Trade Mark Action Decided in Favor of Collen IP’s Client, the SOUP NUTSY Restaurant Chain; Alleged Trademark Infringement and Breach of Contract Action Dismissed in the Southern District of New York

July 2004 - Abandonment and 'intent to use' a trademark, in addition to a question of authority to transfer rights to a trademark, were the central issues in a recent United States District Court Ruling in favor of Collen IP client, The Soup Nutsy restaurant chain. The Defendant has restaurant locations in Union Station and The Reagan Building in Washington, D.C.

In the Southern District of New York, Collen IP successfully defended its client against allegations of infringement and breach of contract. Collen IP was able to establish that the Plaintiff/Licensor had abandoned the SOUP NUTSY mark. Most significantly, the Court held that Defendant gained superior rights in the mark and could prevent Plaintiff from use in the future. As a result, the Court dismissed Plaintiff's complaint.
 

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Collen IP Secures Ruling on Claim of False Designation of Origin; Damages Awarded After Jury Trial

June 2004 - Collen IP secured Summary Judgment on behalf of its client, a broker of cable television equipment, in a ruling by the United States District Court for the Eastern District of Tennessee. The case centered upon the mis-use of Plaintiff's customer list and information compiled in its Data Base, which contained detailed business contacts and information relating to its customer relationships and interactions. The Plaintiff alleged, and the Court found, that former officers of the corporation had unfairly communicated with Plaintiff’s customers after leaving the firm, and confused those customers as to whether these former employees were still affiliated with Plaintiff.

Lead trial counsel on the case, Matthew C. Wagner, Partner at Collen IP, said: “These former employees attempted to divert sales from Plaintiff 's customers to their new competitive business, unbeknownst to the customer, by trickery and deception. This is precisely what the Lanham Act is designed to prevent.” Mr. Wagner continued, “Luckily, one of the customers solicited by these former employees recognized that he was actually confused and wrote to the Plaintiff’s principle to inquire of their status. It was at that point we knew that swift action was needed.” Following a jury trial, Plaintiff was awarded damages. At trial and upon cross-examination by Mr. Wagner, one of the Defendants apologized for his conduct.

"We are, of course, very happy with this opinion. The value and significance to my client - and many other businesses - of protecting client databases and ‘inside’ information about clients and markets as trade secrets cannot be understated,” said Mr. Wagner.

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Collen IP Wins Summary Judgment in Favor of Client in Patent Infringement Action

May 2004 - In a recent ruling by the United States District Court for the District of Nevada, Collen IP prevailed in securing Summary Judgment on infringement of two patents related to eyewear.

In this case, on behalf of Plaintiffs, Collen IP alleged that a major player in the eyeglasses industry infringed upon two patents related to the construction and mechanism for magnetic attachment of auxiliary lenses to eyeglasses (typically sunglass attachments). Chief US District Judge Philip Pro, agreed with and supported Plaintiff's interpretation and construction of the patents claims and awarded Plaintiffs summary judgment on the issue of infringement. Matthew C. Wagner, one of the lead attorneys for Plaintiffs, and Partner at Collen IP, said “The Court’s claim construction and award of summary judgment in this case reinforced scope of protection afforded by the Plaintiff’s’ patents.” Mr. Wagner went on to say “Defendant was unable to show how their product was essentially different in either construction or function from the patents at issue.”

“We were able to refute the other side’s claims and expert testimony" said Mr. Wagner. "At the end of the day, we're happy with our success in protecting our client's intellectual assets and the competitive advantage they are entitled to gain from them."

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Collen IP Executes Seizure on Behalf of an International Beauty Supply Company, Netting Thousands of Pieces of Counterfeit Beauty Lotions, Cremes, and Soaps, and More Than 250,000.00 in Cash

August 2003 - Acting on behalf of an international beauty supply company which engages in the manufacture, import, export, and distribution of soaps, creams, and lotions worldwide, Collen IP obtained a temporary restraining order and order of seizure against a Brooklyn, New York based importer and distributor of counterfeit health and beauty supplies.

Execution was carefully coordinated and performed simultaneously at three New York locations yielding thousands of counterfeit products and more than a quarter million dollars in cash and bank accounts. “The success of this operation can only be attributed to the diligent efforts of our team of investigators, our support staff, and the United States Marshal’s office." said partner, Matthew C. Wagner. Also cited as key factors was the decision to take action, upon good information, on an urgent and immediate basis. The temporary restraining order was converted into a preliminary injunction after an evidentiary hearing before Judge William Trager at the United States District Court for the Eastern District of New York in Brooklyn.

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Patent Infringement: Collen IP Gains Order Compelling Production of Documents and Deposition Testimony of Defendant's Former Trial Counsel

July 2003 - Magistrate Judge Peggy Leen of the United States District Court for the District of Nevada, granted Plaintiffs’ motion to compel deposition testimony and the production of documents in a patent infringement case. Defendant was ordered to produce former trial counsel’s entire litigation files. The plaintiff was represented by the New York based intellectual property firm Collen IP.

In a case brought by Collen IP on behalf of an eyewear manufacturer, the defendant elected to rely on the verbal opinion of its former trial counsel in defense of willful infringement. The Plaintiff obtained an order compelling the production of former trial counsel’s entire litigation file and secured rights to take further deposition testimony. The defendant's former trial counsel had obeyed previous instructions not to answer by asserting attorney-client privilege, work-product privilege, and immunity from discovery because the information and material was prepared in anticipation of litigation. The defendant attempted to limit the waiver of attorney-client privilege to only that which was actually communicated to the client – the problem in this case was that former counsel did not put anything in writing and could not recall what he had told the client. “We therefore argued that the privilege, if waived, was waived entirely” said Matthew C. Wagner, a Collen IP partner.

According to the Court’s Order: “[Defendant] designated its former litigation counsel as an expert witness. The opinions on which [defendant] intends to rely were not reduced to writing and are oral. [Former trial counsel] has been deposed and was unable to recall with any specificity what he reviewed, when he reviewed it, what he discussed with the client, and what his opinions were based on. The majority of [his] deposition testimony was conclusory and unsupported by specifics. Under these circumstances, the court finds defendant has waived the work-product immunity for [former trial counsel’s] file on the subject matter of the asserted defense, that is, evidence relating to willfulness, infringement, validity, and/or enforceability of the Patents-in-suit.”

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Collen IP Obtains $1.15 Million Award Recommendation for Infringement of Client's Website

February 2003 - A federal district court magistrate in New York has recommended that a Collen IP client be awarded $1.13 million in actual damages plus more than $20,000.00 in legal fees and costs based on a competitor's use of the client's trademarks and copyrighted materials on a competing website.

“We had initially obtained an injunction prohibiting the defendant's illegitimate use of our client’s trademarks and copyrighted material,” commented Matthew C. Wagner, a partner at Collen IP. “The defendant made minor alterations to the website, and we successfully sought termination of the website under the Digital Millennium Copyright Act, and further requested that the court award our client damages for defendant's continuing contemptuous and willful acts.” “We are very pleased that the court accepted our evidence of harm, lost profits, and dilution of our client’s marks, which the court described as “siphoning” our client’s internet sales.”

Mr. Wagner is pleased that "the defendant now has a website which includes none of our client’s marks or copyrighted material.”

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