Thomas A. Smart has litigated a wide variety of false advertising, consumer fraud, trademark, trade dress, counterfeiting, cybersquatting and copyright cases while in Kaye Scholer’s Trademark, Copyright and False Advertising group.
False Advertising Representative Matters
Mr. Smart has extensive experience litigating false advertising and unfair competition cases, on behalf of both plaintiffs and defendants, for a wide variety of companies in the pharmaceutical, food, luggage, liquor, and office supply industries. He has particular expertise in the design and use of consumer surveys in false advertising cases.
- Obtained a consent judgment for Pfizer in Maine federal court enjoining a generic company from falsely advertising and promoting its drug as an FDA-approved generic equivalent of Pfizer's product
- Defeated a preliminary injunction in a Lanham Act false advertising case brought by the importer of Belvedere vodka challenging Sidney Frank's advertising for its Grey Goose vodka, Millenium Import Co. v. Sidney Frank Importing Co., 2004 U.S. Dist. LEXIS 11871 (D. Minn. June 11, 2004)
- Defeated a motion for preliminary injunction seeking to enjoin The Hershey Company from launching its SmartZone nutrition bar on the grounds that it was making false claims for the product in its advertising.
- Successful defense of Rhône-Poulenc Rorer Pharmaceuticals, Inc. in a Lanham Act false advertising case, Johnson & Johnson-Merck Consumer Pharmaceuticals Company v. Rhône-Poulenc Rorer Pharmaceuticals, Inc., 19 F. 3d 125 (3d Cir. 1994).
- Mr. Smart also has extensive experience with state unfair trade practices act cases, including defeating a preliminary injunction sought by a competitor of Purdue Pharma Co., asserting unfair competition claims under Connecticut state law.
Consumer Fraud Representative Matters
Successful defense of Sidney Frank Importing and Mast-Jagermeister in consumer fraud class actions in Michigan, Wisconsin, Ohio and West Virginia, resulting in dismissals of the cases on the pleadings.
- Successful representation of Pfizer and Novartis in numerous consumer fraud class actions involving prescription and OTC drug products in California, New York, New Jersey, Alabama, Florida, Texas, Illinois and Louisiana, among others, including the successful defense of Pfizer and Warner-Lambert against consumer fraud claims on the grounds of federal preemption in Kanter v. Warner-Lambert Co., 99 Cal. App. 4th 780 (Cal. Ct. App. 2002), petition for review denied, 2002 Cal. LEXIS 6376 (Cal. Oct. 2, 2002) (en banc).
- Obtained reversal of class certification in Warner-Lambert Co. v. Mills, 2005 WL 2088366 (Tex. App. – Beaumont Aug. 31, 2005). Mr. Smart successfully argued the appeal by Pfizer, and obtained a reversal, of an order certifying a class of Listerine purchasers in which a plaintiff asserted claims under California Business & Professional Code § 17200, Pfizer v. Superior Court, (Galfano), 182 Cal. App. 4th 622 (2010), petition for review denied, 2010 Cal. LEXIS 6162 (Cal. June 17, 2010) (en banc).
- Successfully argued the appeal by Pfizer of an order certifying a class of Massachusetts purchasers of Listerine in the Appellate Court of Massachusetts, Kwaak v. Pfizer, Inc., 881 N.E. 2d 812 (App. Ct. Mass. 2008) and obtained summary judgment for Warner-Lambert and Pfizer, dismissing consumer fraud claims on grounds of federal preemption in federal district court in Beaumont, Texas, Mills v. Warner-Lambert Company, 581 F. Supp. 2d 772 (E.D. Tex. 2008).
Trademark and Trade Dress Representative Matters
Successful trial of trademark infringement and breach of contract claims against designer Joseph Abboud arising out of Mr. Abboud’s use of the name and mark “Joseph Abboud” in violation of the rights of JA Apparel, which had purchased the Joseph Abboud name and mark from Mr. Abboud for $65.5 million in 2000, JA Apparel Corp. v. Joseph Abboud, 2010 U.S. Dist. LEXIS 2151 (S.D.N.Y. Jan. 12, 2010).
- Successful defense of Staples against a preliminary injunction motion brought by Office Depot alleging that Staples’ comparative advertising constituted trademark infringement and false advertising.
- Successful prosecution of an action against Simon & Schuster relating to the use on a book cover of Hershey’s well known trademarks and trade dress.
- Successful defense of Hershey against a preliminary injunction action brought by ZonePerfect Nutrition Co., a subsidiary of Abbott Labs, seeking to stop Hershey’s launch of Hershey’s SmartZone bar that allegedly infringed ZonePerfect’s trademarks.
- Successful defense of Staples in an action by Boise Office Products alleging that Staples’ “THAT WAS EASY” slogan infringed Boise’s trademarks.
- Successful defense of BASF in a trade dress case involving one competitor’s attempt to monopolize the color yellow for antifreeze containers, First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987)
- Numerous prosecutions and defenses of trademark and trade dress actions for a wide variety of clients including major pharmaceutical, chemical, telecommunications, and luggage companies.
Copyright Representative Matters
- Successful defense of ABC and Granada Entertainment against claims that the show “I’m a Celebrity–Get Me Out of Here!” infringed CBS’s copyright and trade dress rights in the television show “Survivor,” in CBS Broadcasting, Inc. v. ABC, (S.D.N.Y. 2003)
- Defense of Texaco Inc. in the American Geophysical Union v. Texaco Inc. action, a landmark test case involving the issue of whether the making of a single copy of an article by a Texaco scientist from a scientific and technical journal was copyright infringement or fair use.
Mr. Smart has written and lectured extensively on antitrust and intellectual property issues. His published articles include “Antitrust Law in 1994: The Department of Justice’s Intellectual Property Guidelines,” Intellectual Property Law Annual, 1995; “Squaring the Gray Goods Circle,” 10 Cardozo L. Rev. 1963 (1989); and, with Milton Handler, “The Present Status of the Intracorporate Conspiracy Doctrine,” 3 Cardozo L. Rev. 23 (1981).