Fross Zelnick Lehrman & Zissu, P.C. > New York, United States > Firm Profile

Fross Zelnick Lehrman & Zissu, P.C.
151 West 42nd Street
17th Floor
New York, NY 10036
NEW YORK
United States

Intellectual property > Trademarks: litigation Tier 1

The experienced team at New York-based IP boutique firm Fross Zelnick Lehrman & Zissu, P.C. remains a force in the marketplace, leveraging the expertise of its team to act in complex domestic and multi-jurisdictional trademark disputes, on behalf of celebrities and world-famous brands across the entertainment, consumer products, pharmaceuticals, and fitness sectors. Senior litigator Nadine Jacobson brings strength to litigation on an international scale, whereas David Donahue and Jason Jones provide experience in proceedings at federal and state levels, and in matters before the USPTO’s Trademark Trial and Appeal Board (TTAB). Veteran litigator Barbara Solomon represents clients across a wide range of industries, including financial services, luxury goods, beauty, and fashion. Other key figures include Leo Kittay, who specializes in early-stage ventures and startups; seasoned trial lawyer Laura Popp-Rosenberg, who negotiates and drafts license and coexistence agreements; and James Weinberger, who, in addition to litigation, also focuses on mediation and arbitration. All the lawyers mentioned work in New York.

Practice head(s):

 

 

Key clients

ColourPop

MacMillan Publishing

Louis Vuitton

Gap/Banana Republic/Old Navy

Capital Records

Colgate-Palmolive Company

Johnson & Johnson

The LEGO Group

Rudsak USA, Inc.

Estée Lauder Cosmetics

Ann Taylor

Peloton Interactive, Inc.

DotDash

Away Luggage

Lactalis

Work highlights

  • Managing Peloton’s global trademark portfolio (since 2016), representing in various trademark matters.
  • Represented Rudsak USA, Inc., the U.S. subsidiary of a Canadian streetwear brand, in its defense against for trade dress infringement, unfair competition, and dilution brought by its rival APP Group (Canada), doing business as Mackage, in the U.S. District Court for the Southern District of New York.

Intellectual property > Trademarks: non-contentious (including prosecution, portfolio management and licensing) Tier 2

The experienced team at New York-based intellectual property boutique firm Fross Zelnick Lehrman & Zissu, P.C. brings strength to advising major global corporates including Colgate-Palmolive, Lego, Johnson & Johnson, and Warner Entertainment Group, across such sectors as entertainment, pharmaceuticals, fashion, professional services, cosmetics and sports, on the management and enforcement of their international trademark portfolios. Trademark authority Nadine Jacobson provides expertise in advising on the building of global brand strategies. Tamar Niv Bessinger handles complex trademark registrations. Other key figures include prosecution specialist Allison Strickland Ricketts; Karen Lim, who specializes in the management of trademark portfolios over the entire course of their life cycle; global brand clearance expert Lydia Gobena, who assists with the protection of nontraditional trademarks, including single colors and sounds; and Lawrence Apolzon, Amanda Agati, and Ashford Tucker, who advise major celebrities, as well as their representatives and estates, on their personality name portfolios. All lawyers mentioned work in New York.

Testimonials

‘The Fross team is the leading soft IP boutique in the US. Year in, year out, they represent many of the world’s leading brands on both routine and cutting edge issues, and do so, with great skill and deep-rooted knowledge. They are a collegiate, responsive, and nice group of people, with incredible passion for their subject area.’

‘There are so many top practitioners but special mention to: Nadine Jacobson: probably the most knowledgeable trademarks lawyer I have come across. Encyclopedic knowledge of US and international trademark law, passionate about and committed to her clients. Lydia Gobena is incredibly talented, with an amazing client roster especially in fashion, luxury and pharmaceuticals.’

Key clients

Bristol Myers Squibb

Macmillan Publishers

Colgate-Palmolive Company

Gap/Banana Republic/Old Navy

Johnson & Johnson

The LEGO Group

People For The Ethical Treatment of Animals (PETA)

WeWork Companies LLC

Peloton Interactive, Inc.

TED Conferences LLC

TCP Brands (Children’s Place)

Hill House Home

Richemont

Sony Interactive Entertainment

Tiffany & Company

Warner Brothers Entertainment Group

Work highlights

  • Advising TED Conferences on matters of protection and enforcement of its TED trademark (both in the US and internationally), as well as advises TED in connection with proper fair use of material.
  • Advised Kao Corporation on its license agreement to expand into new bath and skincare products.
  • Advising People for the Ethical Treatment of Animals (PeTA) on matters of protection and enforcement of its famous PETA trademark in connection with its animal rights charitable services.

At Fross Zelnick, we secure and defend our clients’ most valuable assets—their brands, designs, and content.

      • Our trademark practice is unmatched. After five decades, we’ve developed a singular trademark practice serving clients in the United States and around the world. We’ve handled every type of trademark issue and dispute, multiple times for multiple companies in multiple jurisdictions, from the simplest registration to the thorniest cross-jurisdictional enforcement action.
      • We boast top-tier copyright experience, with a special emphasis on defending creative works, including character rights, branding assets, and product design. For decades we’ve assisted clients as they navigate the consequences of new technological frontiers – most recently, digital, and virtual performance rights and blockchain-based technologies.
      • Our patent practice focuses exclusively on design patents, with particular expertise in developing multi-pronged strategies combining patent, trademark, and copyright law to protect our clients’ prized works.

The breadth and depth of our practice has attracted a wide range of clients, from celebrated brands, industry leaders, and renowned content providers to disruptive startups and regional companies, all of whom rely on us to protect their unique properties at home and around the world. Many of the largest corporate law firms rely on our advice for unique or hard-to-handle U.S. and international issues.

Our capabilities include:

Top-Tier IP Litigation
We are a renowned trademark and copyright litigation firm, with a reputation for both aggressive advocacy in court and quick, favorable settlements out of court. We know how to fight and win—whether in our backyard or in the most intractable foreign jurisdictions.

Strategic and Nuanced Registration Strategies
We register trademarks, copyrights, and design patents with our clients’ business goals in mind. Our cross-discipline expertise means we leverage multiple legal strategies to shore up strong protections for the most hard-to-defend assets. We obtain rights that ward off newcomers and stand up in court. We are one of the most prolific filers of U.S. trademark applications, and our expertise in the finer points of U.S. trademark prosecution is second to none.

Global Portfolio Management
With our unparalleled in-house knowledge of international IP law, we provide unrivaled advice for global portfolio management, litigations, and transactions around the globe. Our dynamic, carefully selected network of foreign counsel helps us guide U.S. and foreign clients alike as they identify, protect, and defend their rights under copyright, trademark, trade dress, design patent, domain name, and related laws worldwide. Our international capabilities are just as robust as our local prowess.

Deal Expertise
Whether a client is buying or selling an entire business or a portion of an intellectual property portfolio, we’ve seen it before—and can advise on how to structure the deal to fit the client’s goals. We conduct due diligence reviews for mergers, acquisitions, and other corporate ventures, and formulate efficient worldwide strategies to record the corporate changes against their clients’ IP registrations. Many of the country’s premier M&A attorneys partner with us on the IP components of larger transactions.

Services on the Cutting Edge
Thanks to our more than 50-year legacy, we’ve been witness to the birth and evolution of nearly every technology that’s central to the modern economy. From in-the-trenches Uniform Dispute Resolution Proceeding litigations against cybersquatters, to the rapidly changing intersection of IP rights and blockchain innovations like NFTs, to educating trademark offices around the world on new technological intersections, we’re helping clients successfully steer through uncharted waters and prepare for what’s to come.

Protection of Celebrities and Cherished Characters
From Batman to Harry Potter, we protect famous characters through sophisticated copyright and trademark protection strategies and enforcement against infringers. We’ve also retrieved numerous infringing trademarks and domain names for celebrities and litigate high-profile, right-of-publicity cases involving the unauthorized use of well-known names and likenesses, all within a quickly evolving legal landscape.

Combating Counterfeiting
We’ve developed sophisticated and cost-effective enforcement programs for preventing the importation, sale, and distribution of infringing or counterfeit products. Our experience is capacious, including apparel, footwear, cosmetics, jewelry, and luxury goods products. Included in these programs is the recordal of relevant intellectual property rights with Customs in the United States and abroad.

Department Name Email Telephone
General, US litigation Craig Mende
US counseling and prosecution Lawrence E Apolzon
International counseling, prosecution and litigation Nadine Jacobson
Photo Name Position Profile
Allison Strickland Ricketts photo Allison Strickland Ricketts Allison Strickland Ricketts helps clients build and protect their trademark, so that…
Number of Partners : 21
Number of Other Fee-Earners : 24
Total Staff : 102
Founding Partner : Ronald J Lehrman