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G. Roxanne Elings

ElingsG. Roxanne
Partner
T212.603.6416
F212.379.5226
Roxanne Elings is recognized as one of the nation’s leading trademark and brand management attorneys, having been named one of "The 20 Most Influential Women in IP" in 2014 by Law360 and ranked each year since 2010 by World Trademark Review as one of the top attorneys nationally in trademark prosecution, enforcement/litigation, and anti-counterfeiting. She is the only attorney to receive top rankings in these three categories, which, according to WTR, indicates "an exceptional national reach and reputation."

As a member of DWT's Digital Counsel team, Roxanne works with a multi-disciplinary team of lawyers representing companies whose business models place them at the intersection of technology, fashion, outdoor performance, luxury goods, consumer electronics, beauty, and entertainment media.

When advising companies on brand management and enforcement issues, Roxanne takes a worldwide, strategic, and results-oriented approach, which often means thinking outside the box. As a result of this approach, Roxanne is repeatedly at the forefront of creating new legal precedent to more effectively meet the challenges facing brand owners who face counterfeiting and other enforcement issues. For example, working with a team:
  • She was the first to obtain orders that addressed the challenges resulting from online IP theft: The North Face Apparel Corp. and PRL USA, Inc. vs. Fujian Trading; Advanced Access Content System Licensing Administrator v. Feng Tao; and Twentieth Century Fox v. Wang Wei d/b/a DVDSea.com.
  • She was the first to obtain an ex parte asset restraint order in a counterfeiting action. Reebok vs. Marnatech.
  • She was the first to obtain an order applying the concept of extra-territorial jurisdiction in cases arising under the Lanham Act. Reebok vs. Marnatech.
  • She was the first, working with the NYC mayor’s office, to invoke a NYC statute not previously used for counterfeiting to put an end to the then-notorious 1165 Broadway’s role as the epicenter for counterfeit wholesalers. 1165 Broadway v. NY Sportswear brought by the mayor’s office and Fila USA Inc, Fila Sport SpA and Guess Inc v. Mira Sportswear brought by Roxanne.

Representative Experience

Juicy Couture Inc. v. Bella International Limited, et al.

Represented plaintiff seeking to enjoin sales and advertising by Hong Kong defendant with over 30 knock-off JUICY GIRL stores in Hong Kong and mainland China of goods bearing counterfeits of plaintiff’s marks. Obtained order preliminarily enjoining such sales and advertising, including language specifically ordering Twitter and Facebook to cease services to defendant. (S.D.N.Y. 2015)

Klipsch Group, Inc. v. Shenzhen Sosound Technology Co Ltd. et al.; Klipsch Group, Inc. v. Big Box Store Limited, et al.

Representing consumer electronics plaintiff in series of actions against Chinese-based large-scale online vendors of counterfeit goods. (S.D.N.Y. Ongoing)

The North Face Apparel Corp. and PRL USA, Inc. v. Fujian Sharing Import and Export

Representing plaintiffs in first ever standing Order to shut down rogue websites and seize counterfeiters’ profits from the sale of counterfeit goods. Also obtained an order establishing that a top level-domain registry (such as Public Interest Registry) could be found in contempt of a court order if it has notice of a counterfeiting website and does not take action to disable that website. Since the initial Order in 2010, which awarded plaintiffs $78 million in damages, plaintiffs have continued to bring contempt style motions to curtail counterfeiting on the internet and have shut down over 21,000 websites. The success of the action has greatly decreased the number of new websites created by defendants. Additionally, plaintiffs have recovered from defendants in excess of $2.5 million. (S.D.N.Y. Ongoing)

The North Face Apparel Corp. v. Moler et al.

Represented The North Face against a Vietnamese-based global counterfeiting ring, trading primarily in THE NORTH FACE branded backpacks, and operating throughout the United States through U.S.-based distributors. The defendants were operating from several eBay stores and other websites. The order obtained on behalf of The North Face not only prohibits third parties from providing services in furtherance of the defendants’ operations, but also provides for expedited third-party discovery and requires banks and other financial institutions to immediately locate and restrain the defendants’ accounts. Each of the defendants has been enjoined, the online platforms disabled, and hundreds of thousands of dollars from the illicit activities restrained. (S.D.N.Y. Ongoing)

Richemont International S.A., et al. v. Chen et al.

Representing Richemont in an action against multiple large rings of Chinese-based online counterfeiters marketing, distributing and offering for sale watches, jewelry, and other products bearing counterfeits of plaintiffs’ famous, inter alia, CARTIER, PANERAI, and BAUME & MERCIER trademarks. By linking websites to a common owner, Richemont has been able to shut down over 4,500 websites in a short period of time. Richemont obtained a default judgment and permanent injunction awarding plaintiffs $100 million in damages and a permanent injunction directing third parties controlling or holding defendants’ financial accounts, including bank payment providers, to immediately locate and restrain all accounts belonging to or controlled by the defendant and to transfer all restrained monies to plaintiffs. Richemont has recovered hundreds of thousands of dollars representing defendants’ profits and the order also provides for continuing relief, permitting further seizure of domains and assets as they are discovered. No. 12-CV-6689 (S.D.N.Y. Ongoing)

The North Face Apparel Corp. v. Williams Pharmacy, Inc. et al.

Represented The North Face in action against The South Butt, LLC, a company which sold "The South Butt" apparel modeled after designs sold under the famous The North Face marks and using the tagline NEVER STOP RELAXING, similar to The North Face’s NEVER STOP EXPLORING mark. After entry of a consent injunction, defendants formed a new company, Why Climb Mountains, LLC and subsequently began selling “The Butt Face” apparel, with the tagline NEVER STOP SMILING. The defendants argued that their new apparel was a parody and therefore not covered by injunction. After full briefing, the court indicated that The North Face would prevail, and subsequently entered a consent judgment of contempt against the defendants. No. 4:09-cv- 02029. (E.D. Mo. 2012)

Levi Strauss & Co. v. Ding Shidun*

Obtained an injunction and asset restraint order against rogue websites selling counterfeit LEVI brand apparel. (2012)

Wrangler Apparel Corp. v. Conway Stores*

Shut down an international counterfeiting ring that had been operating for at least five years and selling hundreds of thousands of counterfeit jeans.  Obtained a permanent injunction, seized tens of thousands of counterfeit jeans and obtained a multimillion-dollar settlement. (2011)

The North Face Apparel Corp. and PRL USA v. TC Fashions*

Obtained a permanent injunction and seized tens of thousands of goods against a counterfeiter who, according to documents, was generating $8 million revenue per year from manufacturing, importing and selling counterfeit, inter alia, The North Face and Polo Ralph Lauren apparel. Plaintiffs received over $2 million from defendants’ sales profits. (2007)

Animale Group Inc. v. Sunny’s Perfume, Inc.*

Obtained permanent injunction and restrained over $2 million in assets from defendants’ sale of counterfeit fragrances. (2007)

Nautica & Timberland v. TC Fashions*

Obtained a permanent injunction and seized over 35,000 goods bearing counterfeits of Nautica and Timberland trademarks. (2007)

The North Face Apparel Corp. v. Saleh*

Seized over 7,000 counterfeit goods from a U.S. warehouse.  Recovered $500,000 in profits and identified ultimate source of counterfeit goods. (2005)

The North Face Apparel Corp. v. Michael Chu*

Awarded $7 million dollar judgment and broke up a multi-year multimillion-dollar counterfeiting ring that manufactured, imported and sold counterfeit The North Face jackets. (2005)

Cartier International v. Liu*

Multi-district litigation for multiple watch brands, seizing over one million watches and over $1 million in cash, breaking four global organizations. Obtained a $4.5 million contempt judgment and additional judgment of $594 million against a ring of New York Chinatown counterfeiters and money launderers—this is the highest U.S. judgment in history for this kind of matter. (2003)

Starter Corp. v. Converse*

Represented Converse in a jury trial where Starter’s use of an S and star design mark on footwear was found to infringe Converse’s five-pointed star trademark. The jury also found for Converse on issues of breach of contract and equitable estoppel based on a prior agreement between the parties. (1997) Affirmed on appeal. (1999)

Liz Claiborne v. Mademoiselle*

Won two-year fight against factory shipping product made during time of authority but shipped without authority. (1998)

Reebok v. Marnatech*

Obtained precedent-setting decision allowing for the ex parte restraint of assets under the Lanham Act. This decision also allowed extra-territorial jurisdiction over the defendants who were selling counterfeit sneakers into Mexico. (1995)

Fila USA Inc, Fila Sport SpA and Guess Inc v. Mira Sportswear*

Obtained the seizure order that forever shut 1165 Broadway, known as an epicenter for counterfeit wholesalers. According to media reports at the time and testimony before a Senate judiciary committee in 1995, the Federal Bureau of Investigation had compiled strong evidence that the terrorists who bombed the World Trade Center in 1993 had financed their activities with the sales from 1165 Broadway. Prior to the raid and ensuing action in 1995, trademark owners and the police alike were doubtful that anything would stop the notorious counterfeiting operations in this building. (1994)

Polymer Technology Corp. v. Mimran*

Represented subsidiary of Bausch & Lomb in a decision to vacate and remand the lower court’s denial of a preliminary injunction against defendants who purchased packaged contact solution kits from doctors’ offices and broke them down into individual units, selling them using counterfeit packaging. (1992)
* Denotes experience completed at a prior firm

Additional Qualifications

  • Partner, Greenberg Traurig LLP, New York, N.Y., 2000-2012

Professional & Community Activities

  • Board of Directors, New York City Bar Fund
  • International Anti-Counterfeiting Coalition
  • North American Anti-Counterfeiting Committee, International Trademark Association
  • Co-Chair, U.S. Federal and State Legislation Task Force
  • Brand Enforcement Task Force, Outdoor Industry Association
  • Brand Protection Committee, American Apparel and Footwear Association
  • New York State Women’s Bar Association
  • Association of the Bar of the City of New York

Professional Recognition

  • Named as one of the "20 Most Influential Women in IP Law," Law360, 2014
  • Named as one of the "Best Lawyers in America" in Trademark Litigation by Woodward/White, 2006-present
  • Named to the "World Trademark Review WTR-1000 – The World’s Leading Trademark Professionals,” recognized nationally and in New York in trademark prosecution/strategy and litigation/enforcement and nationally in anti-counterfeiting, 2011-present 
  • Named to Managing IP’s Top 250 Women in IP, 2013
  • Named as one of the "Top 50 Trademark Attorneys in the U.S." by CSC Trademark Insider, 2005-2006
  • Listed, Marquis Who's Who in America
  • Named to "The Legal 500 U.S. Edition," 2007, 2008
  • Selected to "New York Super Lawyers," Thomson Reuters, 2006-2012, 2014-2016