Ned W. Branthover

PHONE: 212.885.9376

Ned W. Branthover is an experienced trademark, copyright, and unfair competition attorney specializing in litigation, licensing, and prosecution for over 30 years. He has represented many of the best known corporations in the world including Sony Corporation, Nikon Corporation, the Southern New England Telephone Company, Eli Lilly & Company, Prada, Goodyear Tire, Syngenta, and Raymond Weil.

Representative cases include successfully defending a trademark infringement action by BASF Corporation against Syngenta alleging that HEADLINE for agricultural fungicide infringed HEADWAY for a golf course fungicide (Civ. No. 1:06 CV00229 (MDNC)) in which the district court denied BASF’s motion for preliminary injunction. In addition, Mr. Branthover successfully prosecuted a copyright infringement case involving the Off-Broadway and PBS show Three ‘Mo Tenors, against former cast members who literally “stole the show”. (Marion J. Caffey v. Victor Trent Cook, Rodrick Dixon and Thomas Young, Civ. No.  04 CIV 00313, SDNY)

Mr. Branthover has successfully litigated against many of the top firms in the United States. For example, in Taurus v. Titan Wheel International Inc., 892 F.Supp. 79 (SDNY 1995) in response to Plaintiff’s motion for preliminary injunction the court granted Defendant’s motion to dismiss for lack of jurisdiction.  In Citicorp v. Brooklyn Federal Savings, Opp. 91101395 (TTAB 2003) the TTAB held that Citibank did not have an enforceable trademark.  In Goodyear Tire v. Continental, Opp. No. 91118372 (TTAB 2003 the TTAB held that “Intelligent” for tires was merely descriptive and not registrable.

Mr. Branthover has successfully prosecuted counterfeit actions against hundreds of defendants nationwide on a wide variety of counterfeit products, collecting millions of dollars in damages and seizing millions of dollars in counterfeit goods.  He also assisted in the first Anton Pillar seizure order in Canada and coordinated the global enforcement of police actions in Asia.

Mr. Branthover has been involved in cases concerning product designs. First, involving the enforcement of the appearance of the Rubik’s Cube puzzle.  Other cases including, Maker’s Mark dripping wax seal design and Johnson Control’s OPTIMA Six Pack design for automotive batteries.

Mr. Branthover has successfully represented smaller companies against large corporations. For example, in Prescient Partners, L.P. v. Fieldcrest Cannon, Inc., 1998 U.S. District Lexis 1826 (SDNY 1998) he represented a sole inventor and proprietor and upon taking discovery and filing a motion for summary judgment was able to obtain a multi-million dollar settlement for a breach of contract and patent infringement action.

He successfully defended a summary judgment motion in a declaratory judgment action involving a principal in a closely held corporation for breach of employment contract which resulted in a multi-million dollar settlement and he represented a family-owned battery company in a false advertising action against a multinational corporation resulting in a six-figure settlement.

In another case, he defended a start-up video game manufacturer of the hit Game Genie product against a major toy company for breach of contract which resulted in a successful settlement.

Mr. Branthover has extensive licensing experience involving famous brands and entertainment properties including Sony’s WALKMAN; the AT&T Bell logo; Lilly Pulitzer; Where’s Waldo; Arthur, the children’s aardvark character; Between the Lions, the popular PBS show; Shaq and Dunkman Logo for the NBA star Shaquille O’Neal; STARTER; and MCKIDS, the McDonalds’ clothing line.

Mr. Branthover’s litigation experience is not solely in the IP field having also made law representing pro bono client George Ford to set aside a dismissal by the district court for a statute of limitations issue involving claims brought under the civil rights anti-discrimination laws.

Mr. Branthover has commenced numerous UDRP cases enforcing internet domain name rights for well known global trademarks such as SONY, NIKON and PRADA, amongst others.

Mr. Branthover served on the Board of Director for the INTA and authored and co-authored articles such as “UDRP – A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in ‘Rough Justice’” and “Best Practices for Addressing Online Sales of Counterfeit Goods”.

Bar and Court Admissions

  • New York, 1980
  • United States District Courts for the Southern and Eastern Districts of New York, 1981
  • United States Court of Appeals for the Second Circuit and the Federal Circuit, 1986

Publications

  • UDRP-A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in “Rough Justice”, INTA Internet Committee, May 6, 2002.
  • The Sale of Counterfeits on the Internet: Possible Solutions Through Voluntary Industry Cooperation, INTA Anti-Counterfeiting & Enforcement Committee, March 13, 2008.
  • Best Practices for Addressing Online Sales of Counterfeit Goods, INTA Anti-Counterfeiting & Enforcement Committee, April 2009.

Professional Affiliations

  • International Trademark Association (INTA)(Board of Directors (1999-2001)American Bar Association (ABA) – IP Law Section
  • Committee Chair (1996-1998)
  • Committee Co-Chair (1994-1996)
  • Committee Member (1987-1994)
  • Omicron Delta Kappa

Education

  • University of Maryland, B.A. (with honors), 1976
  • Catholic University School of Law, 1979