Lawyer Profile

Image of Edward E. Vassallo

Edward E. Vassallo

Fitzpatrick, Cella, Harper & Scinto
  • Recognized Since:
    2003
  • Recognized in:
    Copyright Law
    Litigation - Intellectual Property...
  • Law School:
    Fordham University
  • Website:
    http://www.fitzpatrickcella.co...
  • Phone:
    (212) 218.2100
  • Location:
    1290 Avenue of the Americas
    New York, NY 10104-3800
"Edward Vassallo is thorough, knowledgeable, and precise. Ed always gives advice and executes projects we give him in a manner that yields positive results."
"Ed is a skilled and thoughtful litigator. His cordial demeanor adds to his role as counselor."

Lawyer Bio

Edward E. Vassallo is involved in all aspects of patent, trademark and unfair competition litigation, including trials and appeals, in the chemical, mechanical and computer fields, and in oppositions, licensing and opinion work, for clients including S.C. Johnson & Son, Electrolux, Phillips-Van Heusen, Calvin Klein, Inc., Johnson Outdoors, Dreyfus, Revlon, Exxon and IBM. Mr. Vassallo also has had extensive experience in advising clients regarding the intellectual property aspects of mergers, acquisitions and divestitures. He is past president of the New York Intellectual Property Law Association.

Mr. Vassallo is listed in the International Who's Who of Trademark Lawyers, was named by Euromoney Legal Media Group as one of the world's leading trademark law practitioners in 2003, 2006, 2008, and 2009 editions and was selected as a leading intellectual property law practitioner in every edition since 2003 of the Best Lawyers in America. He was also listed in Legal 500 2008-2011 for Trademarks: litigation and 2012 for Patent litigation: full coverage, Trademarks: litigation and Trademarks: non-contentious (full coverage) as “absolutely outstanding – he is thoughtful, considered, courteous and impressively prepared.” He was also listed as a Top New York City Intellectual Property Litigator in the 2006-2011 issues of Super Lawyers: New York Metro Edition. Mr. Vassallo was recognized in the PLC Which Lawyer 2011 edition a top IP non-patent litigation attorney.
Read more on firm website

Education:

  • Fordham University , J.D., graduated 1973
  • Columbia University, BS, graduated 1965

Bar Admissions:

  • New York, New York State Bar Association

Affiliations:

  • American Bar Association - Member
  • Association of the Bar of the City of New York - Member
  • Federal Circuit Bar Association - Member
  • New York Intellectual Property Law Association - Past President

Recognized in The Best Lawyers in America for work in:

  • Copyright Law
  • Litigation - Intellectual Property
  • Litigation - Patent
  • Trademark Law

Areas of Expertise:

  • Litigation
  • Trademark
 

Attorney Client Comments

"Edward Vassallo is thorough, knowledgeable, and precise. Ed always gives advice and executes projects we give him in a manner that yields positive results."

"Ed is a skilled and thoughtful litigator. His cordial demeanor adds to his role as counselor."

Firm Details

Image for Fitzpatrick, Cella, Harper & Scinto View Firm Profile
Fitzpatrick, Cella, Harper & Scinto
http://www.fitzpatrickcella.co...
 
Headquarters
1290 Avenue of the Americas
New York, NY 10104-3800
(212) 218.2100
3 Office Locations
in 1 Country

United States

United States

California

California

Costa Mesa, CA

650 Town Center Drive, Suite 1600

Costa Mesa, CA 92626-7130

United States

(714) 540.8700

Get Directions

District of Columbia

District of Columbia

Washington, DC

975 F Street, NW

Washington, DC 20004-1462

United States

(202) 530.1010

Get Directions

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Attorney Case History

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
questions.

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
immediately ceased.

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.