David H. Bernstein chairs Debevoise’s Intellectual Property Litigation Group. He is widely recognized as one of the nation’s leading intellectual property litigators. Mr. Bernstein is acknowledged as an intellectual property “Star” in the IFLR Benchmark Litigation Guide and as an Intellectual Property “Trailblazer” and “Pioneer” by the National Law Journal. He is ranked in the top tier by Chambers Global and Chambers USA, which notes that he is a “rockstar” and “is roundly considered to be one of the finest trademark litigators in the nation.” Mr. Bernstein is highly regarded for his “encyclopedic knowledge of trademark law as well as the understanding of strategy needed to win big cases.”
Clients note he is “an exceptional, dynamic lawyer and a tenacious litigator” who is “just incredible in terms of strategic planning,” and “a great thinker, strategist, business adviser, and, when necessary, the best litigator out there, bar none.” Mr. Bernstein is also recognized by The Legal 500 US, where he is seen as “a brilliant litigator,” and “the dean” of the IP litigation bar.
He is ranked in the top tier in the World Trademark Review 1000, where sources note that he is the “one you turn to when you have a fight you cannot lose” and has “a larger-than-life reputation in this profession and he’s the real deal. He is undoubtedly one of if not the best trademark lawyer in the country.” The praise he receives from his peers is equally emphatic: “Going up against him is quite an eye-opening experience.
He exudes authority and really does live up to his reputation as an all-star litigator.” Managing Intellectual Property magazine has selected Mr. Bernstein as the Outstanding IP Litigator of the Year, The International Trademark Association has awarded Mr. Bernstein the President’s Award, and the International Who’s Who of Trademark Lawyers has selected Mr. Bernstein as one of the top ten trademark lawyers in the world.
Mr. Bernstein is active in alternative dispute resolution. He has served as a neutral in ADR proceedings administered by the London Court of International Arbitration, the World Intellectual Property Organization, the International Institute for Conflict Prevention and Resolution, the International Centre for Dispute Resolution, the Hong Kong International Arbitration Centre, the National Arbitration Forum, and the Czech Arbitration Court.
Mr. Bernstein is an adjunct professor at New York University School of Law and George Washington University Law School, where he teaches Advanced Trademark Law. He has authored or co-authored numerous articles and chapters on intellectual property, as well as the leading treatise on advertising law, The Law of Advertising, Marketing and Promotion.
Mr. Bernstein is Past Counsel to INTA, has served on the Board of Directors, co-chaired the Annual Meeting, and chaired the International Amicus and Emerging Issues Committees.
Mr. Bernstein joined Debevoise in 1990. He received an A.B. magna cum laude from Princeton University’s Woodrow Wilson School of Public and International Affairs in 1985, an M.Sc. from the London School of Economics and Political Science in 1986, and his J.D. from Yale Law School in 1989. Mr. Bernstein served as law clerk to the Hon. Robert E. Keeton, in the United States District Court for the District of Massachusetts, from 1989-1990.
- Trademark and Trade Dress
- Merck KGaA in trademark infringement, false advertising and breach of contract litigation against Merck & Co., Inc.
- Black Diamond Group and Oliver Thomas in winning a complete victory at trial defeating MZ Wallace’s trade dress infringement claim involving a quilted handbag design.
- Yves Saint Laurent in defeating a motion for a preliminary injunction by Christian Louboutin over YSL’s red-soled shoes, and subsequently obtaining dismissal of all claims by the Court of Appeals for the Second Circuit.
- Kate Spade in winning a verdict at trial defeating Saturday Surf’s trademark infringement challenge against the new mark, Kate Spade Saturday.
- Allied Domecq in obtaining dismissal of ownership claims filed by a Russian Federation entity related to the Stolichnaya trademark.
- WeWork, in securing a highly favorable settlement in a multi-jurisdictional trademark dispute with a coworking rival on the eve of a preliminary injunction hearing.
- PayPal in negotiating a favorable, confidential settlement with Pandora in a highly publicized case addressing the protection of mobile app icons.
- Goyard Saint Honore in preventing the sale by a prominent retailer of a woman’s top that counterfeited the registered Goyardine pattern, and obtaining complete disgorgement of all profits.
- Moroccanoil in trademark and trade dress litigation and cancellation proceedings against Avon related to the registrability of its Moroccanoil trademark and Avon’s unauthorized use of the Moroccanoil trade dress and the word “Moroccan” on its competing “Moroccan Argan Oil” products.
- Pernod Ricard in a trade dress litigation against White Rock over its infringement of the white bottle trade dress used for Malibu flavored rums.
- The International Trademark Association in amicus briefs filed in the B&B Hardware, Chewy Vuiton, Charbucks, Herb Reed Enterprises, Levi Strauss v. Abercrombie & Fitch, Betty Boop and Already v. Nike appeals.
- Snyder’s-Lance in cancellation and opposition proceedings in the Trademark Trial and Appeals Board. the Court of Appeals for the Federal Circuit, and the Western District of North Carolina over the “Pretzel Crisps” trademark.
- Industrias AlEn in an ITC investigation and associated litigations over Pinol and Cloralex, which are well-known brands in Mexico, over Clorox’s claims of infringement of its Pine-Sol and Clorox trademarks.
- False Advertising:
- Foundation Medicine in a California false advertising litigation filed by a competitor over methods of validating genomic assays of cancer cells.
- Novartis in obtaining a preliminary injunction against Mylanta NightTime on the ground that the name deceptively implies that the product would prevent heartburn all night long.
- Unilever in false advertising claims against Just Mayo sandwich spread on the ground that the Just Mayo name is false because the product contains no eggs and therefore is not mayonnaise.
- American Express in false advertising challenges against Visa’s television commercials claiming superior card acceptance.
- Nestlé, in back-to-back victories in false advertising disputes against Ross Laboratories over advertising for Ross’s Isomil Advance and Similac EarlyShield baby formulas.
- Alcon in successful challenges in court and before the NAD against Bausch & Lomb advertising that falsely disparaged Alcon’s Opti-Free Express contact lens solution.
- Internet and Domain Names:
- Novartis and Bayer in obtaining preliminary injunctions against the illegal importation of foreign pet medicines into the United States.
- The International Trademark Association in amicus briefs filed in the Chloé v. Queen Bee, Tiffany v. Ebay, and Rosetta Stone v. Google appeals.
- Prada in successfully defending against copyright infringement claims related to its use of a design derived from a vintage Hawaiian shirt pattern and obtaining cancellation of plaintiff’s copyright registration.
- Patents and Trade Secrets:
- Absolut Spirits in obtaining summary judgment dismissing trade secret and idea misappropriation claims relating to its sponsorship of a reality television show.
- Tilia in patent arbitration and ITC proceedings against Applica over its knock-off versions of the FoodSaver machines, sold under the Black & Decker brand.
- Yale Law School, 1989, J.D.
- London School of Economics and Political Science, 1986, M.S.
- Princeton University, 1985, A.B.
- New York
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