Mimi Rupp has experience in a full array of brand management issues from counterfeiting to trademark infringement to domain name disputes, in a variety of industries, including consumer goods, pharmaceutical products, computer hardware and software, telecommunications, and media and entertainment.

She has litigated a wide range of intellectual property matters involving trademark infringement, trademark counterfeiting, trademark dilution, parallel trade, trade secrets, false advertising, trade dress infringement, copyright infringement, and domain name disputes.  Notably, Ms. Rupp has experience in ex parte seizure proceedings, resulting in successful raids yielding counterfeit goods and crucial intelligence from computer forensics.

She has significant experience in:

  • Trademark, counterfeiting, trade dress, copyright, false advertising, parallel trade, domain name, and unfair competition litigation and appellate practice.
  • Trademark clearance, prosecution and opposition and cancellation proceedings in the U.S. and around the world.
  • Negotiating a wide range of licenses and other agreements concerning intellectual property from transfer agreements to joint venture agreements.
  • Conducting intellectual property due diligence in mergers, acquisitions and joint ventures.

Ms. Rupp also received a Certificate of Special Congressional Recognition from Senator Hillary Rodham Clinton in 2004.

Representative Experience

  • Rebranding The Washington Post Company to Graham Holdings Company. Kenyon advised The Washington Post Company, parent company of Kaplan, Inc., in all intellectual property aspects of the $250 million transaction with Nash Holdings to sell its newspaper assets, including its flagship paper, The Washington Post, to Jeffrey P. Bezos. The firm also advised The Washington Post Company in its transition to its new name, Graham Holdings Company, securing all necessary trademark clearances (2013).
  • Counsel to Fortune 500 global educational company in outsourcing a variety of information technology functions, including infrastructure, data center and cloud computing operations, email hosting, web-based collaboration, managed print services and content creation.
  • Successfully obtained a preliminary injunction and ex parte seizure order against a counterfeiting wholesaler, resulting in successful raids yielding counterfeit goods and crucial intelligence from computer forensics.
  • Drafted an amicus brief on behalf of the New York Intellectual Property Law Association in support of John Wiley & Sons in John Wiley & Sons, Inc. v. Kirtsaeng, reported at 93 U.S.P.Q.2d 1432 (S.D.N.Y.2009) (holding defendant’s unauthorized sale of foreign made books in the United States constituted infringement), affirmed at No. 09-4896, 2011 WL 3560003 (2d Cir. Aug. 15, 2011).
  • Osbourne v. Iommi, Case No. 1:09-cv-04947 (S.D.N.Y. 2010) (successfully defending our client Ozzy Osbourne against a motion to dismiss in dispute concerning ownership of the BLACK SABBATH trademark).
  • Jim Beam Brands Co. v. Tequila Cuervo La Rojena S.A. de C.V., Index 600122/08 (App. Div. 1st Dep’t June 23, 2009) (unanimously affirming that Cuervo was subject to jurisdiction in New York).
  • Jim Beam Brands Co. v. Tequila Cuervo La Rojena S.A. de C.V., Index 600122/08 (N.Y. Sup. Ct. August 4, 2008) (successfully defeating Cuervo’s motion to dismiss based on lack of jurisdiction).
  • Laboratoires Thea v. Domain Spa, LLC, UDRP Case No. D2010-1138 (Sept. 21, 2010) (successfully defended Respondent in dispute over thea.com/.net).
  • West Corp. v. Mrs. Jello, LLC, UDRP Case No. 1321540 (June 14, 2010) (successfully defended Respondent in dispute over entrado.com).
  • Teva Pharmaceutical Industries Ltd. v. Dworld, UDRP Case No. D2010-0532 (May 28, 2010) (successfully represented Complainant in compelling transfer of myteva.com).
  • Mirabella Beauty Products, LLC v. Mrs. Jello, LLC, UDRP Case No. D2009-0673 (July 29, 2009) (successfully defended Respondent in dispute over mirabella.com; ruling Complainant was guilty of reverse domain hijacking).

Publications

  • “Hot Licensing Issues in Video Game Industry,” 2010 Licensing Update (Aspen Publishers 2010)
  • “Patriots’ Owner Fumbles Registration of ’19-0 THE PERFECT SEASON’ Mark,” World Trademark Report (May 28, 2009)

  • “The Second Life PTO: Do Real-World Trademark Offices Have Competition?” INTA Bulletin, Vol. 63, No. 2 (Jan. 15, 2008)

Speaking Engagements

  • Top 10 Labor and Employment Law Problems of Corporate Counsel, National CLE Conference, January 2012.
  • Protecting IP in an Open Source Environment, IP Bootcamp Seminar for Technology/Software Executives, May 2009.

  • Trademarks and the Internet: Real vs. Virtual World, The New York Intellectual Property Law Association’s CLE Trademark Program, June 2008.

 

bar and court admissions
  • Ms. Rupp has applied for admission in California.
  • Only admitted in New York, E.D.N.Y., and S.D.N.Y.
professional organizations

Association of the Bar of the City of New York: Committee on Lesbian, Gay, Bisexual and Transgender Rights (2007-2009); New York Intellectual Property Law Association: Co-Chair, Law School Writing Competition (2010 – present); International Trademark Association: Member; New York State Women’s Bar Association: Member