BOB HELPS HIS CLIENTS SECURE AND PROTECT THEIR VALUABLE INTELLECTUAL PROPERTY, FOCUSING ON RESOLVING TRADEMARK, COPYRIGHT AND PATENT DISPUTES TO HIS CLIENTS’ BENEFIT.
Bob Wasnofski is a member of Dorsey’s Intellectual Property Litigation and Trademark, Copyright, Advertising and Brand Management practice groups, where he concentrates on all aspects of law involving trademarks, trade dress, counterfeiting, unfair competition, copyrights, patents, and advertising. He has broad experience in litigating IP disputes before federal courts, the U.S. Patent and Trademark Office, and arbitration forums, including cases concerning claims for trademark infringement, counterfeiting, unfair competition, false advertising, copyright infringement, and patent infringement.
Bob also has significant experience with trademark and copyright clearance, prosecution and licensing, as well as with handling due diligence and the negotiation and drafting of agreements concerning the purchase and sale of intellectual property assets.
From the 2018 World Trademark Review 1000: “'skilled at litigation and counselling, [Bob] is well versed in the practicalities of the law and outstanding at relationship building.’ ‘Conscientious, committed and hardworking, he pays a ton of attention to his clients. He excels at seeking out business resolutions expeditiously, as opposed to fighting legal battles.’ However, when the situation calls for it, Wasnofski can litigate with the best of them.”
Education & Admissions
Pace University School of Law (J.D., 1996), cum laude
Articles Editor, Pace Environmental Law Review
American Jurisprudence Award in Property
American Jurisprudence Award in Commercial Transactions
St. Joseph's College (B.A., Political Science, 1993), with honors
- New York
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court of Colorado
- U.S. District Court for the Eastern District of Michigan
- U.S. Court of Appeals for the Ninth Circuit
- Nautica Apparel, Inc. v. Nautigirl Brands, LLC et al (E.D.N.Y.) – Represented Nautica Apparel in action asserting claims for trademark infringement, unfair competition, deceptive trade practices, trademark dilution and related claims under federal and New York State law resulting from defendants' sale of apparel and other products in connection with the mark NAUTIGIRL and other NAUTI-formative marks.
- Elysium Health, Inc. v. Allysian Sciences, Inc. (S.D.N.Y.) – Represented Allysian Sciences against claim alleging use of ALLYSIAN SCIENCES for nutritional supplements infringed the federally registered mark ELYSIUM for nutritional supplements.
- Lego Juris A/S and Warner Bros. Home Entertainment Inc. v. Egrandbuy, Inc. (S.D.N.Y.) – Defended LEGO and Warner Bros. (as declaratory judgment plaintiffs) against claim alleging use of the mark DIMENSIONS with a popular video game and constructible toy product infringed the federally registered mark DIMENSION for remote control toy vehicles.
- Lifetime Brands, Inc. v. Evine Live, Inc. (E.D.N.Y.) – Defended Evine Live against claim for infringement of a patent directed to a cookie sheet.
- Egrandbuy, Inc. v. Lego Juris A/S (C.D.Ca.) - Succeeded on motion to dismiss trademark infringement action filed by Egrandbuy against LEGO Juris A/S, Warner Bros. and others.
- Mastercard International Incorporated (T.T.A.B.) - Ongoing representation of Mastercard in numerous proceedings before the T.T.A.B.
- FMTM Distribution Ltd. v. The Swatch Group Management Services (T.T.A.B.)
- Representing FMTM in opposition/cancellation action.
- Mediacom Communications Corporation v. Ronald Hilton (S.D.N.Y.) – Obtained default judgment and statutory damages award, as well as order directing PayPal to release funds held in defendant’s account as partial satisfaction of statutory damages award, after bringing action for, inter alia, trademark infringement and cybersquatting.
- Battle Toys, LLC v. LEGO Systems, Inc. (D. Del.) – Shortly before trial (after completion of Markman hearing, all fact and expert discovery, and the exchange of opening briefs for summary judgment), obtained consent judgment of non-infringement in favor of LEGO in case involving allegations of infringement of a patent directed to a spinning/jousting toy.
- Jaguar Land Rover Limited v. Logo SA (E.D.MI) – Obtained permanent injunction, award of €700,000, and other relief as part of consent judgment on behalf of Jaguar Land Rover against former trademark licensee in action for breach of license, trademark counterfeiting and related causes of action.
- Jaguar Land Rover Limited v. A-Z Wheels LLC et al. (S.D.Ca.) – Obtained permanent injunction, award of $150,000, and other relief as part of consent judgment on behalf of Jaguar Land Rover in action for trademark counterfeiting and copyright infringement involving defendants' advertising and sale of knock-off wheels.
- Cartier et. al v. Worldofwatches.com et. al (S.D.N.Y.) - Obtained permanent injunction in action by Cartier for design patent and trade dress infringement enjoining defendants from selling certain watches and passing off non-Cartier goods as genuine Cartier products.
- Cartier et. al v. Aviannes, Inc. (S.D.N.Y.) - Obtained permanent injunctions in action for trademark infringement and counterfeiting enjoining multiple defendants from selling Cartier watches that had been modified to include the setting of diamonds on the bezel of Cartier watches.
- Mediacom Communications Incorporated v. Hope Baldwin (S.D.N.Y.) - Obtained favorable settlement agreement on behalf of Mediacom after bringing declaratory judgment action in regards to a copyright dispute with defendant photographer.
- Harvard Battery Inc. v. Symbol Technologies Inc. (E.D.Pa.); Symbol Technologies Inc. v. Harvard Battery Inc. (E.D.N.Y.) - Obtained favorable settlement on behalf of Symbol after extensive motion practice early in discovery in multi-jurisdictional litigation involving declaratory judgment action and claims for infringement of Symbol's design patents, utility patents, copyrights and trademarks.
- Symbol Technologies Inc. v. Mobile Knowledge Group (E.D.N.Y.) - Obtained favorable settlement for Symbol after extensive discovery and motion practice in action asserting design patent, trade dress, copyright, and trademark infringement.
- MasterCard International Inc. v. MasterCars Company Inc. (S.D. Ill.) - Obtained consent judgment after discovery enjoining defendant from, inter alia, making use of MASTERCARS as a unitary term, and from using any circles design and certain color combinations with new company name/logo.
- MasterCard v. PlanetBig Corporation, et al. (S.D. Fl.) - Obtained transfer of domains incorporating MASTERCHARGE mark through settlement after motion practice.
- New York Cosmos
- Zebra Technologies Corp.
- Jaguar Land Rover
- Maestro International Incorporated
- MasterCard International Incorporated
- Mediacom Communications Corporation
News & Resources
News & Press Mentions
- "Intellectual Property Strategy and Practical Approach," panelist, IP-Days, Munich, Germany, September 25, 2015
- “The 3Ds: How and Why In-House Counsel Gets Disciplined, Disqualified and Denied Bar Admission,” panelist, Association of Corporate Counsel (WESFACCA), Purchase, New York, March 6, 2015
- "Design Protection in the U.S. – Trade Dress," panelist, IP-Days, Munich, Germany, September 23, 2011
- “Intellectual Property Strategies for a Recessionary Economy”, panelist, Dorsey, New York, New York, September 17, 2009
- "Advanced TTAB Practice and Procedure," moderator, International Trademark Association, New York, New York, July 30, 2007
- "Comparative Trademark Opposition Proceedings in Canada and the U.S.," panelist, IP-Days, Munich, Germany, September 27, 2007
Industries & Practices
- Banking & Financial Institutions
- Cybersecurity, Privacy & Social Media
- Development & Infrastructure
- Energy & Natural Resources
- Food, Beverage & Agribusiness
- Intellectual Property Litigation
- Trademark, Copyright, Advertising & Brand Management
Professional & Civic
- International Trademark Association, Saul Lefkowitz Moot Court Competition Committee, 2014-Present
- NYIPLA Patent Litigation Committee, 2014-Present
- International Trademark Association, Anti-Counterfeiting Committee, 2012-2013
- International Trademark Association, Parallel Imports Committee, 2010-2011
- International Trademark Association, Articles editor for the Trademark Reporter, 2001-2004 and 2006-2009
- New York Intellectual Property Law Association, Publications Committee, 1999
- New York State Bar Association, Intellectual Property Law Section, Internet Committee, 1998
- American Intellectual Property Law Association, Member
- International Trademark Associations, Member
- New York Intellectual Property Law Association, Member
- Listed in New York Metro Super Lawyers, 2012-2014, 2018
- Listed as a "Rising Star" in Super Lawyers, New York, 2011
- Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2016-2018
- Recognized as an "IP Star" by Managing Intellectual Property Handbook, 2016-2018