Dan Rosales is a senior associate in the Intellectual Property group of Mayer Brown’s New York office. His practice focuses on litigating copyright, trademark, and trade dress disputes in courts and arbitration tribunals across the country, as well as before the United States Patent and Trademark Office (USPTO), Trademark Trial and Appeal Board (TTAB) and the WIPO Arbitration and Mediation Center. Dan is a trial lawyer who has built a dynamic intellectual property practice following his first successful single-chair trial, which he secured early in his legal career. Dan has since continued to build a national practice and assisted trial teams in numerous complex intellectual property cases which have resulted in successful bench and jury verdicts.
Litigation and Dispute Resolution
Dan represents global food and beverage companies, branded, and luxury consumer goods companies in connection with trademark, trade dress, and related Lanham Act disputes in federal courts throughout the U.S. Dan has also represented directors, new media companies, mini-major and major film studios, leading textbook publishers, media and technology companies in connection with copyright and related matters.
Prosecution, Strategy, and Counseling
Dan assists in the management of the trademark portfolios of numerous clients and advises clients regarding clearance, preparation, prosecution and maintenance of domestic trademarks. His experience includes preparing, filing and prosecuting trademark applications as well as counseling clients on trademark availability, procurement and protection, developing trademark use manuals and advising on trademark watch services and strategies.
Prior to joining Mayer Brown, Dan served as a law clerk to the Honorable Edward L. Chavez.
- Represented YouTube and its CEO, Susan Wojcicki in a rare dismissal of trademark infringement and false-advertising claims with prejudice at the pleading stage. The court agreed that user-generated content posted on YouTube does not constitute “use in commerce” for purposes of trademark law or “commercial speech” for purposes of false advertising. The court also agreed that, in light of Tiffany v. eBay, YouTube cannot be held liable for indirect trademark infringement based on user-generated content (Lops v. YouTube et al., (USDC D Conn 2022)).
- Represented Nespresso USA in a trademark and trade dress infringement action under the Lanham Act against Peet’s Coffee, Inc., which offered "Nespresso Compatible" capsules for use with Nespresso's machines. The case resulted in a favorable settlement after the Hon. Colleen McMahon complimented Nespresso’s Complaint by noting “the court (which has seen quite a few trade dress cases) has seldom seen a better crafted pleading.” (Nespresso USA, Inc. v. Peet’s Coffee, Inc., (USDC SDNY 2021)).
- Represents Blue Bottle Coffee, LLC in a trademark and trade dress infringement action (Blue Bottle Coffee, LLC v. Southern Technologies, LLC, (USDC ND Cal 2021)).
- Represented Nestlé in trademark actions concerning PERSONA NUTRITION-branded vitamins and supplements. (Persona Cosmetics, Inc v. Société des Produits Nestlé S.A., (USDC CD Cal 2021); R80 LLC v. Société des Produits Nestlé S.A., (USDC D Md 2021)).
- Represented a premiere French interior and furniture design studio in a dispute involving copyright and trade dress infringement in Central District of California (Liaigre, Inc. v. California Furniture Company, (USDC CD Cal 2021)).*
- Defended a documentary director against claims of trademark and copyright infringement pertaining to documentary film. Case resulted in a grant of early summary judgment (Monbo v. Nathan, EDNY 2021).*
- Secured a permanent injunction on behalf of 3M Corp. against defendant that violated federal trademark and false advertising law by suggesting an affiliation with 3M while attempting to sell 3M-branded N95 masks at drastically increased prices to New York City officials amid the COVID-19 pandemic. The court held that the defendant’s use of 3M’s trademark in conjunction with price-gouging threatened 3M with irreparable harm to its reputation and goodwill. (3M Company v. Performance Supply, LLC, (USDC SDNY 2020)).
- Represented Capri Sun in a trademark litigation regarding its famous pouch-design trademark. The case included what the court described as “novel questions regarding the interplay of contract law and the trademark law defense of functionality,“ the Court found that a “No-Challenge” provision in a settlement and license agreement estopped the defendant from challenging the pouch trademark’s validity on grounds that it was allegedly functional, which led to an order striking defendant’s affirmative defenses concerning functionality and a protective order against discovery on functionality. The case progressed through summary judgment and resulted in a favorable settlement on the eve of trial (Capri Sun v. American Beverage Corp. (USDC SDNY 2019)).
(* At a previous law firm.)
Cornell Law School, JD
Occidental College, BA
- New Mexico
- New York
- US Court of Appeals for the Tenth Circuit
- US District Court for the District of New Mexico
- US District Court for the District of Colorado
- US District Court for the Eastern District of New York
- US District Court for the Southern District of New York