| Education | J.D., Pace University School of Law, 1986 | B.F.A., Drake University, 1981 |
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| Admitted to Practice | - Supreme Court of the United States
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| Roxanne Elings has experience in a full array of brand management issues, from counterfeiting to trademark infringement to copyright, in a variety of commercial and technological fields. Specifically, Roxanne works with clients to secure, protect, and enforce the client's intellectual property rights, including counseling clients in areas of brand management, brand enforcement, copyrights, and domain name issues.
Roxanne assists clients in setting up internal policing and enforcement policies. She also has conducted jury and non-jury trials and appeals involving trademark infringement, trademark counterfeiting, trademark dilution, parallel trade, trade secrets, false advertising, trade dress infringement, copyright infringement, and domain name disputes and is a frequent speaker at major industry conferences and events. Roxanne brings a practical, business-oriented approach to advising companies on issues of brand management and enforcement. |
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| Areas of Concentration | - Brand protection counseling, trademark clearance and prosecution and protection strategy
- Trademark infringement, trademark counterfeiting, trademark dilution, parallel trade, trade secrets, false advertising, trade dress infringement, copyright infringement, and domain name disputes
- Opposition and cancellation proceedings before the United States Trademark Office and around the world
- Worldwide intellectual property protection programs
- Domain name acquisition, protection and disputes
- Intellectual property due diligence in mergers, acquisitions, refinancing and joint ventures
- Copyright counseling, prosecution and protection strategy
- Non-disclosure and secrecy agreements
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| Significant Representations | - Represent apparel, footwear and sporting goods companies in worldwide brand protection programs, including trademark counseling and prosecution, creating, reviewing and negotiating manufacturer agreements, distributor agreements, terms for purchase orders.
- Represent multimedia entertainment company in brand protection program, including trademark counseling and prosecution, copyright counseling, establishing and protecting merchandising rights in movies and negotiating web site agreements.
- Represent computer and home entertainment manufacturers in worldwide brand protection programs, including trademark counseling and prosecution, creating, reviewing and negotiating manufacturer agreements, distributor agreements.
- Represent wineries and wine distributors in brand protection programs, including trademark counseling and prosecution.
- Design and implement licensing schemes relating to most types of intellectual property assets.
- Successfully represented multiple U.S. footwear companies in connection with an investigation and criminal and civil proceedings regarding illegal importation and seizure of over $2.5 million in counterfeit merchandise.
- Successfully closed down major counterfeiting wholesalers by applying little-known NYC law affecting landlords.
- Obtained Order allowing seizure of computers involved in a Denial of Service Attack on an a prominent e-commerce company.
- Conducted jury and non-jury trials for trademark infringement and won two year fight against factory shipping product made during time of authority but shipped without authority.
- Multi-District Litigation for multiple Watch Brands; seizing over 1,000,000 watches and over $1,000,000 in cash; breaking four global organizations; $4.5 million contempt judgment and additional judgment of $594 Million against a ring of New York Chinatown counterfeiters and money launderers. This is the highest U.S. judgment in history for this kind of matter.
- Obtained a $2 million settlement for Major US Company against a ring of wholesalers of counterfeit goods. Obtained an additional approximate $200,000 in settlement monies because of the use of ex parte restraint of assets.
- Seized over 7,000 counterfeit goods from a US warehouse on behalf of US Company; obtained approximately $500,000 in settlement monies and identified ultimate source of counterfeit goods.
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| Professional & Community Involvement | - Member, International Anti-Counterfeiting Coalition
- Member, International Trademark Association
- Member, Brand Names Education Foundation Committee
- Member, New York State Women’s Bar Association
- Member, Association of the Bar of the City of New York
- Author of numerous articles
- Regular speaker to industry and bar association groups worldwide
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| Awards & Recognition |
- Listed, Marquis Who's Who in America
- Listed, Legal 500 US, 2008 edition
- Listed, Legal 500 US, an internationally recognized client referral guide providing in-depth editorial and recommendations of law firms and lawyers, Recommended for Intellectual Property Litigation - Trademarks: Litigation and Dispute Resolution, 2007
- Listed, Legal 500 US, an internationally recognized client referral guide providing in-depth editorial and recommendations of law firms and lawyers, Recommended for IP Contentious - Trademarks: Litigation and Dispute Resolution, 2007
- Selected by Super Lawyers magazine, 2006-2008
- Named one of the "Top 50 Trademark Attorneys" in the United States by CSC Trademark Insider, Annual Reports, 2005 and 2006
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| Articles, Publications, & Lectures | Articles
- Quoted, "Trademark Wars: Court's Failure to Uphold Famous Marks Doctrine Jeopardizes U.S. Interests Overseas," InsideCounsel, July 2007
- Quoted, "Knocking Out Knockoffs," Corporate Counsel, July 11, 2006
- Author, "Landlord Liability and the City," World Trademark Review, May/June 2008
- Author, "Anti-Counterfeiting 2008: United States," World Trademark Review, August 2008; this article first appeared in World Trademark Review's Anti-Counterfeiting Guide 2008
- Quoted, "Mixed welcome for the new PRO-IP Act," World Trademark Report, October 22, 2008
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