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Haynes and Boone

Joseph Lawlor

Joseph Lawlor

Counsel

Expertise

  • Advertising, Marketing, and Promotional Law
  • Copyright
  • Employment Litigation
  • Intellectual Property

WSG Practice Industries

Activity

Haynes and Boone
New York, U.S.A.

Profile
Joseph Lawlor litigates high-stakes intellectual property, advertising, branding, media, First Amendment, and commercial disputes on behalf of a diverse clientele in federal courts, the Trademark Trial and Appeal Board (TTAB), and the National Advertising Division (NAD).

Joe relies on sound judgment and an analytical business-focused approach as he represents clients through all phases of litigation as well as pre-litigation enforcement and counseling, with a focus on trademark and advertising matters. Joe’s clientele includes nationally-recognized colleges, media firms, leading retailers, pharmaceutical companies, commercial property owners and investors, healthcare providers, professional sports leagues, cryptocurrency firms, and tech start-ups.

Joe brings an aggressive and thoughtful approach to federal court litigation. Joe has tried and won trials in both federal and NY state court. Joe has also tried appeals to the Second and Third Circuit Courts of Appeal. Joe’s recent experience includes the successful representation of a global skin care brand in a federal jury trial and complete victory before the Third Circuit Court of Appeals in a trademark dispute relating to one of its most well-known brands.

Outside of his active federal court practice, Joe also frequently appears before the TTAB and the NAD. Joe is an experienced practitioner before the NAD representing both advertisers and challengers. Joe’s NAD experience includes the representation of a national grocery chain against the leading international wholesale club and the representation of a publicly-traded global medical company specializing in eye care against one of its primary competitors. In the TTAB, Joe’s range of experience includes representing one of the largest wireless telecom companies in a dispute relating to a mark for one of its core cellular business lines.

Joe’s practice often touches on the intersection of Constitutional and criminal law. Joe represented a journalist wrongfully detained by the U.S. Government after exercising his First Amendment rights to provide an interview to PBS. In a widely-publicized matter, Joe successfully secured complete dismissal of charges against a financier indicted on multiple counts of securities fraud in the Southern District of New York after a ruling that his client’s Fourth Amendment rights were violated by the FBI and U.S. Attorney’s Office. Joe has written for the Bloomberg BNA Criminal Law Reporter on Fifth Amendment issues.

Joe’s value to clients also lies in the depth of his experience. For example, Joe has successfully represented the National Football League in several federal lawsuits alleging violations of consumer protection laws in connection with the sale of playoff tickets. Joe has also counseled lenders and equity holders in complex real estate finance disputes. As employer’s counsel, Joe has helped to defend against discrimination, retaliation, and wage and hour suits.

Joe is an active member of the Association of National Advertisers (ANA) and International Trademark Association (INTA), for which he co-hosted a roundtable for emerging trademark issues in the expanding digital marketplace. When not practicing law, Joe can likely be found hiking or fishing in the Catskills with his family and Westie or fervently following college basketball.

Bar Admissions

New York, 2012

Education

J.D., Fordham University School of Law, 2012, Fordham Journal of Corporate & Financial Law
B.S., Legal Studies, St. John's University, 2009
Areas of Practice

Advertising, Marketing, and Promotional Law | Copyright | Employment Litigation | Intellectual Property | Intellectual Property Litigation | Labor and Employment | Litigation | Trademark Litigation | Trademarks

Professional Career

Significant Accomplishments

• Represented Rev.com in a California federal court trademark infringement and unfair competition matter relating to real-time transcription technology.
• Served as lead counsel for Galderma and Nestle Skin Health in this ANDA patent infringement action. (D. Del.). The case involved Galderma’s branded Oracea Product, a treatment for rosacea, and a proposed generic product called Zenavod, and involved novel issues relating to the purchase of the generic product by the branded company and various alleged license obligations, in addition to typical patent infringement issues. The case has been resolved on terms highly favorable to our client.
• Representing a telecommunications company in advertising disputes before the National Advertising Division (NAD).
• Represented Revolution Resource Recovery Inc. in a trademark cancellation dispute over the brand name for its bottled water product.
• Represented the Hechinger Institute on Education and the Media, Teachers College, Columbia University, against Plaintiff’s claims of defamation. The claims arose from an article in the Hechinger Report concerning published allegations that Plaintiff forced black students in her middle school class to lie on the floor and engage in other demeaning activities during a lesson on slavery. We successfully argued that the article is protected opinion under the First Amendment, leading to dismissal of the claims. Plaintiff filed an Amended Complaint and dismissal was again confirmed.
• Represented an international private label apparel manufacturer in a contract dispute with a U.S.-based distributer.
• Brought claims in California federal court against competitors for allegedly knocking off the product design and branding of client Benebone, a leading dog chew toy brand. The claims at issue included trade dress infringement, design patent infringement, and violations of California state unfair competition laws.
• Represented Table De France in a multi-district trade dress infringement dispute relating to the swirl design on rolled wafer cookies.
• Represented a telecommunications company in a Trademark Trial and Appeal Board (TTAB) opposition proceeding against a competitor.
• Represented Pacific Northwest College of Art against claims of copyright infringement arising from the use of music on a number of YouTube videos.
• Represented a medical company specializing in eye care products in an advertising dispute at the National Advertising Division (NAD). The parties involved are major market players with customer loyalty and trust at stake in a multibillion dollar industry that seeks to improve lives by bettering vision.
• Represented One Jeanswear Group in a trademark infringement dispute relating to its well-known Gloria Vanderbilt Amanda Jeans brand.
• Represented a Japanese consumer electronics and video game company in a copyright and trademark infringement dispute in the Central District of California.
• Represented the pharmaceutical company Galderma Laboratories, in a trademark dispute relating to its Cetaphil Restoraderm brand against an inventor who alleged ownership over the Restoraderm trademark. Plaintiff sought $68 million in damages and a permanent injunction barring Galderma from selling Cetaphil Restoraderm. After a ten-day jury trial, secured dismissal of claims that Galderma infringed any trademark and contract rights. After appeal by the plaintiff, secured a complete victory before the Third Circuit Court of Appeals dismissing all claims against our client, Galderma.
• Represented Galderma Laboratories in a patent license agreement dispute relating to its Oracea treatment for rosacea.
• Served as lead counsel for defendant, an award winning supermarket chain, in a series of false advertising claims asserted by a competing club store before the National Advertising Division (NAD).

Articles

Three Takeaways from Supreme Court Ruling that Trademark Infringer’s Profits May Be Awarded Without a Showing of ‘Willful’ Infringement
Haynes and Boone, April 2020

Yesterday, in Romag Fasteners, Inc. v. Fossil, Inc., the U.S. Supreme Court unanimously held that a plaintiff in a trademark infringement suit is not required to show that the infringing defendant acted “willfully” to avail itself of the Lanham Act’s disgorgement remedy...

FTC Is Scrutinizing COVID-19 Advertising As Consumer Complaints Soar
Haynes and Boone, April 2020

The Federal Trade Commission (FTC) is devoting significant resources to combat deceptive COVID-19 advertising in a range of industries as consumer complaints to the FTC pick up steam. Companies are shifting marketing spend to cover COVID-19 messaging and should be mindful of the FTC’s increased scrutiny. Through April 9, 2020, the FTC has received 15,006 consumer complaints relating to COVID-19 advertising and business activities...

WSG's members are independent firms and are not affiliated in the joint practice of professional services. Each member exercises its own individual judgments on all client matters.

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