Ilaria Maggioni

Ilaria Maggioni

Of Counsel
 

Ilaria Maggioni is Of Counsel to the Sills Cummis & Gross Intellectual Property Practice Group and is resident in the Firm’s New York office.  Ms. Maggioni’s practice focuses on domestic and international intellectual property litigation, prosecution and counseling. She heads the Firm’s trademark and copyright practice. 

Ms. Maggioni has experience in domestic and international litigation involving patent, copyright, trademark and trade dress infringement, commercial disparagement and trade libel. Her transactional and prosecution work includes licensing; protection of computer hardware and software; multimedia and Internet law; clearance and registration of marks and logos and IP portfolio management in the U.S. and abroad; and patent clearance.

She has represented clients in a variety of industries, including electronics, chemical, pharmaceuticals, software, optics, hardware and mechanical engineering, industrial design, jewelry, fashion, food, wine & spirits, Internet and mass media, clothing and consumer goods manufacturing, finance, music and entertainment, and education.

Ms. Maggioni is fluent in Italian (native), English and Spanish.  She has a working knowledge of French and Portuguese.

After Ms. Maggioni’s mandatory postgraduate practical legal training in Rome, Italy, she worked in international operations for a PVC plastics producer in Livorno, Italy.  She joined Sills Cummis & Gross from the New York office of Kelley Drye & Warren. 

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Representative Matters

Transactional Work – Agreements

  • Structured and negotiated licensing, co-existence agreements, supply and manufacturing contracts, asset purchase agreements, cross-branding and merchandising deals for clothing and consumer goods, sporting goods and sports operators, industrial design, pharma, computer hardware and software, music production and entertainment.
  • Built comprehensive contractual packages for software products’ development and launch including: non-disclosures, developer contracts (independent contractor and employee-based); demo-testing and experimental-use agreements; multiuser licenses; skin-wrap licenses; end-user, reseller and distribution contracts; work performed in several different fields including for fantasy sport websites, remote monitoring telemetry systems for chemical water-treatment, instructional music software, monitoring and inventory database software.
  • Handled trademark, copyright and patent transfers, assignments and secured IP transactions.
  • Advised major capital investor about re-possessing and pledging of IP and related IP chain-of-title recordation in complex secured transactions (in close coordination with business management and debt restructuring counsel).

IP Portfolio Prosecution and Advice

  • Procured and maintained substantial domestic and International trademark portfolios, arranged and supervised comprehensive multi-country and WIPO Madrid Protocol trademark filing programs, in many industries including for a leading U.S. dermatology pharmaceutical company, a New York-based pharmaceutical company in the oncology sector, and wine and spirits makers and importers with worldwide branded distribution reach.
  • Handled inter partes oppositions and cancellations before the U.S. Trademark Trial and Appeal Board (TTAB) and equivalent authorities worldwide; assessed strategy for intervention at critical stages of prosecution or developing disputes, securing positioning for settlement.
  • Performed patent and trademark clearance and IP portfolio assessment, due diligence and strategy for start-ups and mature companies, cooperating closely with internal technical and marketing departments and in-house counsel.
  • Arranged for validation, representation and enforcement of European patents in the telecommunication sector.
  • Domain name procurement, maintenance and resolution of disputes via UDRP and litigation, including obtaining transfer of domain names from cybersquatters to legitimate trademark owners.

Patent Litigation

  • Represented major multinational Optical Character Recognition (OCR) software company in patent litigation in the U.S. District Court for the Northern District of California, involving nine software patents in the fields of OCR, Network Architecture and Electronic Archiving. Reached settlement just days before Markman hearing.
  • Represented the same OCR software company in another patent action in the U.S. District Court for the Southern District of New York, involving five patents on information processing. Negotiated favorable settlement at the pleading stage.
  • Part of large defense team representing online pharmacies against pharmaceutical manufacturer in the leading case on keyword advertising before the U.S. District Court for the Southern District of New York. Obtained dismissal of plaintiff’s related claims in favor of the online pharmacies, holding that their purchase of sponsored links for the keyword “ZOCOR” from Internet search engines was not “use in commerce” of plaintiff’s “ZOCOR” mark, and thus was not actionable under the Lanham Act.
  • Obtained judgment of invalidity and non-infringement in the U.S. District Court for the Southern District of New York in favor of a Belgian manufacturer of equipment for computer chip inspection. Member of appeal team before the U.S. Court of Appeals for the Federal Circuit (CAFC), which upheld the judgment of patent invalidity and non-infringement in favor of client.
  • Represented a German pharmaceutical company as local counsel in seven Abbreviated New Drug Application (ANDA) litigations.
  • Represented promotional goods manufacturer in infringement action to enforce design patent against commissioning purchaser and Chinese manufacturer. Secured favorable settlement after discovery.
  • Represented patent owner enforcing design patent for fashion accessories against national fashion retailers in the U.S. District Court for the Southern District of New York. Obtained settlement at the early pleading stage.

Trademark and Copyright Litigation

  • Defeated summary judgment motion in favor of client rejecting a trademark “fair use” and First Amendment defenses to trademark infringement on clothing.  Reached successful settlement just prior to trial.
  • Represented wine store owner in trade dress litigation concerning store layout in the U.S. District Court for the Southern District of New York.
  • Represented clothing manufacturer in copyright infringement actions concerning fabric patterns in the U.S. District Court for the Southern District of New York.
  • Represented eyewear manufacturer in infringement action involving design elements applied to fashion eyeglasses frames.  Secured settlement after successfully reopening default judgment.

Trade Libel and Defamation Litigation

  • Obtained $10 million judgment in online trade libel and defamation action in the Caribbean Federation of St. Kitts and Nevis under English Common Law. The case settled shortly after preliminary court decision concerning prospects of U.S. enforcement of the foreign money judgment in the U.S. District Court for the District of New Jersey.

Court Admissions

U.S. District Court, Southern District of New York, 2002
U.S. District Court, Eastern District of New York, 2003
U.S. Court of Appeals, Second Circuit, 2011

Rankings & Recognition

US Legal 500* 2015, Notable Mention - Intellectual Property: Trademarks Non-Contentious

* See Award Methodology

Affiliations

Professional Affiliations

  • Member, International Trademark Association (INTA)
  • Former Member, Editorial Board of The Trademark Reporter (2010-2013)
  • Member, American Bar Association
  • Member, Association of the Bar of the City of New York

Community Affiliations  

  • Board Member, Skilex International