traditional print and online publishing, software development, web site development, content licenses and electronic subscriptions. She counsels clients on intellectual property aspects of mergers and acquisitions. She is expert in copyright and trademark clearance, prosecution and enforcement. Hamburg is a frequent speaker and writer on intellectual property topics. Hamburg earned her J.D. from Columbia University School of Law in 1990, where she was a member and editor of the Columbia Law Review, and her B.A., magna cum laude, in English and Psychology, from Wellesley College in 1987. Hamburg is active in many trade groups in industries whose clients she serves, and is a member of the International Trademark Association where she was nominated and serves as Vice Chair of the Law Firm Committee. Previously she served on INTA’s Membership Committee, and as Contributing Editor for INTA’s Trademark Basics E-Learning Program and Trademark Trial and Appeal Board E-Learning Program (online courses), and as Chairman and Contributing Editor for its Legal Ethics and Professionalism for Trademark Practitioners Program (online course).
As of November 2, 2003, the United States will formally become a member of the international trademark system known as the Madrid Protocol. The Protocol is a treaty that provides for an international procedure to obtain multi-national trademark protection and international registration by way of a centralized system. Now United States trademark owners, along with trademark owners from other member countries, may file an international trademark application based on their national applications, simultaneously allowing these applicants to enjoy the advantage of an early priority date, while cutting down on the costs traditionally associated with international trademark registration.
In order to obtain international registration pursuant to the Madrid Protocol, a U.S. applicant must first file a U.S. national application or have an existing U.S. trademark registration. Rather than filing separate national applications in each of the foreign countries of interest, the applicant may file a single international application, designating those countries. While the application is administered by the World Intellectual Property Organization (“WIPO”) in Switzerland, U.S. applicants may file their international application through the U.S. Patent and Trademark Office.
Once the formalities of the application are certified by WIPO, the application is forwarded to each of the designated national offices, where it will be examined under the registration and review procedures of those countries. A national office may require additional information or require the applicant to respond to office actions. In that case, the applicant would have to appoint a local attorney to correspond with the national office. However, as most countries do not engage in a rigorous examination, it is expected that the need for local counsel would be sharply reduced overall. Each country in which the applicant is seeking an extension of protection has eighteen months to review and reject the application. Failure to reject the application within this time will result in an extension of protection to the applicant, unless opposition proceedings have commenced, in which case, additional time may be provided.
The primary advantage of the Madrid Protocol to U.S. trademark owners is that it permits simultaneous registration in up to 57 foreign countries, by way of a single filing through the U.S. Patent and Trademark Office, in the English language, using U.S. currency, avoiding foreign attorney costs in most cases. Once the owner of the mark perfects the registration procedure under the Madrid Protocol, the registration initially is effective for ten years, and is renewable for further ten-year periods. Renewal is achieved by a single filing with WIPO and payment of a corresponding fee. Not only does the trademark owner renew international protection through this procedure, but national rights are renewed as well. Furthermore, any changes to the registration such as assignments or name changes may be made centrally in a single filing. Since the cost of retaining multiple foreign attorneys is avoided, the cost savings realized through the filing of a Madrid Protocol application can be substantial. Another advantage lies in the possibility to convert an existing foreign trademark registration portfolio into a single International Registration.
One drawback of the Madrid Protocol system, compared to obtaining discrete national registrations, is that, during the first five years, the International Registration is dependent upon the underlying U.S. national registration. Therefore, if the U.S. registration of the trademark is rejected or successfully opposed, or perhaps the coverage of goods is limited, the International Registration and all of the rights obtained in the member countries will be canceled or limited accordingly. It is also noted that while most member countries would not require actual use to proceed to registration, the U.S. application will not be approved for registration (in most cases) without actual use, and this may therefore delay or invalidate the International Registration. However, the Madrid Protocol does provide that the owner of such a mark may subsequently transform the international rights into corresponding national rights by instituting national filings within three months.
A further drawback of the Madrid Protocol is that the European Union is not a member apart from the individual European countries. Therefore, applicants cannot take advantage of a Community Trademark Registration (“CTM”), which will soon be expanded to cover 25 countries, by way of the Madrid Protocol. Rather, separate national registrations would have to be designated. An alternate approach, therefore, may be to file a separate CTM application, while using the Madrid Protocol for other national registrations.
It can be seen that there is now an opportunity for U.S. trademark owners to obtain foreign trademark registrations in a much more economic and simple fashion. However, in view of several important limitations, it may be that it is better to proceed either through regular national filings or through a combination of regular filings with an international filing. This latter option will continue to come into play in any event, since the current membership in the Madrid Protocol is not universal.
The trademark attorneys at Norris, McLaughlin & Marcus, P.A. are experienced in analyzing a mark in terms of international protection and can offer an individualized plan to suit the needs of each trademark owner. We can also review existing trademark portfolios to determine whether it would be beneficial to convert these into an International Registration.