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Kandis Koustenis

Kandis Koustenis is a member of the firm’s Intellectual Property and Technology Law practice with over twenty years’ experience in trademark, copyright and unfair competition matters. Kandis focuses her practice on trademark and copyright counseling, prosecution, and enforcement. Her counseling practice includes the strategic review and management of multi-national trademark portfolios as well as transactional matters such as licensing and due diligence. Kandis also has experience in advertising review, false advertising disputes, and domain name enforcement.

As former in-house counsel in charge of the global intellectual property programs and portfolios for Toys “R” Us/Babies “R” Us and Kenneth Cole, Kandis brings a client perspective to Protorae Law’s IP team. Kandis leverages her in-house portfolio management experience to help clients build best practices, policies, and procedures to support efficient and effective worldwide trademark clearance, filing and enforcement programs.

Kandis also has extensive litigation experience and has represented clients at trial and on appeal in trademark, copyright, and unfair competition disputes. Kandis also represents clients in administrative proceedings before the U.S. Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB).

Kandis has written for publications on a variety of intellectual property matters including “Intellectual Property in Mergers & Acquisitions” and “Intellectual Property in Joint Ventures & Joint Development Agreements” for the Lexis Practice Advisor, and the recovery of attorney’s fees in intellectual property cases for the Intellectual Property Counseling and Litigation treatise. Kandis is also a frequent contributor to the Decoding IP legal blog and podcast series.

After graduating cum laude from the Georgetown University Law Center, Kandis clerked for the Honorable James C. Cacheris in the U.S. District Court for the Eastern District of Virginia in Alexandria, Virginia.

Prior to joining Protorae Law, Kandis practiced at Cloudigy Law in McLean, Virginia and at Darby & Darby and Goodwin Procter in New York City.

Representative Matters

  • Humphreys & Partners Architects v. Lessard Design, et al.-Obtained summary judgment of non-infringement on behalf of developer and builder in an architectural work copyright case. Successfully defended decision on appeal, and obtained attorney’s fees and costs as prevailing party in both trial and appellate courts
  • Chase Manhattan Bank USA v. Urban Television Network and Freedom Card, Inc.-Obtained summary judgment of non-infringement on behalf of JPMorgan Chase in a trademark suit brought against JPMorgan Chase’s launch of its Chase Freedom credit card. Successfully defended decision on appeal
  • Conopco, Inc. d/b/a/ Calvin Klein Cosmetics v. Cosmair, Inc. and Polo Ralph Lauren Corp., et al.-Successfully defended launch of Ralph Lauren Romance fragrance against injunction action (involving a three week injunction hearing) brought by Calvin Klein Eternity over the alleged similarity of the perfume bottle trade dress
  • Marvel Characters v. Simon-Represented Joe Simon, co-creator of Captain America character and comic books in a dispute with Marvel Comics over Mr. Simon’s right to regain the Captain America copyrights from Marvel. In this case of first impression, appellate court held that a settlement agreement made years after the creation of Captain America, which stipulated that the Captain America works were works for hire, could not prevent Mr. Simon from disavowing that agreement, terminating Marvel’s rights, and regaining the copyrights under the Copyright Act’s termination right
  • Conducted detailed audit of global trademark portfolio and litigation docket for Kenneth Cole Productions, resulting in streamlined portfolio and case load as well as reduced outside counsel use and fees. Increased portfolio management efficiency by transitioning responsibility for foreign trademark matters 
in-house and decreasing/consolidating global outside counsel work
  • Created and implemented best practices and procedures for global IP department for Toys “R” Us/Babies “R” Us, including worldwide 
trademark enforcement program, brand clearance and filing procedures, and pre-production design review for private 
label apparel and toys. Changes resulted in reduced legal risks, less reliance on outside counsel, and improved communication with business units

LEGAL DISCLAIMER: THE RESULTS OF ALL CLIENT MATTERS DEPEND ON A VARIETY OF FACTORS UNIQUE TO EACH MATTER. PAST SUCCESSES DO NOT PREDICT OR GUARANTEE FUTURE SUCCESSES.