Stephen J. Barrett

Stephen J. Barrett (Partner-New York, NY) and Gabriela Rios (Associate-New York, NY) recently prevailed on behalf of a manufacturer client on a motion to dismiss in the Southern District of New York on a trade dress case. Plaintiff brought claims under the Lanham Act for trade dress infringement and trade dress dilution, along with state law claims, related to a unique piece of farming equipment that previously enjoyed patent protection. The plaintiff sought to prevent competitors from using the design of the previously patented product under the theory that the product’s non-patented elements were separately protectable under trademark law. In their motion to dismiss, Stephen and Gabriela argued that the alleged trade dress is functional and therefore not protectable, and that the trade dress is not famous, which is a separate requirement necessary for trade dress dilution. The court agreed with their arguments, stating that the complaint only offered conclusory statements that did not sufficiently plead non-functionality or the trade dress’s requisite level of fame. Plaintiff attempted to bolster its arguments by referencing an expired design patent, to which the court responded that the assertion of a legal presumption of non-functionality stemming from a design patent is not supported in the caselaw.

Stephen Barrett (Of Counsel-New York) obtained summary judgment in the Southern District of New York on behalf of Wilson Elser’s clients, two officers of a large regional bank accused of fraud in connection with a loan transaction. The plaintiff is an investment firm specializing in subordinated and other high-risk debt offerings. Our clients extended a seven-figure loan to a consumer lending company. When the lending company sought additional capital, the bank made an introduction to the plaintiff’s firm because of its specialized offerings. The lending company ultimately failed and could not repay the loan from our clients’ bank and the subordinated loan from the plaintiff. The plaintiff then sued our clients, alleging they fraudulently induced the plaintiff to make the subordinated debt offering to the lending company.

After successfully narrowing the scope of the plaintiff’s claims via a pre-answer motion to dismiss, the parties engaged in extensive discovery related to the various loan instruments at issue. After obtaining the complete record, Stephen filed a lengthy, detailed motion for summary judgment. In a comprehensive 32-page opinion, the district court judge accepted our clients’ arguments in their entirety. The court held that the plaintiff failed to identify any potentially fraudulent statements and, in any event, could not have reasonably relied on any such statements considering the plaintiff’s affirmative obligation to conduct due diligence regarding its loan offering. The complaint was dismissed with prejudice, and the plaintiff declined to file an appeal.