Fross Zelnick Lehrman & Zissu - US Trademark Rankings 2023
Firm Overview:
East coast stalwart Fross Zelnick provides a “soup to nuts” trademark service. “They have it all,” say peers. The firm handles everything from straightforward trademark registration matters to intricate cross-border enforcement. Loyal clients consider the firm “best in the field” and report they are provided with “state of the art, business-focused advice”.
The firm’s promising startups client base is exemplified by static-bike online exercise client Peloton’s exponential lockdown rise. The deep bench of “excellent attorneys” is equally capable of maintaining long term relationships with well-known music industry, luxury goods, retail publishing and other industry sector brands. Trusted with DC Comics’ litigation matters since 1979, Fross Zelnick continues to protect the superhero publisher’s iconic marks ‘Superman’, ‘Batman’, and ‘Wonder Woman’ in ongoing Trademark Trial and Appeal Board oppositions.
Team Overview:
Fross Zelnick’s New York headquarters is home to stand-out individuals such as prosecution lawyer Allison Ricketts. “The first person to come to mind. She’s fantastic, a Band One+ practitioner,” declares one lawyer. In nearly three decades of practice, Ricketts has filed and prosecuted more than 2,500 US trademark applications and assists Peloton, Major League Soccer and Christian Dior before the TTAB.
Other “great lawyers” include Nadine Jacobson who has a deep knowledge of contentious and non-contentious trademarks on a global scale. Peers highlight her international work. The “fabulous” Janet Hoffman fortifies the prosecution department, bringing specialist knowledge of trademark law in Eastern Europe and former USSR countries. Recommended lawyer Cara Boyle manages worldwide portfolios for brands in hospitality, music, fashion and food, some with thousands of trademarks. On the litigation side, Richard Lehv is experienced in obtaining favourable judgments. He has represented fashion brand Lacoste since 2005. In 2021, he assisted Lacoste with the TTAB’s recognition of Lacoste’s alligator as a strong mark, entitled to a “broad scope of protection”.
Key Matter:
- Laura Popp-Rosenberg acted for Lego Juris, owner of the toy brick ‘Lego’ mark, before the TTAB and United States Patent and Trademark Office in 2022. Applicant Once Kids sought to register the mark ‘Eco-Bricks’. Lego opposed, arguing the mark was descriptive and lacked a secondary meaning. The board agreed and sustained the opposition, concluding that ‘Eco-Bricks’ is not only descriptive but highly descriptive, which made it harder for Once Kids to demonstrate a secondary meaning. The win strengthens Lego’s ongoing enforcement strategy to protect the brand and rebut claims that ‘Lego’ is a generic mark.
- A Fross Zelnick team of Leo Kittay, David Donahue, Amanda Agati, Allison Strickland Ricketts, Robin Baydurcan and Shelby Rokito defended Peloton’s rights in the beverage sector when they successfully obtained a cancellation for Peloton Cold Brew’s mark ‘Peloton’.
- Robert Becker represented musical icon Stevie Wonder when the USPTO refused to register his mark ‘The Stevie Wonder Song Party’, stating the mark was merely descriptive. The board reversed the refusal in 2022 after Fross Zelnick argued that ‘Song Party’ suggested a social event, and along with the name, the terms together created a composite meaning.
Clients:
Banana Republic, Cartier, Chanel, DC Comics, Eminem, Estée Lauder, Gap, Lacoste Alligator, Lego, Louis Vuitton, Major League Soccer, Old Navy, Peloton, Robert Kirkman.
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