Fross Zelnick Lehrman & Zissu
Firm overview:
“One of the top IP firms hands down”, Fross Zelnick is highly rated for both its contentious and non-contentious trademark work. According to a peer, “they have it all”, and the firm handles everything from straightforward registration matters to intricate cross-border enforcement.
Fross Zelnick’s long-standing relationships with clients are a testament to the firm’s high level of service, and there are few IP-related problems it hasn’t seen—and dispatched—before. Its client list includes leading brands across many different spheres, from Gucci and Louis Vuitton in the fashion world, to Colgate-Palmolive and Johnson & Johnson in consumer products, and Lego and PlayStation in toys and gaming. The firm’s promising start-up client base is exemplified by static bike and online exercise brand Peloton’s exponential lockdown rise.
Team overview:
Partner Allison Ricketts is “the first person to come to mind. She’s fantastic, a Band One+ practitioner”, according to one lawyer. In nearly three decades of practice, Ricketts has filed and prosecuted more than 2,500 US trademark applications and assisted Peloton, Major League Soccer and Christian Dior before the Trademark Trial & Appeal Board.
Senior counsel Richard Lehv is a revered trademark and copyright litigator who is often able to resolve contentious matters quickly and favourably thanks to his reputation and experience. Lehv names Ikea, Lacoste and Tiffany & Co among his clients, and teaches a seminar on trademark and copyright litigation at Columbia Law School.
Another highly rated member of the team, partner Barbara Solomon works with iconic brands across diverse industries to protect and enforce their IP assets. A client says the strategy and level of service Solomon provides is “outstanding”, adding that she is “our go-to attorney for IP”.
Key matters:
- Fross Zelnick’s noteworthy trademarks registrations include the ‘Red Sole’ for Christian Louboutin shoes, the ‘Tarzan Yell’ for toys (among other things), the Tiffany ‘Blue Colour’ and the Tiffany ‘Blue Box’.
- World Champ Tech v Peloton Interactive
Fross Zelnick successfully defended fitness company Peloton against a trademark infringement suit in California, winning a decision for Peloton at summary judgment. The dispute concerned Peloton’s use of ‘Peloton Bike+’ as the name of the deluxe version of its connected stationary bike, launched in 2020. The plaintiff, fitness app developer World Champ Tech, offers mobile app BIKE+.
Ultimately, the court held that no consumer confusion was likely, dismissed the plaintiff’s motion as moot and entered judgment for Peloton. Fross Zelnick’s litigation team consisted of partners David Donahue, Leo Kittay and associates Nicole Tenore (née Lieberman) and Shelby Rokito. - UMG Recordings v KG Music Center
At trial before the Trademark Trial and Appeal Board, the firm prevailed on behalf of client UMG Recordings—owner of the famous Impulse jazz label—in its challenge to an attempt to register the mark ‘Impulse Music Company’ by KG Music Center. KG Music is a California company that operates a brick-and-mortar store and website, and provides music lessons, sells musical instruments, and provides a live music venue.
The board confirmed that the Impulse label is “a historically significant record label” and that UMG’s ‘Impulse’ logo mark is “iconic” and “well known” and that KG Music’s use and registration of the contested trademark would likely cause confusion in the marketplace.
Clients:
Banana Republic, Cartier, Chanel, DC Comics, Eminem, Estée Lauder, Gap, Lacoste Alligator, Lego, Louis Vuitton, Major League Soccer, Old Navy, Peloton Interactive, Robert Kirkman, UMG Recordings.
