Jason Nardiello is an unfair competition attorney who solves clients’ legal problems in the trademark, copyright, trade secret and false advertising disciplines. He is a member of the firm’s Intellectual Property and Trademark, Copyright & Advertising Law practice groups.
Through his experience acquired as an intellectual property litigator and handling litigation-centered IP transactions, Mr. Nardiello helps clients compete in the marketplace by designing policies to keep his clients out of litigation when possible but vigorously defending their interests if a matter proceeds to court.
Mr. Nardiello works with clients in many industries where he concentrates on defending them against anti-competitive tactics and helping them assert claims for unfair competition, and trademark and copyright infringement. He also advances their interests through comprehensive intellectual property strategies which include the design and maintenance of U.S. and international intellectual property portfolios (trademark, copyright, and patent) and licensing arrangements in order to build, protect, and extend clients’ competitive advantages.
Some of the industries where he has served clients include luxury consumer goods, apparel and fashion, music and film, software, consumer electronics, food and agriculture, tobacco, biotech, aerospace and automotive industries.
Mr. Nardiello has substantial experience and success in litigation. He has first-chaired trials and conducted dozens of depositions over his career in several areas of law ranging from intellectual property to commercial law to white collar criminal law. He regularly appears in Federal Court on intellectual property matters.
Mr. Nardiello has significant experience representing clients in complex Trademark Trial and Appeal Board (TTAB) opposition proceedings, as well as the prosecution of trademark applications before the United States Patent and Trademark Office.
In all of these capacities, he has helped clients assess the risks and benefits of an approach to meet their unique needs and consistently provides creative, well-reasoned counsel.
Mr. Nardiello previously formed an independent law practice, where he counseled clients in a broad spectrum of industries, including those in the entertainment industry, involving trademark, copyright, and contractual concerns.
He is also frequently invited to speak at prominent events concerning brand protection, trademarks, advertising, and copyright law.
Education
- J.D., New York Law School, 2001
Professor V. Lorlordo Award for Excellence in Criminal Justice Administration - B.S., College of New Jersey, 1997
R.O.T.C. Founders of America Award for Leadership and Excellence in Military Studies
Bar Admissions
Admitted To Practice
- U.S. Supreme Court
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
Representative Experience
- Fifty Six Hope Road Music, Ltd. v. AVELA, Inc., et al (District of Nevada): Defeated motion for contempt for failure to comply with permanent injunction brought by Estate of Bob Marley against client consumer electronics company in action concerning copyright infringement and unfair competition related to use of image of famous musician on product packaging; Court invited client electronics company to file motion for attorneys fees against Estate of Bob Marley.
- Vet-Stem Inc. v. Medivet America, Inc. (Northern District of California): Defended market entrant of manufacturer and seller of adipose-derived stem-cell related goods in dispute concerning unfair competition, trademark infringement, as well as incipient patent infringement and related antitrust issues; case litigated and settled and client permitted to operate and sell in the U.S. without threat of suit.
- Assisted Fortune 500 company design trademark portfolio to protect acquired goodwill in industry that resulted in company successfully excluding competitors from using certain key words in connection with the advertising and marketing of clients consumer goods.
- The Gap, Inc. v. G.A.P. Adventures (S.D.N.Y.): Defended client adventure travel company against trademark infringement and trademark dilution claims.
- R.J. Reynolds Co. v. Lorillard Licensing Co. (USPTO, Trademark Trial and Appeal Board); Defended client in complex TTAB opposition proceeding concerning the client’s application for the term “pleasure” in connection with tobacco products; Case settled and client’s trademark application for “pleasure” alone permitted to register.
- Represented writer and actor of the film, The Perfect Age of Rock & Roll, starring Peter Fonda, Taryn Manning and others in dispute with production company concerning joint authorship rights in screenplay. Client received full joint screenplay attribution.
- Represented a U.S. cosmetics company manufacturer in federal action brought by author of book for trademark infringement where author alleged client’s name of nail polish color infringed author’s registered trademark.
- Represented national agri-business involved in production of meat and poultry goods in numerous matters involving infringement of its trademark portfolio in the U.S. and South America.
- Represented famous, long-established national steakhouse brand in enforcing rights in client’s protected trade dress in overall look of restaurant, manner of service and food preparation, as well as infringement of its copyright in its menu and website against former employee of client restaurant.
- Counseled national agri-business in licensing and partnership agreements with nationally-recognized author of series of cookbooks.
- Represented numerous up-market boutique apparel and lifestyle accessories brands in designing comprehensive trademark portfolios and in crafting pre-litigation strategies.
Publications & Presentations
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Co-Author,
"
Locke Lord QuickStudy: Brand Owners Can Protect Trademarks in Trademark Clearinghouse for New gTLD Domain Names
,"
Locke Lord
(April 24, 2013)
-
Author,
"
Locke Lord QuickStudy: Apple, Inc. Lost iPhone Trademark in Brazil
,"
Locke Lord
(February 14, 2013)
-
Co-Author,
"
Locke Lord QuickStudy: Trademark Protection of Apparel at the Fringe
,"
Locke Lord
(September 6, 2012)
-
Co-Author,
"The Access to Repair Parts Act,"
Patent Strategy & Management, Law Journal Newsletters
(October 2009)
-
Co-Author,
"Client Alert: Bills to Amend U.S. Patent Act Could Threaten Manufacturers,"
Locke Lord
(August 4, 2009)
-
Speaker,
"Trademarks and Counterfeiting: Enforcement and Available Remedies in the United States,"
Soviet Union Government Delegates in Connection with the U.S. Department of Commerce Special American Internship Training (SABIT) Program
(October 2008)
Professional History
- Associate, Locke Lord LLP
- Associate, Morgan & Finnegan, LLP
Professional Affiliations & Achievements
- Selected, Super Lawyers–Rising Stars Edition for Intellectual Property Litigation (2012)
- Chair, Trademark Committee, Intellectual Property Section, Federal Bar Association (National)
- Chair, Intellectual Property Committee, Federal Bar Association, Southern District of New York Chapter
- Treasurer, Federal Bar Association, Southern District of New York Chapter
- Committee Appointee, Free Trade Subcommittee, International Trademark Association
- Member, International Trademark Association
- Member, Federal Bar Association
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