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As a Litigator, Judge Sotomayor Handled Many Trademark Matters

Judging by her answers on the U.S. Senate Committee on the Judiciary’s Questionnaire for Judicial Nominees, Judge Sonia Sotomayor litigated an impressive amount of trademark issues. Here are some excerpts (with slight edits by STL): 

  • “I left the District Attorney’s office in 1984, and joined the firm of Pavia & Harcourt. My typical clients were significant European companies doing business in the United States. My practice at that firm focused on commercial litigation, much of which involved pre-trial and discovery proceedings for cases that were typically settled before trial. I appeared in numerous preliminary injunction hearings in trademark and copyright cases, and post-motion hearings before magistrate judges on a variety of issues.”
  • “I represented the defendant Lozza SpA in this trademark infringement abandonment, unfair competition, breach of contract, and rescission action [Fratelli Lozza (USA) Inc. v. Lozza (USA) & Lozza SpA.] The plaintiff, a corporation owned and operated by a former shareholder of the defendant corporation, claimed the defendant had breached an agreement with the plaintiff for the trademark use of “Lozza” in the United States, had abandoned use of its marks in the United States, and had infringed certain of the plaintiff’s trademarks. I conducted the trial for the lead defendant, and secured a dismissal of all of the plaintiff’s claims. The Court also issued an injunction against the plaintiff’s use of the defendants’ marks, and of false and misleading terms in its advertising.”
  • “From 1985, my former firm represented Fendi S.A.S. di Paola Fendi e Sorelle (“Fendi”) in Fendi’s national anticounterfeiting work. Frances B. Bernstein, a partner at Pavia & Harcourt (now deceased), and I created Fendi’s anticounterfeiting program. From 1988 until the time I left the firm for the bench in 1992, I was the partner in charge of that program. I handled almost all discovery work and substantive court appearances in cases involving Fendi. This work implicated a broad range of trademark issues including, but not limited to trademark and trade dress infringement, false designation of origin, and unfair competition claims.”
  • “Approximately once every two months from 1989 to 1992, I, for Fendi, applied for provisional injunctive relief in district court to seize counterfeit goods from street vendors or retail stores. The applications required extensive submission of evidence documenting Fendi’s trademark rights, its protection of its marks, the nature of the investigation against the vendors, and Fendi’s right to ex parte injunctive relief. Generally, the street vendors defaulted but others appeared and settled pro se.”
  • “The above-captioned cases involved a trial and a damages hearing on Fendi’s trademark claims against the defendants. In the first, the Burlington case, Fendi alleged that defendants knowingly trafficked in counterfeit goods and Fendi sought triple profits from the defendants and punitive damages. After extensive discovery, submission of a pre-trial order and memorandum, and Fendi’s presentation of its expert at trial, the case settled. I was sole counsel present at trial. In the Cosmetic World case, the Court granted Fendi’s summary judgment motion on liability and referred the matter to a magistrate judge for an inquest on damages. I conducted the contested hearing on damages before the magistrate judge who recommended an award in Fendi’s favor.”
Posted on June 9, 2009 by Registered CommenterMichael Atkins | CommentsPost a Comment

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