The Dreyfus Corporation and MBSC Securities Corporation National Arbitration Forum 2009 — Fitzpatrick successfully represented The Dreyfus Corporation and MBSC Securities
Corporation in a proceeding brought before the National Arbitration Forum pursuant
to ICANN’s Uniform Domain Name Dispute Resolution Policy. The respondents in the
proceeding used false aliases to register the dreyfuscorp.com and dreyfus-corp.com
domain names and then used those domain names to pass themselves off as
representatives of The Dreyfus Corporation to induce individuals into revealing
private financial information, undoubtedly for financial gain. The National Arbitration
Forum panel will transfer the dreyfuscorp.com and dreyfus-corp.com domain names
to The Dreyfus Corporation and MBSC Securities Corporation and concluded that:
(1) the Dreyfus Corporation and MBSC Securities Corporation had established rights
to its DREYFUS FUNDS INC trademark; (2) that the dreyfuscorp.com and dreyfus-corp.com
domain names are confusingly similar to DREYFUS FUNDS INC; (3) that respondents
had no rights or legitimate interests in the domain names; and (4) that respondents
use of the domain names constituted bad faith registration and use.
Kargo Global, Inc. v. Advance Magazine Publishers, Inc. S.D.N.Y. 2007 — Fitzpatrick attorneys filed successful "Daubert" motions to exclude all of plaintiff's
expert reports in a trademark infringement case for client Condé Nast.
Judge Keenan held that the survey conducted by plaintiff's survey expert was so flawed
that the risk of prejudice far outweighed any probative value. Major flaws included the
survey's failure to simulate the real world circumstances, its use of stimuli that did not
fairly characterize the products/services at issue, and its use of leading methodology and
Judge Keenan also excluded testimony from the damages experts because, without any
admissible evidence of confusion, the damages testimony was irrelevant and inadmissible.
Phillips-Van Heusen Corp., Calvin Klein, Inc., and Calvin Klein Trademark Trust v. Calvin Clothing Company, Inc. and Star Ride Kids, Inc. S.D.N.Y. 2006 — On behalf of their clients Phillips-Van Heusen and Calvin Klein, Inc., Fitzpatrick
attorneys recently prevailed after a one week trial by winning a judgment that
Calvin Clothing's attempt to use and register CALVIN trademarks for a wide variety
of apparel infringed on CALVIN KLEIN and CALVIN trademarks, and diluted these
trademarks under New York law. Judge Rakoff found that Calvin Clothing Company's
30 years of priority over Calvin Klein with use of CALVIN for one category of apparel
was not a basis for it to expand into other categories of apparel. Also, Judge Rakoff
found that use of CALVIN and CALVINS as abbreviations of the CALVIN KLEIN trademarks
by the public and media inured to Calvin Klein, Inc.'s benefit, and was a basis for common
law rights in CALVIN. Judge Rakoff ordered that defendants' expanded use of CALVIN be
Nabisco v. Warner-Lambert Co. 2d Cir. 2000 — Nabisco sued our client Warner-Lambert alleging that
Warner-Lambert's "Dentyne Ice" chewing gum trademark
infringed Nabisco's trademark on its "Ice Breakers®" chewing
gum. The district court found as a matter of law that there
was no likelihood of confusion between the two trademarks
and granted summary judgment in favor of Warner-Lambert.
On June 5, 2000 the Second Circuit affirmed this decision,
holding that the use of the two marks "is so dissimilar as to
require judgment for Warner-Lambert."
Advance Magazine Publisher’s, Inc. d/b/a/The Conde Nast Publications, Inc. v. Vogue Int’l, Inc. D.N.J. 2000 — Fitzpatrick attorneys acted as lead counsel in this Federal District court action
to obtain the internet domain name TEENVOGUE.COM for their client, The Conde
Nast Publications, after the defendant had misappropriated the name for his
business. The Court issued a preliminary injunction and, pursuant to a motion for
summary judgment, a permanent injunction and an order requiring defendant to
transfer the domain name to Conde Nast.