Intellectual Property & Competition Law

TRAILBLAZER Trademark Trade Dress Trade Secret False Advertising Unfair Competition Copyright Cases

TRAILBLAZER Representative Cases. A sampling of some of the many interesting cases TRAILBLAZER’S team of attorneys has worked on over the years in the fields of trademark, trade dress, trade secret, false advertising, unfair competition, right of publicity, design patents, and consumer class actions.

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Representative Cases

A sampling of some of the many interesting cases

our team has worked on over the years.

 

Copyright

The Sieger Suarez Architectural Partnership, Inc. v. Arquitectonica International Corp. et al., Case no. 13-CV-21928 (S.D.Fla. 2013).  

   Represented the defendant, Arquitectonica International, in a copyright infringement action relating to an architectural work reflecting the design of a 40-story luxury condominium tower.  We, along with our co-counsel, moved to dismiss the claims on the basis of a lack of substantial similarity between the works and because the claims were brought after the expiration of the applicable statute of limitations.  The Court granted the motion to dismiss with prejudice, finding as a matter of law, the works were not substantially similar and that the statute of limitations had run, which barred the plaintiff from further amending or re-filing its claims.  

 

Donaldson Group Architects, P.A. v. The Polo Club of Boca Raton Property Owners Assoc., Inc., Case no.: 9:12-cv-81071 (S.D.Fla. 2012) 

   Represented the defendant in a copyright infringement matter relating to technical, architectural drawings for a recreational pool facility.  We moved for, and obtained, the dismissal of the plaintiff's initial and first amended complaints.  Our success on those motions led the plaintiff to agree to voluntarily dismiss its claims with prejudice.  

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False Advertising & Unfair Competition

Mollicone v. Universal Handicraft, Inc., et al., Case no. 17-cv-21468 (S.D.Fla. 2017) 

   Represented defendants in a consumer class action that was commenced in California, in 2016, alleging that defendants were falsely advertising the anti-aging properties of a line of twenty-two skincare products, including the nature and efficacy of a plant-stem based ingredient.  Obtained transfer of the case to the Southern District of Florida, conducted extensive discovery, including (among other things) deposing the class representative and a representative of the Swiss company that developed the ingredient the class plaintiffs took issue with.  Ultimately, our extensive discovery efforts led to a successful mediation whereby the parties reached a Settlement Agreement, which has been preliminarily approved by the court and is pending final approval. 

 

Zeltiq Aesthetics, Inc. v. Hyperbarics of South Florida, Inc., et al., Case no. 14-cv-23203 (S.D.Fla. 2014)

   Represented multiple defendants in a trademark infringement and false advertising action relating to fat reduction procedures and devices offered under the COOLSCULPTING trademark.  Investigated plaintiff’s business and advertising, and based thereon filed a counterclaim seeking to cancel plaintiff’s trademarks for fraud upon the United States Patent and Trademark Office, genericism, and for false advertising relating to its claims of long-lasting results and FDA approval.  These efforts led to an early, negotiated settlement among the parties.  

 

Northern Trust Corp, et al v. Carl Domino, In., et al., Case no. 9:05-cv-80678 (S.D. Fla. 2005)

   Represented plaintiff, Northern Trust Corp., in a false advertising case relating to the advertising of investment advisory services. Our efforts ultimately led to a negotiated settlement among the parties.  

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Right of Publcity

Reese Witherspoon v. Motif Enterprises, LLC, et al., Superior Court of the State of California, County of Los Angeles, Western District, Case no. SC 120883  

   Along with a colleague in California, we represented one of several defendants accused by Ms. Witherspoon of marketing look-alike Reese Witherspoon engagement rings. We secured coverage for the defendant under the advertising injury provisions of its insurance policy, conducted research relating to nominative fair use and the First Amendment limitations with respect to the right of publicity, conducted discovery, and settled the case.  

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Trademark & Trade Dress

For Life Products, LLC v. The Sherwin-Williams Company, Case no. 16-cv-60176 (S.D.Fla. 2016)

   Represented defendant, Sherwin-Williams, in this trademark infringement action, wherein it was accused of infringing the plaintiff's REJUVENATE trademark. We actively litigated the case, including moving to dismiss and investigating the plaintiff's claim of priority of use. During our investigation, we developed evidence that the plaintiff was not using the asserted trademark as early as it claimed, which allowed our client to claim priority of use. Based upon our evidence, the case settled in advance of trial. 

 

Universal Handicraft, Inc. v. Parfums Christian Dior, S.A., Case no.: 13- cv-20872 (S.D.Fla. 2013)

   Represented the plaintiff/counter-defendant in an action seeking a declaratory judgment that it had not infringed the defendant/ counter-plaintiff’s J'ADORE trademarks as used within the cosmetics industry.  After conducting extensive research into the history of the J'ADORE marks, we sought cancellation of Christian Dior's J'ADORE trademark registrations on multiple grounds, including that one registration was void ab initio due to improper assignment of an intent-to-use application, and the other registration had been obtained by fraud upon the United States Patent and Trademark by means of a knowing misrepresentation as to the foreign registration on which it was based.  As a result of these efforts, the parties negotiated a worldwide settlement of their dispute which the court made part of the public record.  

 

Match.com, LLC v. Fiesta Catering International, Inc., Case no. 1:12-cv-363 (E.D. Va. 2012)

   Represented multiple defendants under a condensed pre-trial schedule in a trademark infringement and cyber-piracy matter relating to the online dating industry wherein the defendants were accused of infringing plaintiff's MATCH.COM trademarks. Ms. Latham conducted extensive factual research into plaintiff's use of the trademarked term, as well as into several hundred third-party market-participants' use of the term.  As a result of that fact-gathering, we were able to develop and assert defenses and a counterclaim that sought to cancel plaintiff’s MATCH.COM trademark registrations on the basis of the mark's generic nature and plaintiff’s failure to police its trademark against rampant third-party use within the industry. Additionally, we engaged an expert in the online dating industry to opine as to market conditions, as well as the meaning and trade-usage of the trademarked term within the industry. Shortly after asserting the counterclaim and disclosing the defendants' expert's report, the plaintiff initiated settlement discussions and the parties negotiated a resolution of the case in advance of trial. 

 

Ryder Clips Unlimited, Inc. v. Petchel, Case no. 1:09-cv-20324 (S.D. Fla. 2009)

   Represented the defendant in a trade dress infringement matter relating to the design of certain motorcycle accessories and the advertising thereof.  Close scrutiny of the claims revealed a basis for moving to dismiss the complaint on several grounds, including on the basis of functionality, lack of standing, lack of acquired distinctiveness, and genericism.  This effort to expose the flaws in the complaint led to the plaintiff voluntarily dismissing its claims within three days of the motion to dismiss being filed and the court sua sponte setting the motion for a hearing. 

 

Wyndham Hotels and Resorts et al. v. Merco Group at GB Hotel, LC., et al., Case no. 08-cv-13271 (11th Cir. 2006)

   Represented defendant, Merco Group at GB Hotel, LC., in a trademark counterfeiting case regarding the resort services industry. Drafted and filed an appeal of the district court’s decision to the U.S. Court of Appeals for the Eleventh Circuit and obtained oral argument, which led to a settlement. 

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Trade Secret

Benz Research and Development Corp. v. Mark'Ennovy Personalized Care, S.L., et al., Case no. 2011CA004732NC, Twelfth Judicial Circuit, Sarasota County 

   This trade secret misappropriation case was filed in 2011 by plaintiff's previous counsel, alleging that a former Benz Research engineer improperly acquired and disclosed Benz's trade secrets for the benefit of his new employer and its affiliates.  Mr. Feldman was hired shortly before trial was scheduled to begin in September 2014, and he succeeded in obtaining a continuance. He then went on to discover extensive evidence that defendants had been concealing, which showed their misappropriation and use of Benz technology. After extensive briefing and a lengthy hearing, the trial court entered a default against the former employee, struck affirmative defenses of the new employer and its affiliates, and awarded Benz its attorneys fees. Thereafter, the case proceeded to a jury trial, which resulted in a verdict for Benz for willful misappropriation of trade secrets and a damage award in excess of $6 million dollars.   

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Miscellaneous Notables

Cigarette Racing Team, LLC vs. Mystic Powerboats Inc., Case no. 15-cv-20575 (S.D.Fla. 2015)

   Represented the defendant in this design patent, trade dress infringement and unfair competition case involving a hard top roof design for high-performance power boats. Conducted exhaustive investigation of the validity of plaintiff's design patent, which revealed serious Section 102 novelty issues. We filed an answer and counterclaim seeking a declaration of invalidity. Thereafter, the case was set for early mediation, whereby it settled favorably.  

 

In Re: Yacht Master 88, A Cayman Islands Corporation, et al., Case no. 0:10-cv-60819 (S.D. Fla. 2010)

   Represented yacht owner in obtaining discovery from a U.S. citizen living in a foreign country, pursuant to 28 U.S.C. § 1782, for use in Italian arbitration proceedings relating to breach of a yacht-building contract.   

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