Kandis Koustenis, Attorney

Kandis focuses her practice on trademark and copyright litigation, prosecution, and portfolio management and counseling. Her litigation and counseling efforts also cover unfair competition, design patent, and advertising issues. Kandis has acted as trial and appellate counsel in federal civil lawsuits across the country, particularly within the Second Circuit and the Southern District of New York, where Kandis practiced for over 15 years before returning to her hometown in Virginia and joining Cloudigy Law. Kandis also represents companies before the Trademark Trial and Appeal Board (TTAB) and the National Advertising Division (NAD).

Kandis brings a client perspective to Cloudigy’s practice. Kandis served as in-house counsel in charge of the global intellectual property programs and portfolios for Toys “R” Us/Babies “R” Us and Kenneth Cole. At Kenneth Cole, Kandis also negotiated and drafted domestic and international trademark licensing agreements and managed licensee relationships. Now Kandis leverages her in-house portfolio management experience to help other companies build best practices, policies, and procedures to support efficient and effective worldwide trademark enforcement programs, brand clearance and filing procedures, and pre-production design review for clothing and other products.

With her diverse mix of private practice and in-house experience, Kandis brings a business strategy-focus to her litigation and counseling practice.

Practice Areas

  • Trademark and Trade Dress
  • Copyright
  • Unfair Competition
  • Civil Litigation
  • Licensing and Contracts
  • Trademark and Copyright Portfolio Management
  • Design Patents

Representative Experiences

  • 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.

 

Professional Activities

  • NYC Bar Association, Women in IP Committee
  • NYC Bar Association, Fashion Law Committee
  • Fordham University School of Law, Fashion Law Institute, Pro Bono Volunteer
  • American Bar Association, Intellectual Property Section
  • District of Columbia Bar, Intellectual Property Section

Recent Speaking Engagements

  • Panelist/speaker, “IP Protection in the Apparel & Fashion Industries,” US District Court, SDNY (February 2012)
  • Panelist/speaker, “Women in IP Breakfast Series, Hot Topics in Licensing,” NYC Bar Association (March 2011)

Publications

  • Editor/Author, “Attorney’s Fees,” Intellectual Property Counseling and Litigation treatise (2016 update)
  • Co-author, “Intellectual Property in Mergers & Acquisitions,” Lexis Practice Advisor, LexisNexis (2014)
  • Co-author, “Intellectual Property in Joint Ventures & Joint Development Agreements,” Lexis Practice Advisor, LexisNexis (2014)

Bar & Court Admissions

  • District of Columbia
  • New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. Court of Appeals, Third Circuit

Education

  • Georgetown University Law Center
    JD, cum laude
  • The University of Virginia
    BA, Economics, French Language & Literature

Judicial Clerkships & Internships

Kandis clerked for The Honorable James C. Cacheris at the United States District Court for the Eastern District of Virginia in Alexandria, Virginia.