Practice Description
International trademark and unfair competition counseling and litigation, including: trademark enforcement, acquisition and licensing; ownership policy and portfolio management, special protection for famous marks and negotiated resolution of international trademark disputes.
Education
University of Havana and Dartmouth College (B.A., cum laude, 1954); Harvard Law School (J.D., 1957). Phi Beta Kappa.
Professional Activities
Lecturer: on trademark rights in the European Community and on trademark protection and licensing issues in the Andean Pact countries for the Practising Law Institute; the international protection of famous trademarks at the Exeter University School of Law in Exeter, England; international trademark law and practice at New York University School of Law; and at annual meetings, teaching forums, and symposiums for INTA.
Honors
Included in Who's Who Legal - Trademarks; Recognized in the 2008 edition of Guide to the World's Leading Trade Mark Law Practitioners, published by Euromoney Legal Media Group; Included in the list of New York Super Lawyers in Intellectual Property by "New York Super Lawyers 2006 - Manhattan Edition" and by "New York Super Lawyers 2007 - Metro Edition;" Recognized in the international area and as a top international litigation strategist in the 2006-2007 edition of the Legal 500 US Guide.
Admissions
New York State
Selected Cases
Decision of the Supreme Court of Japan resulting in the recapture of the TABASCO trademark from a Japanese trademark pirate. (McIlhenny Company v. Kaneki)
Decisions of Federal District Courts in Atlanta (Rolls-Royce Motors Ltd. v. A&A Fiberglass, Inc., 428 F. Supp. 689 (1976)) and New York (Rolls-Royce Motors Ltd. v. Custom Cloud Motors, Inc., 190 U.S.P.Q. 80 (SDNY 1976)) enjoining the manufacture and sale of kits for transforming Volkswagen and Chevrolet Monte Carlo cars into ROLLS-ROYCE look-alikes.
Decisions of the Supreme Court of Mexico canceling copyright and trademark registrations for BOZO THE CLOWN and enjoining the Mexican registrant from performing as the BOZO character.
"Reputation without use" cases brought on behalf of owners of marks which were well-known but not registered or used in the jurisdiction where suit was brought, including the Ringling Bros./Barnum & Bailey case in Australia, in which an injunction was obtained against a local circus using a version of the famous Ringling slogan THE GREATEST SHOW ON EARTH (Ringling Bros. and Barnum & Bailey Circus Inc. v. Michael Edgely, Supreme Court of New South Wales, Equity Division, No. 157 of 1977), the PIZZA HUT case in Cyprus, which closed down an unauthorized "Pizza Hut" operation, and the recapture of the WHIRLPOOL mark in India.
Published Works
Reputation Without Use and Household Names
Trademark World
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U.S. Law Chapter in Treatise, Famous and Well-Known Marks: An International Analysis
INTA 2004
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International Protection of Well-Known Marks
This article was first published in 'The International Who's Who of Trademark Lawyers 2006'. For more information please see www.whoswholegal.com.
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