Robert B.G. Horowitz

Partner

New York
T +1.212.589.4240
F +1.212.589.4201

"He is incredibly knowledgeable in his field and he is able to find solutions that succeed."

— Chambers USA 2015

Overview

Red Horowitz, a Chambers-rated lawyer, concentrates his practice on intellectual property law with a focus on trademark counseling, prosecution and litigation, copyright issues, trade secrets and patent infringement matters for hedge funds. With more than three decades of experience, Red fully understands his clients' needs and concerns and delivers quick service to resolve problems and enable clients to quickly make well-informed decisions.

Since 2002, Red has been listed in the Legal Media Group's Guide to the World's Leading Trade Mark Law Practitioners and is named in the 2012 through 2016 editions of World Trademark Review's WTR 1000 The World's Leading Trademark Professionals. He also was listed in Best of the Best USA, 2015 and 2016 editions. Red's proficiency in the area of trademark law has given him the opportunity to lecture at bar associations and foreign intellectual property law associations, as well as present an online CLE course in trademark law. He also has lectured about the Defend Trade Secrets Act, which became law in May 2016.

Select Experience

  • 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." Due to the structuring of the patent ownership, defeated a motion for summary judgment based on first sale abroad by a foreign trademark owner.
  • Heatedly fought on behalf of a U.S. cheese producer against trademark infringement litigation brought by a party funded by the Italian government asserting infringement of the allegedly protectable terms "Parmigiano-Reggiano," "Parmigiano" and "Reggiano." The matter was successfully settled due in great part to weaknesses demonstrated in the plaintiff's case.
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Experience

  • 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." Due to the structuring of the patent ownership, defeated a motion for summary judgment based on first sale abroad by a foreign trademark owner.
  • Heatedly fought on behalf of a U.S. cheese producer against trademark infringement litigation brought by a party funded by the Italian government asserting infringement of the allegedly protectable terms "Parmigiano-Reggiano," "Parmigiano" and "Reggiano." The matter was successfully settled due in great part to weaknesses demonstrated in the plaintiff's case.
  • Monitored patent infringement litigation for a hedge fund client that invested in a high-tech company, providing real-time information to the client about a trial in the Northern District of California. The client received a jury verdict within minutes of it being delivered, which enabled the client to act quickly in foreign markets and maximize investment in a party to the litigation before others could so do.
  • Attended an International Trade Commission trial to keep a hedge fund client as informed as possible throughout the process. On the first day of the trial, a Monday morning, respondents presented a surprise motion to stay the trial based on United States Patent and Trademark Office reexamination decisions given late the previous Friday. Obtained and reviewed hundreds of pages of documents during the one-day adjournment of a hearing on the motion. Advised the client that a stay of trial could well be granted. The judge heard arguments on the motion the next day and granted the stay. Immediately exited the courthouse and advised the client of the result, who was able to immediately capitalize on its holdings in the market.
  • Invoked the Digital Millennium Copyright Act (DMCA) against a Vietnamese concern that had copied the entire online database of a client. The Vietnamese infringer disputed the DMCA claim, which resulted in a copyright infringement lawsuit being commenced despite the client's lack of existing copyright registration. The lawsuit was successful. 
  • Asserted the rights of a major retailing client in New York City in a case alleging infringement of a corporation name used in a domain name. Obtained permanent injunction against the domain name infringer.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property: Trade Mark & Copyright in New York (2015 to 2017)
  • Legal Media Group: Guide to the World's Leading Trade Mark Law Practitioners (2002 to present)
  • WTR 1000 – The World's Leading Trademark Professionals (2012 to 2017)
  • New York Metro "Super Lawyer" (2010, 2012 to 2017)
  • Martindale-Hubbell: AV Preeminent
  • Best of the Best USA (2015, 2016)
  • Japan Institute for Intellectual Property
    • U.S. Law Perspectives for Distinctiveness of Trademarks (2016)
    • U.S. Law Perspectives for Trademark Examination (2010)

Memberships

  • MARQUES (the Association of European Trade Mark Owners) 
    • Famous and Well Known Marks Team (2011 to 2016); Trademark Dilution Issues Presenter
  • International Trademark Association
    • Trademark Reporter Committee: Prior Member
      • 2015 Annual Meeting table topic host regarding trademark dilution issues
  • European Communities Trade Marks Association
    • Law Committee (2016)
  • Federal Bar Council (2015 to 2016)
    • Intellectual Property Law Committee
      • Author of an article about the Defend Trade Secrets Act published in the June/July/August 2016 issue of Federal Bar Council Quarterly
  • Association Internationale pour la Protection de la Propriété Intellectuelle: Working Questions (2009 to 2011)

Community

  • American Australian Association: Business Council Member

Admissions

  • U.S. Court of Appeals, Second Circuit, 1982
  • U.S. Court of Appeals, Ninth Circuit, 1982
  • U.S. District Court, Northern District of New York, 2002
  • U.S. District Court, Eastern District of New York, 1979
  • U.S. District Court, Southern District of New York, 1978
  • New York, 1978

Education

  • J.D., University of Miami School of Law, 1977
  • B.A., Ohio Wesleyan University, 1974