Media Mentions
2012
“Louboutin Presses 2nd Circ. to Reverse Red Sole Mark Ruling”
Law360, January 24, 2012
Robert Zelnick, commenting on a high-profile effort by French fashion goods maker Louboutin to seek trademark protection for its use of red as shoe sole color, said that the company has “created a new mouse trap … by making the sole of a shoe such an enormous source identifier.” However, Mr. Zelnick added, getting trademark exclusivity for a color may be difficult because “there are concerns about color depletion. There are only so many primary colors.”
Robert W. Zelnick, Intellectual Property, IP Litigation
2011
“If the Don Can’t Get ‘You’re Fired,’ and Paris Hilton Can’t Get ‘That’s Hot,’ Then ‘OWS’ Will Probably Stay Free”
Forbes, October 28, 2011
Robert Zelnick noted that parties seeking to trademark what he called “fads and phrases” often have “a fundamental misunderstanding” of their ability to do so, because they “won’t have actual rights – or the ability to prevent others from using the mark – until the mark is actually used in a commercial way.” For that reason, Mr. Zelnick added, “What’s hot now might be gone by the time the trademark registration is granted or the goods can be merchandised on a large scale.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“Q&A with Intellectual Property Lawyer Robert Zelnick”
Bloomberg Law Reports Student Edition, October 27, 2011
Robert Zelnick advised law students considering a career in intellectual property (IP) law that, while boutique firms offer advantages, “A general practice firm opens the door to so many more client relationships.” Speaking of his career at McDermott, Mr. Zelnick explained that “my opportunities to represent so many amazing brands came in many cases from my partners who had established relationships with the brand owners in some way.” He added that a large firm like McDermott “offers a much more comprehensive view of a client’s business objectives, and how IP matters fit into major corporate transactions.”
Robert W. Zelnick, Intellectual Property, IP Litigation
“Guggenheim Impostor Can’t Shake $10M Suit”
Law360, April 22, 2011
John Dabney, Rita Weeks, Robert Zelnick and Michael Shanahan are noted as representing two financial firms associated with the Guggenheim family in a $10 million lawsuit against persons charged with impersonating Guggenheim family members to perpetrate investment fraud. A federal district court in New York has rejected one defendant’s attempt to contest the charges.
John J. Dabney, Michael E. Shanahan, Rita Weeks, Robert W. Zelnick, Intellectual Property
“Sarah Palin’s Attempt to Register Name with PTO Highlights Celebrity, Politician Concerns”
BNA Patent, Trademark & Copyright Law Daily, February 10, 2011
Robert Zelnick said the re-submission of “Sarah Palin” and “Bristol Palin” for trademarks under the political elections information and educational/entertainment classes of services could be successful because it “probably qualifies as use in commerce,” but added that if it does, “I’m curious to know what merchandising will follow.” Even if none does, Mr. Zelnick said he would “have a hard time telling almost anyone who has the ability to get a federal registration not to do it,” because “the investment isn’t huge, and maybe the deterrent effect alone is worth it.”
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
2010
“Wanna Buy a Watch?”
Corporate Counsel, November 1, 2010
Robert Zelnick assessed the controversy over whether “gray market” resale in the U.S. of products made for sale abroad constitutes infringement, saying that the issue of provenance is especially important in today’s global economy. “If you are already manufacturing a product for a foreign market,” he explained, “you don’t have to drastically amend your business model to send some of that product to the U.S.”
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“Zelnick Discusses Brand Protection via Social Media”
Bloomberg Law Podcast, October 11, 2010
Robert Zelnick talks with Bloomberg Law's legal analyst Spencer Mazyck about business strategies for protecting and communicating brands via social media. Click here to watch the full segment.
Robert W. Zelnick, Intellectual Property, IP Litigation, Trademark/Brand Protection & Enforcement
“Lawsuits allege copyright violations in posting of newspaper's articles on Web sites”
Washington Post, September 13, 2010
Robert Zelnick commented about a Las Vegas firm that purchased the rights to articles from a newspaper in that city and had filed copyright infringement lawsuits against organizations that quote those articles on their websites. “I’m not sure the amount sought or settled for is a direct reflection of the quantum of guilt or the egregiousness of conduct,” Mr. Zelnick said of the cases. “But from what I’ve been reading, many of the parties are settling for a number that’s around a few thousand dollars. I think from their perspective, it would cost more to hire a lawyer with expertise to evaluate the claims and pull together defenses.”
Robert W. Zelnick, Intellectual Property, IP Litigation
Joanne Ludovici-Lint and Robert Zelnick were noted in the January 2010 issue of Washington Lawyer, as they appeared with a pro bono client and her adopted daughter at the 25th Annual Adoption Day Ceremony sponsored by the Children’s Law Center. The Center referred the client to Ms. Ludovici-Lint and Mr. Zelnick, and the adoption proceeding that they handled was one of 36 finalized at the ceremony.
Joanne Ludovici-Lint, Robert W. Zelnick, Pro Bono & Community Service
2009
Robert Zelnick is quoted in the September 1 issue of Inside Counsel, addressing how social media create risks for trademark holders because there is little jurisprudence on whether using another’s trademark in a social media subdomain can be infringing. Mr. Zelnick notes that there are clear rules and legal procedures for resolving cybersquatting and other domain name disputes on the Internet, but the law has not yet caught up to social media. “This is somewhat uncharted territory,” he stated.
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
2008
Robert W. Zelnick was quoted in the February 2008 issue of Inside Counsel in an article regarding the use of trademark law to suppress online criticism. As a partner in McDermott's Intellectual Property, Media & Technology Department, Mr. Zelnick discussed the elements needed for a successful trademark infringement case including proof that the website is associated with the sale of goods or services and that use of the trademark confuses at least some of the plaintiff's potential customers. Mr. Zelnick noted, however, that, "people are afraid of losing their house in a legal proceeding, so the dominant response is to accede to the demands made of them. Very few of these cases hit a judge’s desk. The vast majority of law is being made outside judicial scrutiny."
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
2004
Robert Zelnick was quoted in the August 30 issue of The New York Times in regard to Donald Trump's attempt to register the trademark "You're Fired!" with the U.S. Patent & Trademark Office. The USPTO has initially rejected Trump's application to register "You're Fired!," because it could cause confusion with "You're Hired!" -- an existing registered trademark for an educational board game designed to give middle-school students a taste for the job hunt. The article reported that legal experts say conflicts were common early in the registration process, as government lawyers scrutinize applications for similarities between the sight, sound and source of the marks. "It's not just a matter that consumers would overlook the difference between the F and the H," Mr. Zelnick commented.
Robert W. Zelnick, Intellectual Property, Trademark/Brand Protection & Enforcement
