John M. Rannells, Jr.
Partner
Email:
Admissions
New Jersey: 1987
U.S. District Court New Jersey: 1987
New York: 1987
U.S. District Court, Southern District, New York: 1989
U.S. District Court, Eastern District, New York: 1992
U.S. Court of Appeals, Federal Circuit: 2006
Pro Hac Admissions:
U.S. District Court, Northern District, New York
U.S. District Court, Central District, California
Education
Rutgers University (B.A., 1975)
Seton Hall University (J.D., 1987)
Guest Lecturer, 1990Ñ: "Entertainment Law," Union County College; "Intellectual Property," Raritan Valley Community College.
Member
AIDV – the Association Internationale des Juristes du Droit du Vin (International Wine Law Association)
INTA – International Trademark Association
NARIP (National Association of Recording Industry Professionals)
Pro Bono Representation
The Center for Contemporary Art
The Dream Believe Know It Foundation (DBK Foundation)
K9 Soldiers, Inc.
Listings
Music Registry, Attorney, Legal & Business Affairs
The Music Phone Book
Languages
Spanish
Practice Areas
Trademark
Music Licensing
Intellectual Property
Entertainment Law
Recent Cases
Representative Domain Name Cases
Nautica Apparel, Inc. v. Domain Tech Enterprises
4/28/2011 National Arbitration Forum Decision # FA- 1376406
Domain: nauticafurniture.com
Judgment transferring domain name to client.
Goya Foods, Inc. v. Texas International Property Associates
5/12/2010 National Arbitration Forum Decision # FA-1316364
Domain: recetasgoya.com
Judgment transferring domain name to client.
OBBI LLC v. Jet Stream Enterprises Limited
12/15/2009 National Arbitration Forum Decision # 1292959
Domain: cuddleduds.com
Judgment transferring domain names to client.
Robert Mondavi Winery v Cayman Ninety Business
07/02/2009 National Arbitration Forum Decision # 1271177
Domains: mondaviwinery.com and woodbridgewine.com
Judgment transferring domain names to client.
Sutter Home Winery Inc. v Texas International Property Associates
03/18/2009 National Arbitration Forum Decision # 1252751
Domain: sutterhomewines.com
Judgment transferring domain name to client.
Retail Brand Alliance Inc. v Open Water Enterprises Limited
03/10/2008 National Arbitration Forum Decision # 1153556
Domain: brooksbros.com
Judgment transferring domain name to client.
Constellation Wines US Inc. v. Whois Protection
08/28/2007 National Arbitration Forum Decision #1040081.
Domain: blackstonewines.com
Judgment transferring domain name to client.
Obtained finding that client’s BLACKSTONE mark is famous and client’s wines are “one of the most successful wine brands in the United States.”
Representative Federal Court Cases
Albert Johnson and Kejuan Muchita (Mobb Deep) v. Norman Bell et al.
2009 DCNJ Civ. No. 08-3424
Trademark / Copyright Infringement action.
Worked out settlement with various defendants; obtained money judgment against two defendants; and obtained order granting costs and attorney fees as against two defendants.
Cardiovascular Research Foundation v. Roni Amiel and Novolutions, Inc.
2009 SDNY Civ. No. 08-7053
Misappropriation / Trade Secret action.
Obtained favorable settlement for defendants (dismissal with prejudice and no admission of wrongdoing).
Iberia Foods Corp. v. Rolando Romeo d/b/a Rol-Rom Foods
150 F.3d 298; 47 USPQ2d 1604 (3rd Cir. 1998). Co-counsel.
Grey-Market Goods case.
Established importance of quality control standards on domestic goods manufactured abroad and its connection to whether such goods are considered “genuine” when imported into U.S. domestic market. Obtained ruling that client’s imported goods were “genuine” and that plaintiff’s goodwill was not harmed.
Goya Foods, Inc. v. Tropicana Products, Inc.
846 F.2d 848; 6 USPQ2d (2nd Cir. 1988). Co-counsel.
Trademark Infringement / Declaratory Judgment action.
Appeal from N.Y. district court dismissing client’s action on basis of no “justiciable controversy.” Judgment reversed. Established that pendency of a PTO proceeding is not a proper basis to forestall a lawsuit based upon a claim of trademark “infringement” or in seeking a declaration of non-infringement.
St. Helena Wine Company, Inc., d.b.a. Duckhorn Vineyards, v. Allied Management, Inc. and Adler Fels, d.b.a. Wood Duck Pond Winery
1998 U.S. Dist. LEXIS 12558 (NDCa 1998). Co-counsel.
Trademark Infringement Action.
On forum non conveniens motion, successful in obtaining transfer of action from California to New Jersey federal district court (client’s venue).
Goya Foods, Inc. v. Condal Distributors, Inc.
732 F. Supp. 453; 17 USPQ2d 1949 (SDNY 1990). Co-Counsel.
Trade Dress Infringement action.
Successful prosecution of preliminary injunction motion converted to final judgment. Obtained finding of trade dress infringement based upon similarities in appearance of parties’ respective rice packages and upon persuasive survey evidence.
Frederick Blum v. Harper's Bazaar et al
1988 U.S. Dist. LEXIS 4424; 8 USPQ2d (SDNY 1988). Primary counsel.
Copyright Infringement action.
Successful in defeating cross-motion for summary judgment on issue of “works-made-for-hire” in copyright infringement action. Case settled with payment to client.
In Design a/k/a Hukafit Sportswear, Inc. v. S. Rothschild & Co.
1986 U.S. Dist. LEXIS 29875; Copy. L. Rep. (CCH) P25,890 (SDNY 1986). Co-counsel.
Copyright Infringement action (sweater design).
Successfully defeated motion for preliminary injunction and obtained ruling denying plaintiff’s claim for injunctive relief and denying plaintiff’s claims for damages.
Representative U.S. Patent and Trademark Office Litigation (TTAB)
Robert Mondavi Winery v. Davi Skin, Inc.
03/31/2010 Opposition No. 91/189705
Successfully opposed application for DAVI WINE for wines on basis of likelihood of confusion with client’s mark MONDAVI for wine – Decision granted on our motion for discovery sanctions against Davi Skin.
Franciscan Vineyards, Inc. v. John Max Smith
01/30/2009 Opposition No. 91/166031
Successfully opposed application for IKON for vodka on basis of likelihood of confusion with client’s mark ICON for wine.
Zabar’s & Co. v. Zaba’s Grill LLC
07/10/08 Opposition No. 91163191 (Co-Counsel)
Successfully opposed application for ZABA’S and design for restaurant services on basis of likelihood of confusion with client’s mark ZABAR’S.
Lightsurf Technologies, Inc. v. Eastern Fine Paper
03/11/2008 Opposition No. 91154946
Succesfully defended opposition to client’s application for E COLOR for paper.
Canandaigua Wine Company Inc. v. Davies & Gamble LLC
09/27/2007 Opposition No. 91162103
Succesfuly opposed application for HERITAGE SITES for wine on basis of likelihood of confusion with client’s mark HERITAGE for wine.
Goya Foods, Inc. v. Holland Coffee, Inc.
09/12/2006 Cancellation No. 92/030908
Successful in obtaining cancellation of registration for the mark GAYO MOUNTAIN COFFEE for coffee beans on the basis of likelihood of confusion.
Goya Foods, Inc. v. Cerveceria Nacional Domincana C. por A.
09/05/2006 Opposition No. 91/158354
Successfully opposed application for MALTA MORENA and design for a malt beverage on the basis of likelihood of confusion with client’s mark MORENA for malt beverages. Overcame defense that applicant disclaimed the entire word mark “Malta Morena” and its claim that “morena” is descriptive.
World Confections, Inc. v. Kencraft, Inc. (Mark: ALPINE CONFECTIONS)
01/25/2006 Opposition No. 91/158237
Opposition granted on summary judgment motion on basis of priority and
likelihood of confusion.
Simi Winery, Inc. v. Mr. Container
09/09/2005 Cancellation No. 92/031424
Successful in obtaining cancellation of registration for mark SIMI in stylized form for a variety of food products on basis of likelihood of confusion with client’s mark SIMI for wine.
Ravenswood Winery Inc. v. DuClaw Brewery LLC
04/29/2005 Opposition No. 91/155312
Successfully opposed application for RAVENWOOD for beer, ale and porter on basis of likelihood of confusion with client’s mark RAVENSWOOD for wines and dilution of client’s famous mark.
Instituto Do Vinho Da Madeira (Official Agency of the Regional Government of Madeira, Portugal) v. Constellation Brands, Inc.
01/25/2005 Opposition No. 91/158791
Successfully defended opposition to client’s application for ARBOR VALLEY AMERICAN MADEIRA for wine against likelihood of confusion claim asserted by owner of certification mark for “MADEIRA” for wine from autonomous region of Madeira, Portugal.
Nautica Apparel, Inc. v. Michael H. Valentine
08/06/2004 Opposition No. 91/159247
Successfully opposed application for NAUTI-CREW in class 25 based upon client’s rights in mark NAUTICA for clothing and retail clothing store services.
Ridge Vineyards, Inc. v. Allied Management, Inc.
04/20/2004 Opposition No. 91/117041
Successfully defended opposition to client’s application for SONOMA RIDGE for wines against likelihood of confusion claim asserted by owner of mark RIDGE for wines, including successful defense of summary judgment motion.
35 Food Corp. v. LFI, Inc.
03/30/2004 Cancellation No. 92/019494
Successful in obtaining cancellation of registration for ANTONIO (food products) on basis of likelihood of confusion with client’s common law rights in mark ANTONIO’S by first obtaining summary judgment on issue of priority and later judgment on basis of likelihood of confusion.
Red Bull GMBH v. Westmoor Manufacturing Corp.
12/18/2003 Opposition No. 91/118892 (Co-Counsel)
Successfully defended opposition to client’s application for BUNCHA BULL for clothing against likelihood of confusion claim asserted by owner of mark RED BULL for various goods and services (including promotional clothing).
Nautica Apparel, Inc. v. Mariner International Travel, Inc.
11/20/2003 Opposition No. 91/125273
Successfully opposed application for mark NAUTIC BLUE in class 25 based upon client’s rights in mark NAUTICA and NAUTICA BLUE.
The Synergy Company of Utah, LLC v. IVC Industries, Inc.
06/27/2002 Cancellation No. 92/026899 (Co-Counsel)
Successfully defended against claim that client’s mark SYNERGY is generic.
Homework Solutions, Inc. v. Tax Centers of America, Inc.
07/13/2000 Opposition No. 91/094448
Successfully defended opposition to client’s application to register NANNYTAX for tax planning, tax preparation, tax advice and accounting services over claims of likelihood of confusion and genericness.
Baron Philippe de Rothschild S.A. v. S. Rothschild & Co. (Co-Counsel)
09/15/1998 and 11/04/1998 Opposition Nos. 91/104755 and 91/079773
Successfully defended opposition to client’s marks S. ROTHSCHILD and ROTHSCHILD for wearing apparel by owner of mark CHATEAU MOUTON ROTHSCHILD for wine.
Raccioppi v. Apogee, Inc.
05/06/1998 Opposition No. 91/96338
47 USPQ2d 1368 (TTAB 1998) (Co-Counsel)
Successfully opposed application for mark APOGEE for mental health counseling services.
Established authentication procedure for Internet documents submitted on summary judgment motion.
Aslanis Seafoods, Inc. v. La Gloria Foods Corp.
06/30/1998 Opposition No. 91/088423
Successfully opposed application for mark LA GLORIA for tortillas and taco shells on basis of likelihood of confusion with client’s mark GLORIA for edible olive oil, obtaining decision stating that goods in issue related.
American Automobile Association, Inc. v. Diamond Tours, Inc.
12/29/1997 Cancellation No. 92/022491
Successfully defended client’s registration of mark DIAMOND TOURS INC for arranging travel tours and providing transportation therefore against likelihood of confusion claim by owner of various DIAMOND combination marks and diamond design marks for hotels, motels, resorts, restaurants, and related rating system.
Goya Foods, Inc. v. Kola Colombiana, Inc.
07/29/1996 Opposition No. 91/086825
Successfully opposed application for mark TROPICAL KOLA ECUATORIANA for soft drinks on basis of likelihood of confusion with client’s mark TROPICOLA for soft drinks.
Goya Foods, Inc. v. Colita Beverage Corp.
08/11/1992 Opposition No. 91/084764
Successfully opposed application for mark PARCHITA for soft drinks on basis that the mark is generic.
American Vitamin Products Inc. v. DowBrands Inc.
07/31/1992 Cancellation No. 92/019036
22 USPQ2d 1316 (TTAB 1992) (Co-Counsel)
On motion to dismiss, established client’s standing as Intent to Use Applicant. Successfully cancelled registrations for mark IPANA for toothpaste, mouth washes and breath fresheners, overcoming defense of residual goodwill.
General Mills, Inc. v. Health Valley Foods
05/01/1992 Opposition No. 91/076303
24 USPQ2d 1270 (TTAB 1992).
Successfully defended opposition to client’s application for FIBER 7 FLAKES for breakfast cereal over Opposer’s mark FIBER ONE for breakfast cereals, based primarily on asserted defense of weakness of term “fiber” and differing commercial impressions of marks.
Baron Phillippe De Rothschild S.A. v. S. Rothschild & Co. Inc.
06/25/1990 Opposition No. 91/079773
16 USPQ2d 1466 (TTAB 1990). (Co-counsel).
Successful in obtaining protective order on discovery. Obtained early ruling on the 75-interrogatory limit established by 37 CFR 2.120(d)(1).
National Aeronautics and Space Administration v. Bully Hill Vineyards Inc.
05/21/1987 Opposition No. 91/69908
3 USPQ2d 1671 (TTAB 1987) (Co-Counsel)
Successfully defended opposition to client’s application for SPACE SHUTTLE for wine. Established that “Space Shuttle" is generic as applied to reusable spacecraft that carries humans and cargo to space and back and that term “Space Shuttle” does not constitute a “national symbol” within the meaning of the Lanham Act.
