JONATHAN HUDIS, a partner in the firm's Trademark and Copyright practice groups, counsels clients in trademark, copyright, trade secrets and unfair competition matters, as well as related matters pertaining to the Internet. A skilled trademark and copyright attorney, Mr. Hudis prosecutes and litigates a full range of these matters before the federal courts, the Register of Copyrights, and the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). He has several years of practical intellectual property litigation experience in contested court matters and administrative proceedings.
Mr. Hudis helps clients of all sizes to establish and grow trademark and copyright portfolios, design and implement procedures to protect their intellectual capital, resolve foreign and domestic disputes, preserve trade secrets, and formulate company-wide IP strategies and policies.
Mr. Hudis is well versed in trademark prosecution and registered copyright protection matters. He serves as an Adjunct Professor of trademark and unfair competition law at the George Mason University School of Law and lectures and writes regularly on trademark and copyright law issues.
Mr. Hudis is particularly knowledgeable about Internet-related challenges and is a member of several arbitration panels in the areas of Internet domain names and trademarks. These roles include serving as a Domain Name Panelist for the World Intellectual Property Organization's Arbitration and Mediation Center, a Qualified Domain Name Dispute Resolution Panelist for the National Arbitration Forum, and a member of the International Trademark Association's Panel of Neutrals.
Professional Affiliations
American Bar Association, Litigation Section and Intellectual Property Law Section, Chair, Division II, Trademarks (2010 - present); Vice Chair, Division II, Trademarks (2009-2010); Member, CLE Board (2010-present); Member, Books Board (2009-present); Member, Content Advisory Board, (2011-present); Chair, Committee 201, Trademark Legislation (2008-2009)
American Intellectual Property Law Association (AIPLA), Trademark Law, Copyright Law, Professional Programs and AIPLA Fellows Committees, AIPLA Quarterly Journal Board of Editors (2007-2009); AIPLA Board of Directors (2004-2007); Chair, Anti-Counterfeiting & Anti-Piracy Committee (2010-present); Chair, Trademark Law Committee (2002-2004); Amicus Committee (2001-2004); Chair, Trademark Internet and Cyberspace Committee (1999-2001); Vice Chair, Trademark Legislation Committee (1998-1999); Chair, Trademark Trial and Appeal Board Practice Subcommittee (1996-1998); Chair, Trademark Newsletter Subcommittee (1995-1996)
The Copyright Society of the U.S.A.
New York State Bar Association, Litigation and Intellectual Property Law Sections
Order of the Barristers
Phi Delta Phi
Vice Magistrate, Evarts Inn (1987)
Experience
Representative Matters
Represented Land `N Sea and Macy's in a trademark and copyright infringement suit relating to the unauthorized use of jean pocket and jean stitching designs. The parties settled their differences with the entry of a stipulated settlement and consent decree in which there was no admission of infringement. Sweet People Apparel, Inc. and RCRV Inc. d/b/a Rock Revival v. Land 'N Sea, Inc. and Macy's Inc., Civil Action No.: 10-cv-7125 (LLS/JLC) (S.D.N.Y. March 2011)
Represented the United States Department of Health and Human Services in an Opposition before the Trademark Trial and Appeal Board against Access Community's application to register the design of a dress in connection with women's health awareness services. DHHS viewed Access Community's Dress Design mark as being confusingly similar to DHHS's registered Dress Design mark in connection with women's health awareness services. The parties settled their differences by an agreement in which Access Community was limited in the manner that it could publicly use and display its Dress Design mark. United States Department of Health and Human Services v. Access Community Health Network, Opposition No. 91/192,773 (TTAB March 2011)
Represented Dialight in a Cancellation Action before the Trademark Trial and Appeal Board against Dialight's registered MICRO LED mark on the grounds that the mark allegedly had become generic. The parties resolved their differences by agreement, and Microoled withdrew its cancellation action with prejudice. Microoled v. Dialight Corporation, Cancellation No.: 92/051,942 (TTAB March 2011)
Represented Car-Freshner and Julius Sämann in a suit against Brooks Sports for incorporating a replica of the plaintiffs' Tree Design Mark and the phrase "RUN FRESH" (confusingly similar to our the Plaintiffs' I'M FRESH mark) into the inner soles of shoes. In exchange for the Plaintiffs' dismissal of the lawsuit, the parties entered into a license and settlement agreement which recognized the Plaintiffs' trademark rights and compensated the Plaintiffs accordingly. Car-Freshner Corporation and Julius Sämann Ltd. v. Brooks Sports, Inc.. Civil Action No. 7:11-CV-200 (GTS/ATB) (N.D.N.Y. March 2011)
Represented Schering in an Opposition before the Trademark Trial and Appeal Board against Stiefel's applications to register the marks MAXCLARITY and MAXCLARITY ACNE MEDICATION in connection with skin care products. Schering viewed Stiefel's MAXCLARITY marks as being confusingly similar to Schering's registered CLARITIN marks in connection with anti-allergy preparations. The parties settled their differences by an agreement in which Stiefel agreed to limit the scope of its use and registration of its MAXCLARITY marks. Schering Corporation v. Stiefel Laboratories, Inc., Opposition No. 91/187,280 (TTAB March 2011)
Represented Lockheed Martin in a partial Cancellation Action before the Trademark Trial and Appeal Board against VISTA CONTROL SYSTEMS Registration so that the USPTO would withdraw the prior refusal to register the client's VISTA mark. The parties settled the matter with Vista Control Systems granting Lockheed Martin a consent to use and registration of the VISTA mark in exchange for Lockheed Martin withdrawing the partial cancellation action. Lockheed Martin Corporation v. Vista Control Systems, Inc., (TTAB, Canc. No. 92/047,164, August 2010)
Represented American Psychological Association in an Opposition before the Trademark Trial and Appeal Board against PsychData's registration of the mark PSYCHDATA as likely to be confused with APA's family of registered "PSYC ..." marks. The parties settled the matter with the Applicant agreeing not to use its PSYCHDATA mark in any of APA's channels of trade, and agreeing not to register or use any other "PSYC ..." or "PSYCH ..." marks. APA, in turn, agreed to withdraw its opposition without prejudice. American Psychological Association v. PsychData, LLC, (TTAB, Opp. No. 91/184,241, TTAB, June 2010)
Represented Schering Corporation in an Opposition before the Trademark Trial and Appeal Board against Avanti Pharma's registration of the DILACTIN mark as likely to be confused with Schering's TINACTIN mark. Avanti Pharma repeatedly refused to provide discovery to which Schering was entitled. After a series of discovery rulings rendered in Schering's favor, including an award of sanctions against Applicant, Avanti Pharma abandoned its DILACTIN Application with prejudice. This resulted in the TTAB issuing judgment in Schering's favor, sustaining the Opposition. Schering Corporation v. Avanti Pharma Corporation, (TTAB, Opp. No. 91/188,872, April 2010)
Represented Agri Laboratories in a Cancellation Action before the Trademark Trial and Appeal Board against Manna Pro's Registration for the mark COLOSTRO-FIX as likely to be confused with Agri Labs' mark COLOSTRX. The parties settled the matter under an agreement designed to avoid confusion in the marketplace. Agri Laboratories, Ltd. v. Manna Pro Products, LLC, (TTAB, Opp. No. 92/050,842, Nov. 25, 2009).
Represented American Psychological Association in an Opposition against Cookie Jar's Applications to register the mark MAGI-NATION as likely to be confused with APA's mark MAGINATION PRESS. The parties resolved their differences by entering into a trademark co-existence agreement. American Psychological Association v. Cookie Jar Entertainment, Inc., (TTAB, Opp. No. 91/186,125, Nov. 18, 2009).
Represented Schering-Plough before the Trademark Trial and Appeal Board in an Opposition against Elitech's Application to register the mark AQUAPHLUOR as likely to be confused with Schering-Plough's mark AQUAFLOR. The parties settled the Opposition with an agreement limiting Elitech's use and registration of the AQUAPHLUOR mark. Schering-Plough Animal Health Corp. v. Elitech Holding B.V., (TTAB, Opp. No. 91/187,570, Sept. 2, 2009).
Represented American Psychological Association in an Opposition before the Trademark Trial and Appeal Board against Plumeus' Application to register the mark PSYCHTESTS.COM as likely to be confused with the client's family of "PSYC..." marks. The parties settled the Opposition under an agreement prohibiting Plumeus from using or further registering its mark except under circumstances acceptable to APA. American Psychological Association v. Plumeus Inc., (TTAB, Opp. No. 91/188,153, Aug. 12, 2009).
After Heineken received a cease-and-desist letter from Hatfield Quality Meats, alleging infringement of its SHARE THE GOODNESS mark for pork products, represented Heineken before the U.S. District Court for the Southern District of New York in a declaratory judgment action for non-infringement regarding Heineken's use of the mark SHARE THE GOOD in connection with an advertising campaign to sell beer. The case was settled with Hatfield withdrawing all claims and any possible future claims of trademark infringement for Heineken's use of its SHARE THE GOOD mark. Heineken USA Inc. v. Hatfield Quality Meats, Inc., et al., (S.D.N.Y., Civil Action No. 7:08cv5125, June 24, 2009).
Represented Everstar Merchandise Co. in a trade dress and copyright infringement lawsuit brought by Evident in the U.S. District Court for the Southern District of New York. In response, Everstar asserted numerous counterclaims including for a declaratory judgment of invalidity and non-infringement, trade libel and defamation. The matter ended with a settlement satisfactory to Everstar, which included a dismissal of all claims and counterclaims with prejudice. Evident Technologies, Inc. v. Everstar Merchandise Co., Ltd., (S.D.N.Y., Civil Action No. 1:08cv10230, June 24, 2009).
Represented Maxsa Innovations in a trademark infringement suit against NBO in the U.S. District Court for the Eastern District of Virginia. The matter was resolved by the entry of a Stipulated Settlement and Consent Decree enjoining NBO from engaging in further acts of infringement. Maxsa Innovations, LLC v. NBO Group Inc., (E.D. Va., Civil Action No. 1:09cv18, May 8, 2009).
Represented Haribo of America regarding a pair of related conflicts before the Trademark Trial and Appeal Board pertaining to Haribo's mark BUILD-A-BURGER for candy and Build-a-Bear's mark BUILD-A-BEAR for retail store services featuring children's toys. These disputes also involved Build-a-Bear's sought-after registration of its mark for candy. The parties entered into a co-existence agreement, which resulted in a negotiated withdrawal of all Board proceedings with prejudice. Build-a-Bear Retail Management, Inc. v. Haribo of America, Inc. and Haribo of America, Inc. v. Build-a-Bear Retail Management, Inc., (TTAB, Opp. No. 91/186,208, Jan. 9, 2009).
Represented the plaintiffs in a trademark infringement suit brought before the U.S. District Court for the Northern District of New York against Old Navy and The Gap. The Defendants, without authorization, sold t-shirts bearing infringing representations of the plaintiffs' Tree Design Mark. The case was settled with Old Navy and The Gap undertaking not to repeat accused infringing activities. Car-Freshner Corporation and Julius Sämann Ltd. v. Old Navy LLC and The Gap, Inc., (N.D.N.Y, Civil Action No. 7:08cv276, Nov. 28, 2008).
After Hooker Furniture received a cease-and-desist letter from Opus alleging infringement of its mark OPUS for real estate development and building construction services, represented Hooker Furniture before the U.S. District Court for the Eastern District of Virginia in its declaratory judgment action for non-infringement. Opus counterclaimed for infringement and unfair competition. The litigation involved Hooker Furniture's use and applications for registration of the mark OPUS DESIGNS for furniture. The case was settled with Hooker Furniture being allowed to continue using and to register the OPUS DESIGNS mark under terms agreed to by the parties. Hooker Furniture Corporation v. Opus Corporation et al., (E.D. Va., Civil Action No. 1:08cv390, Oct. 10, 2008).
Represented AWS Convergence Technologies before the Trademark Trial and Appeal Board in its Opposition against Greystripe's Applications to register the mark ADWRAP for online ASP commercial advertising services. AWS viewed the ADWRAP mark as likely to be confused with AWS's BRANDWRAP mark for ASP commercial advertising. The Opposition was resolved by Greystripe abandoning its Applications with prejudice, and the issuance of judgments in AWS's favor sustaining the Oppositions. AWS Convergence Technologies, Inc. v. Greystripe, Inc., (TTAB, Opp. No. 91/185,005, Oct. 8, 2008).
Represented Lakeland College in a concurrent use proceeding before the Trademark Trial and Appeal Board against the junior users of variations of the mark LAKELAND COLLEGE. The proceeding was settled with the Board issuing a Consent Judgment granting a Concurrent Use Registration to Lakeland College covering the entire U.S. except for four states ceded to the junior parties. Lakeland College v. Lake Land College v. Lakeland Community College, (TTAB, Opp. No. 94/001,220 July 18, 2008).
Represented the Alpha-1 Foundation in an Opposition before the Trademark Trial and Appeal Board against Greatest Asset's Applications to register the marks ALPHAONE and ALPHA 1 ONE & Design as being confusingly similar to the Foundation's marks ALPHA-1 FOUNDATION and 1 ALPHA-1 FOUNDATION & Design. The Opposition was settled with Greatest Asset restricting the scope of use and registration of its marks, and with Greatest Asset consenting to the use and registration of the Foundation's marks. Alpha-1 Foundation, Inc. v. Greatest Asset Pty. Ltd., (TTAB, Opp. No. 91/175,260, July 2, 2008).
Represented the plaintiffs in a trademark infringement suit brought before the U.S. District Court for the Northern District of New York. The Defendants, without authorization, sold t shirts bearing infringing representations of the plaintiffs' Tree Design Mark. The matter was resolved by the entry of a Consent Judgment, providing for an injunction against future infringement. Car-Freshner Corporation and Julius Sämann Ltd. v. dEliA*s, Inc., et al., (N.D.N.Y., Civil Action No. 7:08cv114, May 14, 2008).
Successfully represented Dialight in domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Dialight Corporation v. Component Enterprises, (NAF, Case No. 1159928, May 5, 2008). Represented Blue Man Productions in its Appeal to the U.S. District Court for the District of Columbia from an adverse judgment issued by the Trademark Trial and Appeal Board. Blue Man Group opposed Mr. Tarmann's application to register the mark BLUEMAN for tobacco products as likely to be confused with the BLUE MAN GROUP marks for entertainment services. When Mr. Tarmann failed to defend himself in the District Court action, the Court issued a default judgment overturning the Board's judgment. Blue Man Productions, Inc. v. Erich Tarmann, (D.D.C., Civ. Action No. 1:05cv2037, March 6, 2008).
After American Psychological Association received a cease-and-desist letter from ABEBooks, represented APA before the U.S. District Court for the District of Columbia in a declaratory judgment action for non-infringement, which also included APA's claims of trademark infringement against ABEBooks. The case was settled with ABEBooks withdrawing all claims and any possible future claims of trademark infringement against the APA BOOKS mark, as well as ABEBooks removing its offending infringements of APA's marks from ABEBooks' website. American Psychological Association v. ABEBooks, Inc., (D.D.C., Civil Action No. 1:08cv30, March 6, 2008).
Represented The U.S. Department of Health and Human Services before the Trademark Trial and Appeal Board in its Opposition against AHA's multiple applications to register variations of the marks WEAR RED DAY and a RED DRESS Design in connection with charitable services relating to women's heart health issues. The case was settled with AHA abandoning half of its applications and assigning a 50% interest in the other half of the applications to DHHS. U.S. Dept. of Health & Human Svcs. v. American Heart Ass'n, Inc., (TTAB, Opp. No. 91/174, 163, Dec. 5, 2007).
Represented the plaintiffs in a trademark infringement suit brought before the U.S. District Court for the Northern District of New York against AAA Manufacturing for marketing and selling tree-shaped air fresheners as advertising specialty items to retail customers. A favorable judgment from the Court was used to shut down several of the Defendant's websites, and online postings on third-party websites, which were advertising the infringing tree-shaped air fresheners for sale. Car-Freshner Corporation and Julius Sämann Ltd. v. AAA Manufacturing, Inc., (N.D.N.Y., Civil Action No. 7:07cv456, Sept. 11, 2007).
Successfully represented the American Psychological Association in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . American Psychological Association v. Keyword Marketing, Inc., (NAF, Case No. 912458, March 22, 2007). Represented the Plaintiffs in a trademark infringement suit brought before the U.S. District Court for the Southern District of New York against Virgin for using Plaintiffs' Tree Design Marks without authorization in connection with an in-store marketing campaign. The case was resolved by the parties entering into a license under which Virgin could make limited use of the Tree Design Marks for a brief period of time. Car-Freshner Corporation and Julius Sämann Ltd. v. Virgin Entertainment Group, Inc. d/b/a Virgin Megastores, (S.D.N.Y., Civil Action No. 1:06-cv-13382, Dec. 12, 2006).
Represented Broadcast Music Inc. and its associated musical artists before the United States District Court for the Western District of Virginia in their copyright infringement suit against the restaurant and bar Sweet Caroline's. The restaurant played the songs of BMI's musical artists at its establishment without paying royalties. The action was settled with the restaurant on financial terms favorable to BMI and its artists. Broadcast Music, Inc. v. Sweet Caroline's, LLC d/b/a Sweet Caroline's, (W.D. Va., Civil Action No. 5:06cv94, Nov. 22, 2006).
Successfully represented Alpha One Foundation in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Alpha One Foundation, Inc. v. Morozov, (NAF, Case No. 766380, Sept. 20, 2006). Represented Heineken before the Trademark Trial and Appeal Board in an Opposition against Sleeman's Application to register its mark for the shape of a keg-shaped beer can. The Opposition was resolved by Sleeman abandoning its Application with prejudice. Heineken Brouwerijen B.V. v. The Sleeman Brewing & Malting Co. Ltd., (TTAB, Opp. No. 91/166,542, June 27, 2006).
Defended Heineken before the Trademark Trial and Appeal Board in an Opposition brought by Anheuser-Busch against Heineken's Application to register the mark KEG CAN for beer. Anheuser- Busch withdrew the Opposition under the terms of a settlement reached by the parties. Anheuser-Busch, Incorporated v. Heineken Brouwerijen B.V., (TTAB, Opp. No. 91/163,846, June 20, 2006).
Successfully represented Heineken in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registrations for and . Heineken Brouwerijen B.V. and Heineken USA Incorporated v. Gorder, (NAF, Case No. 651107, April 10, 2006). Successfully represented Skyhawke Technologies in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Skyhawke Technologies, LLC v. Sky Golf Company Limited, (NAF, Case No. 409457, March 17, 2005). Successfully represented Nova Southeastern University in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Nova Southeastern University, Inc. v. Trademark, (NAF, Case No. 373768, Jan. 19, 2005). Represented the plaintiffs in a trademark infringement suit brought before the U.S. District Court for the Northern District of New York against Big Lots Stores for its infringement and counterfeiting of our plaintiffs' tree design mark. The Court ruled, on summary judgment, that Big Lots Stores infringed the plaintiffs' marks. Thereafter, a Consent Judgment was entered providing for injunctive relief and financial terms favorable to the plaintiffs. Car-Freshner Corporation and Julius Sämann Ltd. v. Big Lots Stores, Inc., (N.D.N.Y., Civil Action No. 7:02cv1343, July 13, 2004).
Successfully represented Home Builders Institute in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Home Builders Institute v. IHBMI, (NAF, Case No. 204084, Jan. 13, 2004). Represented Hometown Bank in an Opposition before the Trademark Trial and Appeal Board. Hometown Bank challenged Independent Community Bankers' application to register the service mark FINANCIAL POWER RIGHT HERE AT HOME as likely to be confused with Hometown Bank's registered service mark BETTER THAN BIG, RIGHT HERE AT HOME! The parties resolved their differences by a settlement that included Independent Community Bankers' abandonment of its application and its cessation of use of its mark. The Hometown Bank f/k/a Clyde Savings Bank, SSB v. Independent Community Bankers of America, (TTAB, Opp. No. 91/156,707, Dec. 12, 2003).
Represented Public Service Company of New Mexico before the Trademark Trial and Appeal Board in its Opposition against Elcotel's Application to register the mark PNM PLUS as likely to be confused with the client's mark PNM. On PNM's motion for summary judgment, the Trademark Trial and Appeal Board sustained the Opposition. Public Service Company of New Mexico v. Elcotel, Inc. and Quortech Global Solutions, Inc., (TTAB, Opp. No. 91/120,071, Nov. 18, 2003).
Successfully represented Kellogg Company before the Trademark Trial and Appeal Board in three consolidated Oppositions against ACH's applications to register the marks NUTTY CORN, NUTTY OATS and NUTTY MULTIGRAIN for breakfast cereal. Kellogg asserted that the marks were merely descriptive and had not acquired secondary meaning, and that Kellogg wanted the freedom to use these terms descriptively, unencumbered by the rights of a third party. All three Oppositions were sustained. Kellogg Company v. ACH Food Companies, Inc., (TTAB Opp. Nos. 91/09,445; 91/096,699; and 91/097,357, Nov. 26, 2003).
Successfully represented Kuhn Knight before the Trademark Trial and Appeal Board in a Cancellation Action against the registration of the mark BLACK KNIGHT as confusingly similar to Kuhn Knight's KNIGHT mark. The Registrant did not answer the Petition for Cancellation, and we obtained a default judgment for cancellation of the BLACK KNIGHT registration. Kuhn Knight, Inc. v. Hernandez, (TTAB, Opp. No. 92/041,939, Nov. 13, 2003).
Successfully represented Home Builders Institute in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Home Builders Institute v. The National Institute of Home Builders, Inc., (NAF, Case No. 166011, Oct. 7, 2003). Represented Joe Boxer in a trademark, trade dress and copyright infringement suit before the U.S. District Court for the Southern District of New York. The parties settled their differences with the entry of a Consent Decree in favor of Joe Boxer. The Consent Decree prevents the Defendant from using SMILEY FACE designs or trade dress on clothing products. Joe Boxer Company, LLC v. Briefly Stated, Inc., (S.D.N.Y, Civil Action No. 1:02cv9470, Sept. 15, 2003).
Successfully represented Plaintiffs before the United States District Court for the Eastern District of Virginia asserting claims of trademark infringement, dilution, unfair competition and cybersquatting against the registrant of, and web site sponsor under, the domain name . The Court entered a Default Judgment, directing the withdrawal from the Internet of the infringing domain name and web site that had been used for selling pornographic merchandise. Toys "R" Us, Inc. and Geoffrey, Inc. v. Bogert d/b/a Bondage Toys R Us, (E.D. Va., Civil Action No. 1:02cv01738, July 7, 2003). Represented Toys "R" Us in a trademark infringement brought before the U.S. District Court for the Eastern District of Virginia against an infringer and domain name cybersquatter of the well known "R" US marks. The Court directed the transfer of the domain name to Toys "R" Us, and prohibited the Defendant from further use of GIFT(S) R US or any mark or domain name confusingly similar to TOYS "R" US. Toys "R" Us, Inc. et al. v. Mary Ann Buffum d/b/a GIFTS R US, (E.D. Va., Civil Action No. 1:02cv1738, July 7, 2003). Represented the Plaintiffs in a trademark infringement suit before the U.S. District Court for the Eastern District of Virginia against the Defendants for their unlawful, misbranded sales of medical products over the Internet bearing Plaintiffs' marks BARD, BARDEX and DAVOL. The parties resolved their differences by the entry of a Consent Judgment requiring Defendants to disclose their suppliers and the extent of their sales, to disgorge their profits, to remove all of the Plaintiffs' trademarks from Defendants' web sites and meta tags, and to inform customers and Internet search engines that Defendants no longer offered BARD, BARDEX or DAVOL products for sale. C. R. Bard, Inc. and BCR, Inc. v. Isdera Corp. and Nardone, (E.D. Va. Civil Action No. 1:02cv1240, Oct. 18, 2002).
Successfully represented Kellogg Company before the Trademark Trial and Appeal Board in an Opposition against the Application to register the mark NUTRI-BRAIN & Design, on the grounds that the mark was likely to be confused with Kellogg's NUTRI-GRAIN marks. Kellogg Company v. Mueller, (TTAB, Opp. No. 91/100,070, Nov. 16, 2001).
Successfully represented the Complainants in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Toys "R" Us, Inc. and Geoffrey, Inc. v. O'Hara, (NAF, Case No. 97152, June 8, 2001). Successfully represented Volvic in a domain name proceeding before the National Arbitration Association seeking to recover the domain name registration for . Societe Des Eaux De Volvic and Great Brands of Europe, Inc. v. Bans, (NAF, Case No. 96809, April 23, 2001). Represented the Paralyzed Veterans Association before the U.S. District Court for the District of Columbia asserting claims of trademark infringement, dilution, unfair competition and cybersquatting with respect to the domain name and website . The parties settled their differences, with defendants transferring all rights to the domain name and website to PVA. Paralyzed Veterans Association v. Holmes, (D.D.C., Civil Action No. 1:01cv00645, April 23, 2001). Represented Florists' Transworld Delivery before the U.S. District Court for the Eastern District of Virginia against Cable & Wireless in a suit for trademark abandonment, intentional interference with business relations (with the USPTO) and abuse of process (of the USPTO's and TTAB's registration and opposition procedures). The parties entered into a world wide settlement of their differences (over the rights to the word mark MERCURY in connection with communications services). Florists' Transworld Delivery v. Cable & Wireless, (E.D. Va., Civil Action No. 1:00cv1822, Jan. 30, 2001).
Accolades
American Bar Association Intellectual Property Law Section, Outstanding Leadership Award (2010)
Aspatore Books, The Best Practices of Leading IP Lawyers (2007)
Cambridge Who's Who Award for Excellence in Trademark and Copyright Law (2009)
Cambridge Who's Who Top 101 Industry Experts (2008)
Cambridge Who's Who Professional of the Year Representing Law (2007)
Empire Who's Who Professional of the Year Representing Intellectual Property Law (2006)
Madison Who's Who Featured Member (2006 - 2007)
Martindale-Hubbell® AV® Preeminent™ 4.8 out of 5
Trade Mark Law Practitioner Expert (2010)
Resources
News
Oblon Spivak's Jonathan Hudis Quoted in Law360 Regarding the Viacom v. YouTube Law Suit
Monday, April 9, 2012
U.S. District Court for the Eastern District of Michigan Rules in Favor of Oblon Spivak Client Paralyzed Veterans of America
Wednesday, April 4, 2012
Oblon Spivak's Jonathan Hudis Quoted in InsideCounsel Magazine Regarding the Proposed Bills Before Congress to Shut Down Rogue Websites
Sunday, January 1, 2012
Oblon, Spivak Partner Appointed to Represent ABA IPL Section at Trademark Trilateral Cooperation Meeting
Thursday, August 11, 2011
Oblon Spivak Attorneys Appointed to Leadership Positions in the American Bar Association
Tuesday, August 9, 2011
Oblon Spivak's Jonathan Hudis quoted in Bloomberg on "Apple Peel" Device
Thursday, September 23, 2010
Oblon, Spivak Partner Jonathan Hudis is Editor of ABA Book on TTAB Practice; David Kera, Robin Bren and Beth Chapman Contribute Chapters
Thursday, September 16, 2010
Oblon, Spivak Members Participating in ABA Webinar on the Trademark Trial and Appeal Board
Thursday, September 16, 2010
Oblon, Spivak's Jonathan Hudis is Appointed Chair of Division II (Trademarks) of the ABA's IP Law Section; Hudis Also Receives Leadership Award
Wednesday, September 1, 2010
Oblon, Spivak's Jonathan Hudis Quoted in Inside Counsel on Costco v. Omega
Friday, February 19, 2010
Jonathan Hudis Appointed Vice-Chair of Division II (Trademarks) of the ABA/IPL
Friday, April 24, 2009
Dilution Bill Passes Senate and Is Cleared for the President's Signature
Tuesday, September 26, 2006
Greeting Card Use of Well-Known Tree Design is Enjoined
Monday, March 6, 2006
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd. Decision Summary
Monday, June 27, 2005
A Trademark Defendant Claiming The Defense Of Fair Use Does Not Need To Negate Likelihood Of Confusion
Wednesday, December 8, 2004
Little Trees, Big Win
Thursday, April 1, 2004
Oblon, Spivak Files Amicus Curiae Brief with U. S. Supreme Court in Trademark Dilution Case
Thursday, August 1, 2002
U.S. District Court for Eastern District of Virginia Enjoins Use of "R US" by Infringer
Monday, October 1, 2001
Another Win For Geoffrey, Inc.
Friday, June 1, 2001
Oblon, Spivak Announces Appointment of its Members as Internet Domain Name Dispute Arbiters
Monday, May 1, 2000
Oblon, Spivak's Trademark Practice Group Responds To World Intellectual Property Organization's (WIPO) Request For Comments On Internet Domain Names
Monday, March 1, 1999
Publications
A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice
Sunday, August 1, 2010
Avoiding Copyright Registration Lament
Thursday, April 8, 2010
The Requirement for a Copyright Registration: A Missed Opportunity
Wednesday, March 3, 2010
The Trademark Trial and Appeal Board Publishes New Rules of Practice
Monday, October 22, 2007
The Trademark Trial and Appeal Board Changes Its Rules of Practice: A New Era of Enhanced Disclosure
Monday, August 6, 2007
USPTO Makes Changes to Trademark Board Rules
Monday, August 6, 2007
IP Protection: Planning in Advance is Not Optional
Tuesday, July 31, 2007
Protection of Industrial Designs in the United States
Tuesday, August 2, 2005
Cyber-Griping: Complain, But Don't Go Commercial
Wednesday, September 1, 2004
Beginning an Inter Partes Proceeding Before the Trademark Trial and Appeal Board: Nature, Grounds and Initial Pleadings
Saturday, May 1, 2004
Undressing Trade Dress
Tuesday, April 1, 2003
Victoria's Secret and the Ever Elusive Dilution Doctrine
Tuesday, April 1, 2003
Litigating In Rem Cybersquatting Cases Under The ACPA - Best Practices And Considerations
Monday, July 1, 2002
Copyright Registration and Derivative Works
Wednesday, May 1, 2002
Experts in Intellectual Property Cases: A New Paradigm
Sunday, October 1, 2000
Trademarks in Cyberspace: Gathering Your Evidence To Make A Difference
Tuesday, February 1, 2000
When To Search and How To Search, These Are the Questions
Saturday, January 1, 2000
Forum Shopping in Trademark Litigation in the United States
Thursday, October 1, 1998
"Drawings Practice" in the Prosecution of Trademark Applications
Wednesday, July 1, 1998
All Dressed Up...
Monday, March 23, 1998
The Federal Dilution Act Celebrates Its One Year Anniversary
Monday, April 7, 1997
Software "Made For Hire" -- Make Sure It's Really Yours
Sunday, September 1, 1996
Removing The Boundaries Of Color
Monday, January 1, 1996
Doing Your Legal Homework Before The Show
Wednesday, November 1, 1995
Fair Use And Attorneys' Fees: The Supreme Court Levels (Or Tilts?) The Copyright Playing Field
Sunday, January 1, 1995
Policies Covering Advertising Injuries May Prove To Be Of Limited Benefit
Sunday, January 1, 1995
Trademark Protection for Color: A Practitioner's Guide
Sunday, January 1, 1995
The 'Trade Dress' Of Toys And Games-- Examining The Legal Subtleties Of A 'Powerful Marketing Tool'
Saturday, October 1, 1994
Events
AIPLA 2012 Spring Meeting
Thursday, May 10, 2012 - Saturday, May 12, 2012
INTA 2012 Annual Meeting
Saturday, May 5, 2012 - Wednesday, May 9, 2012
AIPLA 2011 Spring Meeting
Thursday, May 12, 2011 - Saturday, May 14, 2011
The Nuts and Bolts of Trademark Trial and Appeal Board Practice
Wednesday, September 29, 2010
LES Pan-European Conference 2010
Monday, June 7, 2010
In re Bose: Strategies for Trademark Prosecution Under the New Fraud Standard
Tuesday, October 20, 2009
2009 Annual Meeting
Thursday, October 15, 2009
2009 Spring Meeting
Wednesday, May 13, 2009
24th Annual IP Law Conference
Wednesday, April 1, 2009
AIPLA Annual Meeting
Tuesday, October 21, 2008
USPTO Global Intellectual Property Academy - Enforcement of Intellectual Property Rights Program
Monday, May 5, 2008
Enforcement of Intellectual Property Rights
Monday, August 6, 2007
Advanced Seminar on Trademark Law 2007
Tuesday, May 15, 2007
Spring Meeting
Wednesday, May 9, 2007
Navigating Trademark Practice Before the PTO 2007: From Filing Through the TTAB Hearing
Thursday, February 22, 2007
Navigating Trademark Practice before the PTO 2006: From Filing Through the TTAB Hearing
Thursday, February 23, 2006
Navigating Trademark Practice Before the PTO 2005: From Filing Through the TTAB Hearing
Thursday, February 24, 2005