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IN THE NEWS: Norris McLaughlin & Marcus Wins Preliminary Injunction in Trademark Case for COINTREAU

In an important ruling by a federal judge in Dallas, Texas, Cointreau Corporation, owner of rights in the famous “COINTREAU” trademark for orange liqueur, has succeeded in its request for a preliminary injunction prohibiting the sale of a competing orange liqueur product sold under the trademark “CONTROY.”   Cointreau Corporation, represented by Norris, McLaughlin & Marcus, P.A., was able to convince the court that Cointreau was likely to succeed in showing that the use of the trademark Controy, on a product manufactured by Mexico’s La Madrilena S.A. de C.V. and distributed in the United States by Pura Vida Tequila Company, LLC, dilutes Cointreau’s rights in its famous brand by blurring its distinctiveness, based on the close similarity of the two marks.  The injunction bars the defendants from importing into, or selling, any orange liqueur in the United States under the “CONTROY” name.   In so ruling, the Court noted “In this case, damage to the goodwill and selling power associated with the Cointreau Marks would be difficult if not impossible to calculate in monetary terms.  Cointreau  Corp. has thus shown a substantial threat that it will suffer irreparable injury in the absence of an injunction.”

The case was handled by Bruce S. Londa and Jeanne Hamburg, members of the firm and of the Intellectual Property Group, and Danielle M. DeFilippis, an associate with the firm and member of the Litigation Department, all practicing out of the New York office of the Bridgewater-based law firm.

Edouard Cointreau first distilled his eponymous orange liqueur in 1875. The Cointreau distillery began selling the liqueur in that same year and brought it to market in the United States by 1885. Today, Cointreau is the second-most-popular orange liqueur in the United States by volume. “With the court’s decision supporting the fame and distinctiveness that our brand has earned over the past 140 years, Cointreau can put aside the legal issues, and focus on our mission to provide consumers with our premium orange liqueur,” says Cointreau Vice-President and General Counsel David Babkow.

Londa has experience in both domestic and foreign patent and trademark prosecution, as well as technology licensing and transfer, counseling and opinion work, copyright law, and related litigation.   Londa is admitted to practice law in New York and before the U.S. District Court for both the Southern and Eastern Districts of New York.  He is also registered to practice before the United States Patent and Trademark Office. He received his J.D. from Fordham University School of Law in 1988 and his B.S. degree in Chemical Engineering from the University of Pennsylvania in 1985.  He is a member of the New York and American Intellectual Property Law Associations and the International Trademark Association.  Bruce practices out of the firm’s New York City Office.

Hamburg has expertise in all aspects of trademark and copyright law, handling both transactions and litigation.  Practicing in the firm’s New York City office, she assists clients in a broad range of industries with their intellectual property needs.  For the past three years, Hamburg has been recognized as a New York Super Lawyer® for Intellectual Property and Intellectual Property Litigation.  Only five percent of New York lawyers are given this honor.  Hamburg earned her J.D. from Columbia University School of Law, where she was a member and editor of the Columbia Law Review, in 1990, and her B.A., magna cum laude, in English from Wellesley College in 1987.

DeFilippis has represented clients in cases involving trademark and copyright infringement, business torts, deceptive trade practices, Lanham Act claims, and state and federal unfair competition laws.  Her commercial experience includes claims involving breach of contract, breach of fiduciary duty, fraud and other business disputes.  DeFilippis earned her J.D. from Seton Hall University School of Law, where she was Editor and Director of Staffing and Symposia of the Legislative Journal, in 2004, and earned her B.A. in International Politics with a minor in Japanese from The Pennsylvania State University in 2001.

The Intellectual Property (“IP”) Group at Norris McLaughlin & Marcus is dedicated to providing sophisticated intellectual property counsel to domestic and international clients having a need for patent, trademark and copyright counsel.   In the trademark and copyright areas, the firm’s IP Group services include litigation, arbitration and dispute resolution of complex federal court cases involving trademarks and copyrights as well as transactional work, clearance and counseling with respect to trademarks and copyrighted content, and prosecution of applications before the U.S. Trademark Office and U.S. Copyright Office. The IP Group also has expertise in litigating contentious proceedings before the U.S. Trademark Office and cybersquatting proceedings in arbitral forums approved by the Internet Corporation for Assigned Names and Numbers.