David “Light ‘Em Up” Lilenfeld is LITERALLY Fighting for Food

David Lilenfeld will be fighting (literally . . . he’ll be in a boxing match) on May 3 in Downtown Atlanta to raise money for Open Hand Atlanta, which delivers meals and nourishment to Atlanta-area homebound individuals (

He has never boxed before and is 4 weeks into an intense, 10 week fight camp, working hard to win his bout!

To benefit Open Hand Atlanta, tickets may be purchased to sit ringside at Corporate Fight, Night, sponsoring David:  For those unable to join on May 3rd, Money donations are also accepted.

Make sure to check out the event here:

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How to Hire a Trademark or Copyright Lawyer

How to Hire a Trademark or Copyright Lawyer

I constantly see companies being misled into hiring the wrong lawyers for trademark and copyright disputes. Trademark and copyright are highly specialized areas of the law and can easily be mishandled. Unfortunately, many lawyers mislead clients into thinking they have more trademark or copyright dispute experience than they actually have. As of today, I have four different cases in which the opposing parties’ attorneys are mishandling their cases. While this is good for my clients, the opposing parties are unknowingly in jeopardy – not only will they lose their cases but they may end-up being responsible for paying my clients’ attorney fees.

If a lawyer tells you he/she has trademark or copyright litigation experience, you should ask for a list of all trademark or copyright cases they have handled. A lawyer who has been honest with you about his or her experience will not be insulted by this request. You should also use the below steps to verify the lawyer has sufficient experience.

Use PACER for Trademark And Copyright Lawsuits

If you need to hire a trademark or copyright lawyer for a lawsuit (aka a trademark or copyright litigator) you should ask the lawyer for a list of trademark lawsuits he or she has handled.  A lawyer can easily produce a list for you by accessing PACER (the Public Access to Court Electronic Records). If a lawyer will not do this for you, be careful. Non-lawyers can also conduct their own limited searches on PACER.  Note that the federal courts code trademark lawsuits are under the number “840” and copyright lawsuits under “820” – so look for those codes.

If you need help assessing your lawyer’s trademark or copyright experience, feel free to email me:

David M. Lilenfeld

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Lilenfeld PC Client Wins Trademark Infringement Jury Trial

July 25, 2017

On July 18th, 2017, Lilenfeld PC, won a jury trial in a trademark infringement action. The trial was in the United States District Court for the Northern District of Georgia for Fronto King LLC, a marketer of whole tobacco leaves under the brand Fronto King. Fronto King sought an injunction and a monetary award against the Defendants (Five A Trading, Inc. d/b/a A to Z Wholesale and New Generation Imports, LLC), who used a product package design that was similar to the package design Fronto King began using years earlier.

David M. Lilenfeld and Kaitlyn A Haase conducted the two-day federal trial for Fronto King.

Fronto King is the leading brand of high-quality tobacco leaves used to wrap hand-rolled cigars – an increasingly popular hobby in the U.S.Fronto King Art

While the jury deliberated, Lilenfeld and team offered a settlement of $150,000 to the defense, in which no response was received.  Less than 45 minutes later, the jury came back with a verdict.

Having found that there was a likelihood of confusion between Fronto King’s package design and the package design adopted by the Defendants, the jury awarded Fronto King $21,400 in damages plus disgorgement of Five A Trading’s $250,000 in profits.

From Fronto King’s perspective, the most important part of the trial’s outcome is that the Defendants can no longer use their confusingly similar packaging.


66 Fronto King Verdict

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Tackling Tacking in Trademark Law by David Lilenfeld

The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).

When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?

The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.

The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”

David Lilenfeld

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IPR Patent Proceedings May Get a Judicial Makeover

In early January 2016, the Supreme Court of the United States a writ of certiorari in a patent case, titled Cuozzo Speed v. Lee. In Cuozzo, is likely to have a major effect on Patent and Trademark Office’s post-grant patent proceedings. Two questions are presented to the Supreme Court:

No. 1. Does the Board have inviolate, unreviewable authority to initiate an IPR.

No. 2. Whether the Board, during those proceedings, may construe claims in an issued patent according to broadest reasonable interpretation or according to their plain and ordinary meaning.

“This one will be good to watch and can have significant impact on post-grant strategy,” said David Lilenfeld, founder of Atlanta-based Lilenfeld PC.

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Does Copyright Law Let a Monkey Sue Over His Selfie?

Monkey Selfie Blog pic

Naruto, the macaque, is a pioneer to the animal world because he is the first animal to take a selfie. Dating back to 2011, on the Indonesian island of Sulawesi, Naruto snatched photographer’s, David Slater’s, camera and took a selfie. This selfie has stirred widespread debate over who owns the rights to this photograph. People for the Ethical Treatment of Animals (PETA) sued on Naruto’s behalf claiming ownership rights to the selfie. Slater, on the other hand, claimed ownership of the selfie because it was taken with his camera. U.S. District Judge William Orrick III ruled that copyright law does not extend its protection to animals. Nevertheless, this is a landmark case because for the first time in history an animal’s right to sue for property rights, as opposed to being labeled as property, has arisen.

PETA, on behalf of Naruto since monkeys do not have standing to bring a lawsuit let alone the ability to talk, sued Slater. The organization asserted Slater could not hold copyright in the selfie because he was not involved in its creation. PETA sought monetary damages, claiming all money will go to Naruto, and a ban on the sale of the selfie.

Slater alleged he has a copyright interest in the selfie. This nature photographer owned the camera that the monkey grabbed in order to take the selfie. Furthermore, Slater argued the photograph was a result of his artistic creativity as he deliberately left the remote trigger for the camera accessible to Naruto with the hope that the monkey would take a picture.

Copyright laws provide that if there is an author, there is a copyright. This poses a problem for Naruto because works created by a non-human are not subject to copyright. According to Clause 313.2 from the United States Copyright Office, “This office will not register works produced by nature, animals or plants.” This clause specifically lists “a photograph taken by a monkey” as an example of a work that is not registerable because it lacks human authorship. Naruto, being an animal, foreseeably had difficulty acquiring a copyright in his selfie even though he arguably is the author of the work. Despite our sympathy for Naruto, United States copyright laws would need to be revised in order for courts to lawfully rule in favor of Naruto.

David Lilenfeld


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Patent Infringement Panel Discussion in Atlanta

Presumption of Irreparable Harm in Requests for Injunctions After eBay

The Supreme Court, in its 2006 decision in eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), rejected the general rule favoring the granting of permanent injunctions against patent infringement, instead holding that the traditional four-factor analysis for permanent injunctive relief applied in patent infringement cases.

Below you can view a panel discussion examining the after-effects of the eBay decision. It is moderated by patent infringement attorney and Lilenfeld PC founder David M. Lilenfeld. The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.



David M. Lilenfeld

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