Robert B.G. (Red) Horowitz concentrates his practice on intellectual property law matters, having practiced intellectual property law for over 32 years. In the sphere of trademarks and trade dress, Mr. Horowitz has handled the entire range of matters, including brand strategizing with clients, trademark searching and clearance, prosecution of trademark applications, contested proceedings in the courts and the U.S. Patent and Trademark Office, licensing and assignments, anticounterfeiting efforts (private and government), trademark valuations, due diligence in trademark acquisitions, foreign trademark registration programs, domain name disputes and the negotiation for and acquisition of domain names for clients. Additionally, Mr. Horowitz works on an ongoing basis with hedge funds analyzing patent infringement litigations for companies in which they have invested and providing prompt information which permits them to rapidly adjust their investments. He also handles matters involving advertising issues, copyrights (prosecution and litigation), trade secrets (establishing client protection procedures and litigations), technology acquisition and licensing and patents (general counseling and design patent litigations).
Mr. Horowitz represents a broad client base, including a multinational Japanese consumer electronics company and its U.S. subsidiary and companies in the pharmaceutical, perfume, cosmetics, food, apparel, entertainment, real estate, retailing, entertainment and financial services industries, among others.
He has been listed in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners since 2002, a bi-annual publication whose attorneys are selected based upon peer nominations, and is named in the 2012 edition of World Trademark Review’s WTR 1000—The Definitive Guide to Trademark Legal Services.
Mr. Horowitz brought the first case in the United States where a patent owner of perfume bottle designs asserted its design patents to stop the importation of “grey goods” and, due to his structuring of the patent ownership, defeated a motion for summary judgment based upon the first sale abroad by the foreign trademark owner. He successfully defended against a genericness attack in a domain name dispute involving jumbotron.com. Mr. Horowitz heatedly fought, on behalf of a U.S. cheese producer, a trademark infringement litigation alleging infringement of the allegedly protectable terms “parmigiano-reggiano”, “parmigiano” and “reggiano” brought by a party funded by the Italian government, which resulted in a favorable settlement for his client. In addition, he successfully asserted rights in the Century 21 mark against the use of Century21Electronics.com, which resulted in a permanent injunction against the infringer.
Mr. Horowitz has lectured about trademark law at the American Bar Association, National Institute and the International Trademark Association (where, in December 2011 and at the association’s request, he lectured six officials from China’s State Administration of Industry and Commerce—including Vice Minister Fu Shuangjian who oversees the China Trademark Office and Trademark Review and Adjudication Board—about monetary recovery in trademark infringement cases). In 2010, he lectured before the Korean Patent Attorney’s Association about current topics for Korean IP owners to consider if contemplating a Section 337 proceeding before the International Trade Commission. He has taught a continuing legal education course about trademark law for LawLine®, was a moderator at the Center for International Legal Studies Conference on Trademark Law, 2003, and has lectured about trade secrets law and computer law.
Mr. Horowitz’s publications include:
Mr. Horowitz is active in MARQUES, the European Trademark owners association and is a member of the Famous and Well-Known Brands Team, a subteam of MARQUES Brands and Marketing Team (2011 to present). He also participates in AIPPI responding to issue questionnaires given by that organization to provide a U.S. legal perspective (2009 to present).
3/21/2012 - Horowitz and McDonald Named to World Trademark Review’s WTR 1000
1/13/2012 - Horowitz Featured in The Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners
3/9/2011 - World Trademark Review: “Under the Hammer: Are Trademark Auctions Bane or Boon?”