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Jason S. Nardiello
Biography

Jason Nardiello focuses his practice on trademark, copyright and unfair competition law. He is widely recognized in the U.S. and overseas as a leading trademark litigator, prosecutor, and counselor in the field of U.S. trademark law and intellectual property law.


He has extensive experience as lead counsel on high-stakes trademark and copyright cases involving well-known brand names and has represented famous brands in a variety of trademark matters such as Nikon, Subaru, and Epson.

Jason also manages and enforces large trademark portfolios for clients to assist them in leveraging their commercial competitive advantages worldwide. He regularly practices trademark prosecution at the USPTO and opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

Jason is a member of INTA and has previously served on the Harmonization of Trademark Law & Practice Committee as well as the Free Trade Areas Subcommittee. In this regard, he has experience developing and suggesting provisions for adoption in regional free trade agreements to strengthen the protection of companies’ trademarks worldwide.

He often presents at intellectual property conferences and seminars, makes media and radio appearances, and authors articles on various intellectual property topics.

Jason is a graduate of New York Law School, where he was named the recipient of the Excellence in Administration of Criminal Justice award. He received his undergraduate degree from The College of New Jersey where he studied Law & Justice. Jason is admitted to practice in New York, the U.S. Supreme Court, the U.S. District Court for the Northern, Southern and Eastern Districts of New York.

Education

  • J.D., New York Law School, 2001
  • B.S., The College of New Jersey, 1997
Representative Matters
  • On behalf of luxury apparel designer Romona Keveza, defeated bridal apparel competitor’s motion for a preliminary injunction and temporary restraining order preventing the use of the “BE YOUR OWN BRIDE” mark. (Romona Keveza Collection LLC v. David’s Bridal, Inc., 17-cv-04393-GBD (S.D.N.Y. 2017).
  • On behalf of famous photography company Nikon Corporation, TTAB appeal granted reversing examiner’s refusal to register the MMD mark for “laser scanners for industrial inspection and for geometrical measurement” in the presence of a similar MMD & Design mark based on du Pont factor, “channels of trade” only. In re Nikon Corporation; (Trademark Trial & Appeal Board 2017).
  • On behalf of record company Transcontinent Record Sales, Inc., defeated motion to dismiss client’s claims for common law copyright infringement under New York law for defendant record company’s license of music sound recording that was performed during the Superbowl XLVII halftime show. Transcontinent Record Sales, Inc. v. Secretly Canadian, Inc. and The Numero Group, LLC, Index No. 901170/2017; (N.Y. Sup. Ct., Commercial Division).
  • Manage and enforce U.S. trademark portfolio for Nikon Corporation.
  • Obtained extremely favorable settlement for client in trademark infringement and unfair competition action involving question of ownership of marks and validity of licenses. (Crescent Services Inc. et al v. Rochester Portable Specialties (NDNY Civ. Action No. 5:16-cv-00352)
  • Rolex SA in preventing the sale of counterfeit watches containing non-genuine parts.
  • Louisiana Lighting, LLC in defeating motion to dismiss client’s counterclaims for abandonment and non-use of asserted trademark in TTAB proceedings. (USPTO TTAB Opposition No. 91217535)
  • AgriStar Meat & Poultry in defeating motion to dismiss all trademark, copyright and false advertising claims brought on behalf of major kosher meat producer in far-reaching counterfeiting scheme.
  • Lorrillard Tobacco Company in preventing R.J. Reynolds Tobacco from using the term "Pleasure" in connection with advertising and promoting tobacco products.
  • Ross Stores, Inc. in dismissing claims of copyright infringement on print designs brought by "copyright troll."
  • Bohoo.com (UK) successfully defended enforcement of copyright, trademark, trade dress and advertising claims for the alleged copying of embroidery on cowboy boots.
  • Won motion for contempt in copyright infringement matter brought by the estate of Bob Marley against client retail electronics company related to use of image of Bob Marley on product packaging.

 

Noteworthy
  • Selected by Peer Review for Inclusion in Super Lawyer Directory 2016-2017 for Intellectual Property Litigation
  • Selected for Inclusion in Super Lawyers - Rising Stars Edition for Intellectual Property Litigation, 2012-2014 
Activities & Memberships
  • International Trademark Association, Member
  • Federal Bar Association, Trademark Section Chair
  • Innovation American Inn of Court, Member
Publications
  • "1 Year Since B&B Hardware," Law 360, March 23, 2016
  • "Listen: Redskins (May) Lose Trademark Protection," 570WSYR, June 18, 2014
  • "IP Litigation Tactics and Strategies for Foreign Companies Seeking to do Business in the U.S.," Federal Bar Association, June 2013
  • "3 Lessons From Apple's iPhone Trademark Loss in Brazil," Law360, February 2013
  • "Impact of the Red-Sole Shoe Case on the Fashion Industry," Lexology, September 2012
  • "The Innovation Design Protection and Piracy Prevention Act," Locke Lord, LLP AdMark Buzz, October 2011
Presentations
  • Presentation on IP protection for apparel and color trademarks, Federal Bar Association, October 2012