Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

Anthony F. Lo Cicero Partner

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The firm’s managing partner and an engineer by training, Tony has represented companies in patent litigation involving product areas as diverse as e-commerce platforms, angular rate sensors, refrigeration chemistry, camcorders and flat panel displays and in trademark matters involving clothing and shoes, candy, baby strollers, jewelry and many more. He conducts due diligence of IP portfolios and provides strategic patent counseling to companies in a wide range of industries from recorded and published music to consumer electronics. He is a Past President of the New York Intellectual Property Law Association and is currently Co-chair of its Legislative Action Committee.
 
Increasingly sophisticated technology competes with style and price as key aspects of the customer experience in the fashion industry. Tony represents some of the most prominent brick-and-mortar and on-line retailers in the country in patent disputes relating to the enterprise’s e-commerce, mobile and point of sale systems. The retail industry regularly confronts patent assertions involving mobile platforms, electronic merchandise presentation, billing, marketing, inventory management and other features of the 21st century marketplace.  He evaluates and responds to these assertions in a practical, business-oriented manner. Tony also evaluates contractual terms with vendors and suppliers to mitigate liability and works with retailers to identify and obtain protection for their own innovations. He has assisted retailers in successfully pursuing indemnification claims ranging to seven-figure settlements.
 
Restaurants, financial institutions, insurance companies, health care institutions, consumer product manufacturers and other businesses likewise rely on technology to bind customers, improve the customer experience, differentiate themselves and stimulate demand. Tony advises clients on freedom to operate issues, prosecutes patents and defends them in litigation.
 
Many of the most prestigious apparel manufacturers and retailers in the world, along with financial services, food products, computer, consumer electronics, home products, and toy companies also turn to Tony for trademark protection. He advances brand development and enforcement strategies ranging from anti-counterfeiting and trademark infringement protection to trade dress and Internet domain matters. For example, he overcame significant legal obstacles to protecting a name and symbol for what is now one of the best-known prestige brands in the country. On many occasions, he has been called upon to enforce trademark rights for entities that that do not have the advantage of a federal trademark registration.

In the public sector, Tony has been active in advocating responsible patent reform and he was actively involved in shaping the Trademark Anti-counterfeiting Act of 1984, and served on the board of the International Anti-counterfeiting Coalition during seminal efforts to strengthen the protection of federal and state laws, including Customs laws, to counteract counterfeiting. He is also effective at marshalling law enforcement agencies in the United States and other countries to disrupt and dismantle counterfeiting operations harming his clients’ rights. For example, counterfeit toner cartridges were adversely impacting the profitability of a major printer manufacturer; he coordinated Customs and law enforcement in the United States and abroad, obtained seizure orders and mitigated the problem. Similarly, he represents companies based in Europe, Asia and Latin America in protecting their trademark rights in the United States.
 
An important element of Tony’s work is transactional and results in monetizing a client’s IP through a sale or license agreement. Knowledgeable of customs and terms in a wide variety of industries, he counsels clients on structuring and pricing transactions when the IP is the key value of an enterprise.
 
Tony is a frequent speaker on issues of patent infringement, trademark dilution, anti-counterfeiting, arbitration, intellectual property damages and recovery, domain name disputes and Internet-related issues. He is regularly named a “Super Lawyer” for Intellectual Property and is included in IP Stars.

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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
Certification/Specialties
  • Registered Patent Agent, United States Patent and Trademark Office, 1977
Education
  • Brooklyn Law School, Brooklyn, NY, J.D., cum laude, 1975
  • Polytechnic University (now New York University), Brooklyn, NY, B.S.E.E., cum laude, 1972
Professional Associations & Memberships
  • New York Intellectual Property Law Association (Current President; Board Member 2007-10; Chairman, Patent Litigation Committee 2010-11, Officer (2011-2014), President (2014-2015)
  • International Anti counterfeiting Coalition (Member, Board of Directors 1993-2005)
  • New York State and American Bar Associations
  • Education Through Music (Member, Board of Directors 2008-2012)
Awards & Honors
  • Intellectual Property, Super Lawyer, 2007-2018
  • IP Stars 
  • Highest AV Preeminent Professional Rating (5 out of 5), Martindale-Hubbell Law Directory
Representative Cases
  • Desly Int'l Corp. v. Otkrytoe Aktsionernoe Obshchestvo, (EDNY 2018)
  • Eliya, Inc. v. Steven Madden, Ltd., United States Court of Appeals for the Second Circuit, 2018)
  • Joules Ltd. v. Macy's Merch. Grp., Inc. (SDNU 2017)
  • Wellnext LLC v. OVM LLC, (S.D. Fla. 2017)
  • Joules Ltd. v. Macy's Merch. Grp. Inc., (SDNY 2016)
  • In re Application of LPKF Laser & Elecs. AG for an Order to Conduct Discovery for Use in a Foreign Legal Proceeding pursuant to 28 U.S.C. §1782, 2015 U.S. Dist. LEXIS 4748 (N.D. Il. 2015)
  • Perfect Pearl v Majestic Pearl Store, Inc., (SDNY 2012)
  • Perfect Pearl Co. v. Majestic Pearl & Stone, Inc., (SDNY 2012)
  • Barnhart v. Federated Department Stores, Inc., 715 U.S.P.Q.2d (BNA) 1184, (SDNY 2005)
  • BEI Techs. v. Matsushita Electric Industrial Co., 268 F.Supp.2d 782, (SDNY 2005)
  • Paco Sport, Ltd. v. Paco Rabanne Perfumes, (2nd Cir. 2000)
  • Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, (5th Cir. 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, (M.D. Fla 1997)
  • United States Polo Assn., Inc. v. Polo Fashions, Inc., 1984 U.S. Dist. LEXIS 21908, (SDNY 1984)
  • Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, United States Court of Appeals for the Second Circuit, 1983

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