Mary Mazzello

Trademark Litigation

• Represented fashion brand Lucky Brand Dungarees in 9-0 victory before the United States Supreme Court in trademark litigation concerning the novel “defense preclusion” doctrine.
• Won summary judgment and Ninth Circuit appeal for a prominent technology company in trademark litigation concerning the “bona fide” use doctrine.
• Won summary judgment and Second Circuit appeal for a prominent technology company in a trademark lawsuit concerning an e-reading app.
• Represented prominent technology company in appeal from a TTAB opposition proceeding refusing to register the company’s mark as generic. Won reversal of the TTAB decision.
• Defeated preliminary injunction motion in trademark litigation concerning the OCULUS mark filed against Oculus VR shortly after it was acquired by Facebook.
• Defeated preliminary injunction motion and won summary judgment for consumer electronics accessory company Treefrog Developments, Inc. d/b/a/ Lifeproof in trademark infringement case concerning the LIFEPROOF trademark.
• Represented leading technology company in appeal concerning the TTAB’s ex parte refusal to register a trademark on the basis of genericness. Case settled and mark registered.
• Defended Delta Air Lines in trademark case brought by competitor American Airlines related to Delta’s use of the word “flagship.” Case settled favorably on the eve of trial.
• Defended Guardians baseball team against trademark infringement allegations related to the Guardians name. Case settled amicably.
• Represented Bath & Body Works in a declaratory judgment action in which the producer of the Twilight Saga film series claimed that BBW’s “Twilight Woods” products infringed their trademark rights. Defeated motion for summary adjudication.
• Represented Travelers Indemnity Company in trademark infringement and dilution lawsuit against Legal & General Group related to Travelers’ famous red umbrella trademarks.
• Represented private equity group in successful Uniform Domain-Name Dispute-Resolution Policy proceeding to shut down fraudulent website using private equity firm’s trademark.

Copyright Litigation

• Representing prominent social media company in copyright and trade secret litigation concerning use of datasets in AI research.
• Trial counsel for a leading music streaming service in Phonorecords III and Phonorecords IV music copyright royalties proceedings before the United States Copyright Royalty Board. Cross-examined multiple expert witnesses and successfully argued evidentiary motions.
• Defended leading music streaming service in putative class action lawsuit related to alleged copyright infringement and royalty payments. Plaintiff dropped all claims.
• Defended leading music streaming service in multiple copyright infringement lawsuits alleging music available on the service copied plaintiff’s copyrighted works without permission.
• Advised film streaming and distribution service in multiple copyright litigations alleging that films distributed through its service infringed plaintiffs’ copyright right and rights of publicity.

Trade Secret, False Advertising, Unfair Competition, and Contract Disputes

• Represented Dollar Shave Club and its employee in parallel lawsuits in Connecticut and California alleging trade secret misappropriation, unfair competition, and breach of a non-compete. Defeated temporary injunction motion following a full-day evidentiary hearing and cross-examined plaintiff’s key forensics expert. Won motion invalidating plaintiff’s non-compete.
• Represented prominent children’s brand in arbitration concerning defendant’s underpayment of licensing royalties. Cross-examined licensing expert and fact witness. Won full royalties plus interest.
• Defeated preliminary injunction motion in trademark and false advertising litigation filed by Equinox Hotel Management against Equinox Holdings concerning Equinox Holdings’ new hotel brand, “Equinox.” Won motion to dismiss false advertising claim under California unfair competition law.
• Represented software company in putative class action lawsuit alleging violation of the Computer Fraud and Abuse Act, Unfair Competition, and False Advertising related to anti-piracy software. Plaintiff dismissed all claims.
• Successfully resolved contract dispute and threatened litigation related to music royalty agreement.

Counseling and Negotiation

• Advising clients in various industries on trademark prosecution, trademark clearance, and trademark enforcement matters and managing U.S. and international trademark portfolios.
• Advising private equity firm on fair use and AI questions related to potential investment.
• Advised major sport team on a significant trademark rebranding and developed strategy for securing trademark rights prior to announcement.
• Advised Fortune 500 technology company on copyright issues related to the launch of health and sports apps.
• Advised leadings sports gambling and fantasy sports company on multiple trademark matters related to genericness and infringement.
• Advised Fortune 500 sports apparel brand on international copyright issues related to the Berne Convention.
• Advised prominent health marketing firm on cease and desist letter response related to alleged data scraping and Computer Fraud and Abuse Act.
• Advised significant pharmaceutical company on trade secret and confidentiality issues related to onboarding a new employee.
• Advised real estate start-up on branding, trademark acquisition, and IP assignment issues related to company launch.
• Negotiated worldwide trademark coexistence agreement for prominent luxury hotel brand.
• Drafted and negotiated transfer of trademark rights in spinout and launch of $500 million venture capital firm.

Kirkland & Ellis, Summer Associate, 2010

Home Box Office, Legal Intern, 2009