Jonathan Hudis
Partner
Tel (703) 412-7047

Jonathan Hudis

Partner

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.

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.com>. 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). 

Archived Representative Matters

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)