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July 2013

Gordon & Rees New York Team Wins Defense Verdict in High-Profile Federal Trademark Case

A team of Gordon & Rees litigators, led by prominent national trial lawyer and New York office managing partner Mercedes Colwin, recently won a defense judgment in a high-profile federal trademark suit filed by a celebrity hairstylist who manufactures hair-care products.

Ms. Colwin and associate Ryan Sestack used a combination of sophisticated pretrial motions and savvy courtroom experience to successfully defend the groundless claims against our client, one of the oldest continuing manufacturers of beauty care products in the United States. On the same day the case went to trial before a Southern District of New York jury, the court granted Gordon & Rees’s motion for judgment as a matter of law on all claims -- a total win for our client.

The plaintiff had filed suit in 2012, alleging infringement of its trademarked brand name. Among other things, the plaintiff sought an injunction demanding complete removal of the defendant’s brand of allegedly infringing products from the marketplace – thereby putting our client’s new and growing line of quality products in jeopardy.

During the team’s strategic trial preparation, Gordon & Rees moved in limine to exclude as hearsay certain online postings that purportedly contained at least one instance of consumer confusion between the two brands at issue. Gordon & Rees argued that even if the postings fell within a hearsay rule exception, they should nonetheless be excluded as unfairly prejudicial because Internet postings are inherently untrustworthy.

The court granted Gordon & Rees's motion, thereby eliminating a major component of the plaintiff’s case, essentially leaving in dispute only issues related to the alleged similarity of the two brand names and trade dress as well as email correspondence between Gordon & Rees's client and its trademark counsel concerning the launching of the new products.

At trial, Gordon & Rees quickly deflated the plaintiff’s case. The team contended the names of the two brands were not confusingly similar and common, thus possessing a distinctiveness apparent to the average person, who could distinguish them in everyday life. The persuasive arguments won the day and led to an absolute victory for our client, which now can freely promote and enlarge its new line of quality hair-care products.

After the trial’s conclusion, Gordon & Rees made a motion to recover costs and attorneys’ fees, which is pending before the court.

The win is the latest for Ms. Colwin, a leading U.S. trial lawyer with more than 46 cases successfully tried to verdict. She is a legal analyst on the Fox News Network, where she regularly appears on legal issues involving high-profile matters. Ms. Colwin represents corporate executives and Fortune 500 clients who rely on her and her team of attorneys and experts to handle high-stakes legal matters. She has received numerous national recognitions including Notre Dame Law School’s prestigious annual Graciela Olivarez Award and was named by Forbes Business American Airlines as one of the six most influential women in America.

Mercedes Colwin
Ryan J. Sestack