Robert M. Wasnofski, Jr.
PEOPLE

Robert M. Wasnofski, Jr.

Partner
wasnofski.robert@dorsey.com

Overview

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.

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

Admissions

  • 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

Experience

Representative Litigation

  • Lego Juris A/S and Warner Bros. Home Entertainment Inc. v. Egrandbuy, Inc. (S.D.N.Y.) - Representing LEGO and Warner Bros. in declaratory judgment action filed in the S.D.N.Y. for non-infringement (trademark) and for cancellation of numerous trademark registrations held by Egrandbuy.
  • 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.

Representative Clients

  • New York Cosmos
  • Zebra Technologies Corp.       
  • Jaguar Land Rover
  • LEGO
  • Maestro International Incorporated
  • MasterCard International Incorporated
  • Mediacom Communications Corporation

News & Resources

Articles

Dropbox Gets “Thru” on Summary Judgment With Successful Laches Defense
Federal Court Travels “Wayback” and Takes Judicial Notice of Internet Archive
"Supreme Court Will Decide Whether to Relax the Standard for Award of Enhanced Patent Damages," Dorsey eUpdate
"Supreme Court Lowers the Bar for Prevailing Parties to Recover Attorney Fees in Patent Litigation," Dorsey eUpdate
Supreme Court Affirms 9th Circuit Ruling Refusing to Allow “First Sale Doctrine” as Defense to Copyright Infringement for Distribution of Foreign-Made Copies
"The Federal Circuit Holds Photograph of Goods Not Always Required for Web Page to Serve as Trademark Specimen," Dorsey eUpdate
“Federal Circuit Re-Examines the Medinol Standard for Fraud in Trademark Cases,” Dorsey eUpdate
"Protecting Trademarks Online," (co-authors, Paul J. Reilly and Valerie Verret) World Trademark Law Reporter
"Talking Trash in the Name of Spike: Filmmaker's Suit Lacked Much Legal Force," Legal Times
"Reregistration of Domain Name Incorporating Name of Living Person Falls Within Scope of Anticybersquatting Statute," Baker Botts IP Report
"Patents Ruled to Add 'Great Weight' to Trademark Functionality Analysis," Baker Botts IP Report

News & Press Mentions

Seventeen Dorsey Attorneys Ranked 2018 IP Stars
Dorsey’s Trademark Lawyers and Practice Ranked in World Trademark Review
Twelve Dorsey Attorneys Named 2017 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review 2017
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Thirteen Dorsey Attorneys Named 2016 IP Stars
Dorsey’s Trademark Lawyers Honored in World Trademark Review
Super Lawyers Recognizes 17 Dorsey Lawyers in New York
Dorsey Named One of Top Trademark Firms
Super Lawyers Recognizes 18 Dorsey Lawyers in New York

Select Presentations

  • "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 and Financial Institutions
  • Cybersecurity, Privacy & Social Media
  • Health Care
  • Intellectual Property Litigation
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • 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

Accolades

Rated by Super Lawyers - Robert Wasnofski

  • 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
Robert M. Wasnofski, Jr.