Joseph E. Sutton

jsutton@ezrasutton.com

Joined The Firm Full-Time in 1998.

Admitted:
1999 State Bar of New Jersey and U.S. District Court, District of New Jersey
1999 U.S. District Court, Southern and Eastern Districts of New York
1999 U.S. Court of Appeals, Federal Circuit (Specialized Court on Patent Litigation, Washington, D.C.)
2007 U.S. Court of Appeals, Second Circuit

Specialty: Patent, Trademark & Copyright Litigation; Trademark Clearance and Opinions; Prosecution of hundreds of Trademark Applications, including Amendments, Arguments & Appeals; Trademark Opposition & Cancellation Proceedings in the U.S. Patent & Trademark Office; Patent Searches and Opinions on Patentability; Enforcement of Patents, Trademarks and Copyrights in Federal Courts nationwide; Technology Licensing, Assignments and Transfer; Appeals to Federal Courts of District Court Decisions.

Law School: Seton Hall University, Juris Doctor, 1998
(Concentration in Intellectual Property).

College: Rutgers University, B.S., January 1995.
Deans List 1994.

Author: Common Misconceptions in Patent, Trademark & Copyright Law, 2006, Image Magazine

Member: Monmouth County and American Bar Association.
Board of Directors, Turnberry Isle Association, Aventura, Florida; 2006 – 2012
Phi Alpha Delta Law Fraternity.

Representative Cases

Alkaline Corp. v Gemtek (NJ Federal Court 1998-2000)

Represented plaintiff in multi-year patent litigation from 1998-2000. Defendant agreed to stop using infringing method of applying a certain anti-dust mite chemical, which infringed on our client’s patent, and to pay substantial settlement of six figures as damages to our client.

Furniture King Inc. v. Kings Furniture of New York Inc. (2002 NY Federal Court, Brooklyn)

Obtained Judgement with injunction stopping trademark infringement, and damages and attorney’s fees paid to our client.

Missry Associates Inc. (dba Misco Enterprises) v. National Sales, Lowes Home Centers, Home Depot (2001-2002—New Jersey federal court)

Pursued claim of patent infringement on two accused designs for hanging planter device, resulting in judgment with injunction stopping infringement, and other favorable terms of settlement, including substantial payment to our client.

Tugman v Hammacher Schlemmer, JC Penny et. el. (New York federal court—Manhattan 2002)

Represented defendants JC Penney and Hammacher Schlemmer in defending claim of trade dress infringement. Plaintiff voluntarily dismissed the case, with no payment of damages by our clients.

IQ Group Ltd v. Weisner publishing and National Senior Advisory Counsel (NJ federal court—2005)

After over 3 years of litigation during 2003-2006, defending our client NSAC from accusations of copyright infringement regarding artwork and text used in advertisements, and litigating motions for summary judgment, our firm successfully resolved the case with minimal payment of a small four-figure sum that was a tiny fraction of the millions our client's opponent requested in their Complaint.

LID v. MGM (2004 NY Federal court—Manhattan )

Represented plaintiff in copyright and unfair competition claims against infringing jewelry. Obtained judgment through settlement, with permanent injunction and payment of damages to our client.

Ovadia Corp. v. EFE (Federal Courts—NJ and NY 2004-2006)

In a series of over 10 patent infringement lawsuits during 2004-2006, filed for our client, successfully obtained judgments on consent from over 10 different defendants that infringed on our client's several utility patents covering jewelry display items.

Caldwell v Rudnick(Dr Jays Inc. officers) (New York federal court—Manhattan-2007)

Filed Motion to Dismiss and won dismissal of copyright infringement lawsuit. Opponent filed appeal with Second Circuit U.S. Court of Appeals in New York. Court of Appeals affirmed our win on appeal by upholding the dismissal.

Niagara Conservation v. Crane Plumbing (NJ federal court-2008)

In 2008, obtained settlement of over $400,000 within months of filing suit for our client asserting trademark infringement on mark used on plumbing products.

Magnum Opus Custom Electronics Engineering v. Glass Technology Inc. (NJ federal court-2009)

In 2009, successfully obtained injunction and payment of damages to our client in the early stage of copyright infringement lawsuit regarding computer software.

Lane Crawford v. Therapy (NY federal Court—Manhattan-2013)

In 2013, successfully enforced our client's federal trademark registration covering clothing and obtained the equivalent of a court injunction through settlement by stopping Florida-based defendant from operating retail clothing stores with the trade name THERAPY.

Revise Clothing v. V Sky (NY federal court—Manhattan-2015)

In a 2015 case involving apparel, negotiated settlement on behalf of our client accused of trademark infringement to pay ZERO damages or legal fees. The case was a trademark infringement lawsuit brought by owner of the Vanilla Star trademark registration, against our client, owner of Vanilla Sky trademark registration.

S__ v. M___ (confidential) NY federal Court—Manhattan-2016)

In a confidential settlement in 2016 of a lawsuit in the U.S. court for the Southern District of New York, represented a defendant in a trademark infringement case involving apparel, where our client did not have to pay any damages, and plaintiff paid our client a substantial sum of money to acquire client's federal registration of the mark, originally accused to be an infringement. Plaintiff dropped all claims of infringement and related claims against our client.

S & S Corp. of Myrtle Beach (dba Bowery restaurant) v. Bowery Restaurant LLC (2016—South Carolina federal court)

Obtained permanent injunction forcing defendant to completely change name of their restaurant, and other terms of settlement for our client which are confidential. The complaint we filed was based on infringement of our client's trademark registration.

LC apparel Inc. v. Lyst.com

In 2016, stopped a major UK-based online retailer Lyst.com from infringing on our client's trademark registration when they were adamantly contending that they had a right to do so under EU directives, and that they are merely a retailer in the U.K. and acting on behalf of a supplier.

Lopez v DrJays.com Inc. (NY federal Court—Manhattan)

In 2017, after our client, a large online retailer was accused of trademark infringement and received a demand of a settlement in the five-figure range, we submitted an analysis and sworn statement as to why there is no trademark infringement and proof that there were virtually no profits. We then negotiated for our client early, reaching a mere 3-figure settlement, with no admission of liability.

In re Haddad Int'l, LLC (U.S. Trademark Office- 2017- Serial No. 86/670051)

Successfully secured US registration for our client's trademark after negotiating and obtaining consent to register agreements with four different owners of earlier filed registrations, overcoming Examiner's rejection citing all four prior registrations.

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All rights reserved.