Anthony F. Lo Cicero
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Anthony F. Lo Cicero has extensive experience in all aspects of intellectual property law, including patent litigation, due diligence and other transactional work and counseling, trademark and brand protection and enforcement, and providing intellectual property expertise to varied industries.
Mr. Lo Cicero has been lead counsel in defending companies in patent litigation involving product areas as diverse as angular rate sensors, camcorders, cordless telephones, and the operations of websites and has supervised due diligence in the software, entertainment, communications and other industries. He has also provided patent counseling to companies in the semi-conductor manufacturing, retail, apparel, network security and telecommunications fields. Over the past thirty years, Mr. Lo Cicero has represented many of the most prestigious apparel manufacturers and retailers in the United States. He also advanced brand development and enforcement strategies ranging from anti-counterfeiting and trademark infringement protection to trade dress and Internet domain matters. He has also represented clients in toys, plastics, and other fields.
Mr. Lo Cicero is a frequent speaker and has lectured on patent infringement, trademark dilution, anti-counterfeiting, arbitration, intellectual property damages and recovery, domain name disputes, and Internet related issues.
Mr. Lo Cicero was named in Corporate Counsel Edition Super Lawyers for Intellectual Property, June 2009.
Mr. Lo Cicero graduated cum laude from Polytechnic University with a degree in electrical engineering. He received his law degree from Brooklyn Law School where he graduated cum laude and was the Assistant Managing Editor of the Brooklyn Law Review.
Published Works
- Facebook To Offer Personalized URLs, Amster, Rothstein & Ebenstein LLP Trademark Alert, June 12, 2009
- Tiffany (NJ) Inc. v. eBay Inc.: Guidelines for Online Retailers to Police Third Party Sales of Counterfeit Goods, Common Law Journal, July 29, 2008
- HearSay: I Got it on eBay."(Audio interview excerpt), HearSay with Cathy Lewis, July 18, 2008, WHRV
- Tiffany V. EBay: Trademark Owners Beware, IP Law360, July 16, 2008
- Q&A With Amster Rothstein’s Anthony F. Lo Cicero, IP Law360, September 21, 2007
- Reining In U.S. Patent Law For Software, IP Law360, May 7, 2007
- Courts Write History on Permanent Injunctions In Patent Actions, IP Law360, August 22, 2006, Guest Column, 2006
- Acquiring or Selling the Privately Held Company, Intellectual Property Issues, Practising Law Institute, 2003
- Trademark Counterfeiting-Chapter 5, Aspen Publishing, 2002
- Litigating Trademark and Unfair Competition Cases, Practising Law Institute, 1996
Speaking Engagements
- World Research Group The TechNet Patents Forum, New York, NY, November 8-9, 2010
- World Research Group 7th Annual Patents & The Financial Services Industry ,Westin at Times Square, New York, NY, July 27-28, 2010
- World Research Group Second Annual Corporate IP Counsel Summit, The New York Helmsley Hotel, New York, NY, April 27-28, 2010
- Celesq-West IP Master Series: A New Dawn for Patent Damages: Will The Courts Pre-empt Congress?, November 9, 2009
- World Research Group's Patents & the Technology & Internet Industries, November 5-6, 2009
- Patents And Patentability: What You Need To Know To Ask The Right Questions, November 3, 2009
- World Research Group's 6th Annual Patents & The Financial Services Industry, July 28-29, 2009
- Rescuecom v. Google: The Second Circuit Retreats, West/Celesq Webinar, May 28, 2009
- World Research Group's 6th Annual Patents & The Financial Services Industry, New York, NY, July 28-29, 2009
- Corporate IP Counsel Summit, New York, NY, April 29-30,2009
- Fair Use in a You Tube World—Revisited, Celesq®-West IP Master Series, Webinar, November 13, 2008
- World Research Group’s Fifth Annual Patenting Your Business Methods in the Financial Services Industry Conference, July 2008
- LG v. Quanta - The Supreme Court Reestablishes the Exhaustion Doctrine, Celesq-West
- NYIPLA 24th Annual Joint Patent Practice Seminar, April 30, 2008
- World Research Group Conference on Patenting Business Methods for Internet-Based Commerce, February 26-27, 2008
- Qualcomm v. Broadcom - Ethical Considerations for the IP Practitioner and Litigator, Celesq-West
- Appropriate Responses to Demand Letters in the Post-Seagate, Post-MedImmune Era, Celesq®-West IP Master Series, November 2, 2007
- In re Seagate - The End of Willfulness? Celesq®-West IP Master Series, September 17, 2007
- 19th Annual General Counsel Conference, ALM
- Supreme Court IP Roundup: The Court Asserts Itself (KSR, Microsoft, Medimmune), Celesq-West
- Fair Use in a You Tube World - Betamax or Grokster, Celesq-West
- The Internet: Governance and the Law, Celesq-West
- Ethical Considerations for IP Attorneys - 2007, Celesq-West
- Permanent Injunctions Post eBay, Celesq-West
- Defense To A Charge Of Willful Infringement, Celesq-West
- Protection Of Unconventional Trademarks, Celesq-West
- A Perspective On Trademark Dilution, Celesq-West
- Anti-counterfeiting-Introduction And Background, International Anti counterfeiting Coalition
- Judicial And Administrative Determination Of Domain Name Rights, International Anti-counterfeiting Coalition
- Selection Of Arbitrators, Discovery And Motion Practice, American Arbitration Association
- Passing Off; The Challenge From Within The Industry, PIRA
- Securing Effective Monetary Relief, International Anti-counterfeiting Coalition
- Anti-counterfeiting From The Perspective Of Outside Counsel, International Anti counterfeiting Coalition
- Discovery, Interim Measures And Damages In Civil Intellectual Property Cases, International Anti counterfeiting Coalition
- Analyzing The Counterfeiting Hybrid, International Anti-counterfeiting Coalition
- Domain Name Dispute-History, ICANN And
Anti-cybersquatting, International Anti-counterfeiting Coalition - Trademark Issues And The Internet, International Anti-counterfeiting Coalition
Certification/Specialties
- Registered Patent Agent, United States Patent and Trademark Office, 1977
Bar Admissions
- U.S. Supreme Court, 1982
- U.S. Court of Appeals for the Federal Circuit, 1982
- New York, 1976
- U.S. District Court Southern District of New York, 1976
- U.S. District Court Eastern District of New York, 1976
- U.S. Court of Appeals for the Second Circuit, 1979
Education
- Brooklyn Law School, Brooklyn, NY, J.D., cum laude, 1975
- Polytechnic University, Brooklyn, NY, B.S.E.E., cum laude, 1972
Professional Associations & Memberships
- Education Through Music (Member, Board of Directors 2008 -)
- New York Intellectual Property Law Association (Member, Board of Directors 2007 -)
- International Anti counterfeiting Coalition (Member, Board of Directors 1993-2005)
- New York State and American Bar Associations
Professional Experience
- Adjunct Associate Professor, Brooklyn Law School, 1984-1985
- Associate Managing Editor, Brooklyn Law Review, 1974-1975
- Lecturer: American Arbitration Association, Practising Law Institute, New York State Bar Association
Amicus Briefs
- Brief for Amici Curiae Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC in Support of Petitioners, Bernard L. Bilski and Rand A. Warsaw v. John J. Doll, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, Docket No. 08-964, (Sup. Cir. Aug. 6, 2009)
- Brief For Amici Curiae Reserve Management Corporation, PCT Capital LLC, Rearden Capital Corp. and Sales Optimization Group In Support of Maintaining State Street and AT&T in In Re Bernard L. Bilski and Rand A. Warsaw, Appeal No. 2007-1130 (Fed. Cir. Apr. 4, 2008)
Representative Cases
- Barnhart v. Federated Department Stores, Inc., 715 U.S.P.Q.2d (BNA) 1184, United States District Court for the Southern District of New York, 2005
- BEI Techs. v. Matsushita Electric Industrial Co., 268 F.Supp.2d 782, United States District Court for the Eastern District of Michigan, 2003
- Paco Sport, Ltd. v. Paco Rabanne Perfumes, 2000 U.S. App. LEXIS 29570, United States Court of Appeals for the Second Circuit, 2000
- Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, United States Court of Appeals for the Firth Circuit, 2000
- Polo Ralph Lauren, L.P. v. Schuman, 46 U.S.P.Q.2d (BNA) 1046, United States District Court for the Southern District of Texas, Houston Division, 1998
- Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 1998 U.S. Dist. LEXIS 11737, United States District Court for the Southern District of Texas, Houston Division, 1998
- Hoechst Celanese Corp. v. Nylon Eng’g Resins, 1997 U.S. Dist. LEXIS 16339, United States District Court for the Middle District of Florida, Fort Myers Division, 1997
- G.A. Modefine, S.A. v. Burlington Coat Factory Warehouse Corp., 919 F.Supp. 723, United States District Court for the Southern District of New York, 1996
- Coach Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162, United States Court of Appeals for the Second Circuit, 1991
- United States Polo Assn., Inc. v. Polo Fashions, Inc., 1984 U.S. Dist. LEXIS 21908, United States District Court for the Southern District of New York, 1984
- Polo Fashions, Inc. v. BDB, Inc., 1983 U.S. Dist. LEXIS 14420, United States District Court for the District of South Carolina, 1983
- Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, United States Court of Appeals for the Second Circuit, 1983