Steven J. Wadyka Jr.

Steven J. Wadyka Jr.

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Steven J. Wadyka Jr. focuses his practice on the protection, enforcement and defense of intellectual property rights. He has represented both plaintiffs and defendants in trademark infringement, copyright infringement, trade dress infringement, trademark dilution, false advertising, anti-counterfeiting and unfair competition litigation in federal courts throughout the United States. Steve serves as lead counsel in trademark, copyright and trade dress litigation, handling such matters as expedited injunction hearings, depositions and discovery, dispositive motions, jury and non-jury trials, and trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. He also is experienced in obtaining ex parte seizure and asset freeze orders to combat the distribution and sale of counterfeit goods. In addition, Steve has handled numerous cases under the federal Anti-cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Dispute Resolution Procedure (UDRP) to enforce the rights of trademark owners against abusive domain name registrations. His clients include major multinational brand owners from a variety of industries, such as consumer products, financial services, footwear and apparel, furniture, toys and games, food and beverages, information technology, media, telecommunications, energy, sports and entertainment.

Concentrations

  • Intellectual property law
  • Trademarks/trade dress
  • Litigation and anti-counterfeiting enforcement
  • Domain name disputes
  • Intellectual property transactions and licensing
  • Advertising
  • Copyrights
  • Trade secrets
Mehr +

Expertise

Erfahrung

 

  • The Radiance Foundation v. NAACP (E.D. Va.). Served as first-chair trial counsel for nation’s oldest and largest civil rights organization in trademark infringement and dilution action against a pro-life organization arising from use of the name “National Association for the Abortion of Colored People.”  Prevailed on trademark infringement and dilution by tarnishment claims after a 3-day bench trial.
  • UL LLC v. Butson Enterprises (N.D. Tex.). Obtained preliminary injunction on behalf of world’s largest product testing and certification company against seller of labels bearing counterfeits of the “UL-in-a-circle” certification mark.
  • Citadel Investments, LLC v. Citadel Capital Company (D.D.C.). Defeated motion to dismiss for lack of personal jurisdiction filed by Egyptian private equity firm in trademark infringement suit, with court finding sufficient US contacts under FRCP 4(k)(2).
  • TracFone Wireless, Inc. v. American Wireless, LLC (E.D. Va.). Obtained injunctive relief in trademark infringement and dilution action on behalf of the largest provider of pre-paid wireless telephone services in the United States.
  • Citigroup, Inc. v. Malik, et al., (E.D.Va.). Obtained injunctive relief and statutory damages against the defendants as well as transfer of domain names consisting of the client's famous "CITI" mark.
  • Diane Von Furstenberg Studio v. Catherine Snyder, et al, (E.D.Va.). Represented world-renowned fashion designer in anticounterfeiting and trademark infringement suit. Obtained ex parte seizure and asset freeze order. Prevailed on summary judgment as to liability and, at subsequent bench trial, obtained an award of $100,000 in statutory damages.
  • The Tribune Company Holdings, Inc. v. Times Publishing Company (M.D. Fla.). Defended the St. Petersburg Times against trademark infringement suit filed by The Tampa Tribune.
  • U.S. Conference of Catholic Bishops v. Media Research Center (E.D. Va.). Defended trademark infringement litigation against Internet-based news service. Prevailed on summary judgment and obtained an award of costs in favor of client.
  • In re Desa Holdings Corp., et al, No. 02-11672 (PJW) (D. Del.); RA Brands, LLC v. Desa Int'l Inc., Opp. No. 91156414 and Remington Corp., L.L.C. v. Desa Int'l Inc., Opp. No. 91155974. Defended lawn and garden products manufacturer against trademark infringement claims by firearms manufacturer and personal hygiene products company.
  • Betrock Information Services, Inc. v. Plantfind, Inc. (S.D. Fla.). Represented online plant retailer against trademark infringement and cybersquatting claims. Defended the plaintiff's motion for preliminary injunction, which the plaintiff voluntarily withdrew after receiving our opposition papers. The plaintiff subsequently dismissed its claims with prejudice.
  • Alpha Kappa Alpha Sorority, Inc. v. Converse Inc. (5th Cir.). Represented Delta Sigma Theta Sorority as special appellate counsel in appeal from the district court's grant of Converse's motion to dismiss the plaintiffs' claims for trademark and trade dress infringement based on the color combination and founding years of the plaintiff organizations. Client and the other plaintiff organizations prevailed on appeal, resulting in a reversal of the district court's decision and remand to the district court. The case ultimately settled, under which Converse acknowledged client's exclusive rights in its "color combination / founding year" trademarks and trade dress.
  • RE/MAX, Inc. v. Corbin Realty (E.D. Va.). Represented real estate brokerage company in trademark infringement suit against competitor using a design confusingly similar to client's "red, white and blue" tricolor trademark. Case settled with defendant agreeing to a permanent injunction and monetary payment to client.
  • Eastland Food Corp. v. Tang's Family Corp. (TTAB). Represented Asian food products company in trademark opposition case filed by competitor against client's application for trademark consisting of the design of a red elephant for use in connection with rice products.
  • Healthy Hydration, LLC v. Energy Brands Inc. d/b/a Glaceau, (S.D.N.Y.). Defended beverage company in trade dress litigation brought by competitor alleging infringement of "Smartwater" bottle design and label.
  • Brown Jordan International, Inc. v. The Mind's Eye (D. Hawaii). Represented leading furniture manufacturer in trade dress and design patent lawsuit, obtaining permanent injunction against infringer, surrender of infringing furniture for destruction, and payment of client's attorney's fees.

Anerkennung durch den Markt

  • Listed, Managing IP Magazine's World IP Handbook and Survey, "IP Stars," 2017-2018
  • Listed,World Trademark Review, "WTR 1000," 2011-2019
    • Ranked Silver in DC Metro Region, Enforcement and Litigation, 2017-2019
    • Ranked Gold in DC Metro Region, Enforcement and Litigation, 2012-2016
    • Ranked Band 2 in DC, Contentious, 2011
  • Listed, The Legal 500 United States, 2013, 2015-2018
    • Trademarks: Litigation, 2013, 2015-2018
    • Trademarks: Non-Contentious, 2018
  • Chair, Trademark Committee, District of Columbia Bar, Intellectual Property Law Section
  • Member, American Bar Association, Litigation Section
  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Blessed Sacrament Church, Washington, D.C., Capital Campaign Committee
  • Member, Intellectual Property Constituency, ICANN Domain Names Support Organization
  • Member, International Trademark Association
    • Member, Enforcement Committee
    • Member, Famous & Well-Known Marks Committee
    • Member, Nontraditional Marks Committee
    • Member, Projects Editorial Board
    • Member, Trade Dress Committee

Ausbildung

Akademische Ausbildung
  • J.D., Emory University School of Law, 1987
  • B.A., Columbia University, 1983
Zulassung
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Michigan
Sprache