Joseph C. Gioconda
Attorney, Counselor at Law and Founder at Gioconda Law Group PLLC
- Greater New York City Area
- Law Practice
Joseph C. Gioconda's Overview
- Partner at DLA Piper (formerly DLA Piper Rudnick Gray Cary)
- Partner at Kirkland & Ellis LLP
- Associate at Kirkland & Ellis LLP
- Clinical Intern at U.S. Department of Justice
- Clinical Intern at United States Senate Judiciary Committee
Joseph C. Gioconda's Summary
Joseph Gioconda is the founder of the Gioconda Law Group PLLC, an elite law firm in New York City providing high quality brand protection legal and consulting services to clients seeking to design, refine and implement an effective but affordable anti-infringement campaign.
Our clients have included multinational Fortune 500 corporations with world-famous and iconic brands as well as individuals, and newly-established, fast-growing companies. We seek to assist those who are leaders in dynamic industries such as fashion and luxury goods, jewelry and watches, eyewear, flavors and fragrances, footwear, sporting goods, electronics, pharmaceuticals, consumer products, hospitality and leisure as well as fine arts and collectibles, music, software and video games.
Our attorneys have successfully litigated cases in many federal and state courts throughout the U.S. Our cases have involved temporary restraining orders, preliminary injunction hearings, jury trials and appeals.
Mr. Gioconda has lectured at Yale Law School on a variety of intellectual property topics and has been widely quoted in the legal, business, and general press on intellectual property issues. He is a frequent commentator on CNN, NBC and MSNBC. Journalist Tim Phillips profiled him in the recent book "Knockoff: The Deadly Trade in Counterfeit Goods."
Mr. Gioconda's experience drafting legislation for the Senate Judiciary Committee has given him valuable insight into this area of law. Moreover, his experience at the U.S. Attorney's Office in New York has given him exposure to working closely with federal and local government officials and law enforcement agencies to achieve the seizure of articles that infringe his clients' rights. Mr. Gioconda has trained hundreds of U.S. Customs agents to strengthen the nation’s borders against the tide of illegal imports.
Specific areas that Mr. Gioconda focuses on are: Brand Protection Consulting and Strategy, Anti-Counterfeiting, Anti-Piracy, Trademark Litigation and Enforcement, Copyright Litigation, Trade Dress Litigation, Unfair Competition, Entertainment and Media Law and Counseling. (Applicable ethics rules prohibit NYS Licensed attorneys from holding themselves out as having a "Specialty").
Joseph C. Gioconda's Experience
CEO and Founder
Privately Held; 1-10 employees; Security and Investigations industry
December 2011 – Present (2 years 10 months) New York
RogueFinder is currently creating and developing proprietary forensic software to detect and analyze "rogue websites." Rogue sites impersonate brands online to sell counterfeit products.
RogueFinder will seek out "digital fingerprints" to connect these rogue websites, and allow for greater ease of shutting them down as part of a wider brand protection strategy.
Attorney, Counselor at Law and Founder
Privately Held; 1-10 employees; Law Practice industry
December 2009 – Present (4 years 10 months) New York, NY
The Gioconda Law Group PLLC is an elite law firm in New York City providing high quality brand protection legal and consulting services to clients seeking to design, refine and implement an effective but affordable anti-infringement campaign.
• Burberry Limited (UK) et al. v. John Does, the Gioconda Law Group represented Burberry in trademark counterfeiting cases against defendants who were using hundreds of websites to sell a wide variety of counterfeit Burberry merchandise. The Southern District of New York has granted a Permanent Injunction, as well as awarded over a quarter of a billion dollars in damages.
• Hermès of Paris Inc., et al. v. John Doe 1 a/k/a Li Hua et al., et al, the Gioconda Law Group represented Hermès in a trademark counterfeiting case against defendants who were using over thirty-four (34) domain names with “Hermes”,”Outlet” and/or “Sale” in their names to sell counterfeit Hermès merchandise. The Southern District of New York has entered a final judgment in the amount of one hundred million dollars ($100,000,000) and entered a Permanent Injunction.
• Michael Kors L.L.C. v. John Doe 1 a/k/a Zheng Little, et al., the Gioconda Law Group currently represents Michael Kors L.L.C. in a trademark counterfeiting case against numerous defendants who were using over thirty-five (35) domain names with “Michael Kors” and “Outlet” and/or “Sale” in their names to sell counterfeit Michael Kors merchandise. The Southern District of New York has granted a Preliminary Injunction.
• La Quinta Worldwide v. Q.R.T.M. S.A. de C.V., the Gioconda Law Group represented La Quinta Worldwide in a successful trademark infringement judgment entered after a bench trial in the District of Arizona, Tucson Division, relating to the Defendant’s intended use of the name “QUINTA REAL” in connection with hotels in the United States. La Quinta is also represented by the Gioconda Law Group in the appeal of that judgment before the U.S. Court of Appeals for the Ninth Circuit.
Partnership; 5001-10,000 employees; Law Practice industry
November 2006 – December 2009 (3 years 2 months) New York, NY
• Litigated many high-profile trademark, trade dress and copyright cases involving Fortune 500 companies.
• Argued motions for Temporary Restraining Orders and Preliminary Injunctions.
• Advised clients on anticounterfeiting and brand protection legal strategies.
• XY Skin Care & Cosmetics v. Hugo Boss USA, Inc., trademark case relating to cologne and perfume, in federal court in Arizona. Summary judgment granted in Hugo Boss' favor.
• Bodum USA, Inc. v. LaCafetiere, Inc., trade dress case relating to "french press" style coffee makers in federal district court in Chicago. Summary judgment granted in LaCafetiere's favor.
• Chicago Board Options Exchange, et al. v. International Securities Exchange LLC, unfair competition case currently pending in the Circuit Court of Cook County, Illinois (and adjunct copyright case currently pending in the U.S. Court of Appeals for the Second Circuit).
• Computer Sciences Corporation v. MMC 20/20 Software, Inc., trade secret litigation in New York Supreme Court. Settled on mutually acceptable terms.
Partnership; 1001-5000 employees; Law Practice industry
2003 – 2006 (3 years)
• Litigated many high-profile trademark, trade dress and copyright cases.
• Conducted direct and cross-examinations of witnesses at jury trials, bench trials and hearings.
• Argued numerous motions for Temporary Restraining Orders and Preliminary Injunctions.
• Playboy Enterprises v. On-Line Entertainment, trademark jury trial in the Eastern District of New York, and successful appeal in the U.S. Court of Appeals for the Second Circuit.
• Hermès of Paris v. Lederer, successful trademark jury trial in the Southern District of New York, and successful appeal in the U.S. Court of Appeals for the Second Circuit.
• Hermès of Paris v. Pelle via Roma, successful trademark jury trial in the Southern District of New York.
• Hermès of Paris, Inc. v. Steven Stolman, preliminary injunction granted by the Eastern District of New York.
• Abert Trading v. Kipling, favorable summary judgment ruling granted by the Southern District of New York.
Partnership; 1001-5000 employees; Law Practice industry
September 1997 – October 2003 (6 years 2 months)
• Designed and implemented aggressive global trademark enforcement strategies for clients.
• Argued numerous motions for Temporary Restraining Orders and Preliminary Injunctions.
• Deposed and defended fact and expert witnesses; managed and conducted document discovery.
• Handled Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.
• Pro Bono: Successfully briefed and argued appeal of armed robbery conviction on behalf of King’s County District Attorney’s Office.
• Hermès of Paris v. Brueton, preliminary injunction granted by the Eastern District of New York.
• Hermès of Paris v. Susan Sutherland, preliminary injunction granted by the District of Illinois.
• Hermès of Paris v. RKR Bags/Knockoff Shop, preliminary injunction granted by the Southern District of California.
• Norelco v. Remington, preliminary injunction hearing, Southern District of New York.
Government Agency; 10,001+ employees; Law Practice industry
September 1996 – May 1997 (9 months)
• Assisted federal prosecutors in the coordination of criminal investigations and indictments.
• Researched and drafted pretrial motions and pleadings.
• Drafted federal appeal on a downward departure issue applying sentencing guidelines.
• Met with defendants and prosecutors during plea bargaining sessions.
Government Agency; 1001-5000 employees; Legislative Office industry
May 1995 – September 1995 (5 months)
• Composed federal legislation on emerging intellectual property issues.
• Analyzed and advised on the legality and constitutionality of actions taken by the U.S. Senate.
• Worked closely with U.S. Senators and witnesses to prepare for Senate Judiciary Committee hearings on various topics including intellectual property.
• Met with House Representatives and constituents to coordinate legislation.
Joseph C. Gioconda's Publications
Authors: Joseph C. Gioconda, Joseph M. Forgione, Esq., Barbara Kolsun, Robert Doerfler, Matthew D. Asbell - US/Foreign Trademarks/Patents, Kelly M. Slavitt
- John Wiley & Sons, Inc.
- November 15, 2011
I recently co-authored the chapter on anti-counterfeiting in this book, which is designed to provide insight on the contemporary issues facing senior decision makers in their ownership and management of corporate intellectual property rights in the 21st century.
Authors: Joseph C. Gioconda
- Hastings Communications and Entertainment Law Journal
- October 15, 2008
Federal trademark laws can assist the art community against the rapid influx of forgeries, but only if artists and their legal counsel aggressively use them. The art world has the unique privilege of creating a rich visual history of our culture and preserving it for generations to come. With this privilege comes a responsibility to combat forgery and maintain the integrity of works in circulation. Utilizing existing trademark law against forgers, collaborating with other industries affected by counterfeit goods, and keeping abreast of new developments in intellectual property law are some of the most effective ways for them to do so.
Joseph C. Gioconda's Skills & Expertise
- Intellectual Property
- Complex Litigation
- Strategic Consulting
- Unfair Competition
- Copyright Litigation
- Brand Protection
- Trademark Infringement
- Trade Secrets
- Domain Name Disputes
- Internet Law
- False Advertising
- Trade Dress
- Trademark Litigation
- Public Policy
- Trademark Clearance
- Commercial Litigation
- Fashion Law
- Copyright Law
- Patent Litigation
- Domain Names
- Corporate Law
- Joint Ventures
- Corporate Governance
- Entertainment Law
- Legal Advice
- Privacy Law
- Legal Assistance
- International Law
- Litigation Support
- Dispute Resolution
- Legal Issues
- Legal Research
- Civil Litigation
Joseph C. Gioconda's Education
1994 – 1997
Activities and Societies: Yale Law Federalist Society (President), Yale Journal on Regulation (Senior Editor), Yale Journal of Law and the Humanities (Development Editor), Harvard Journal of Law and Public Policy (Visiting Editor), Temporary Restraining Orders for Battered Women Project, Yale Law Crew Team (Co-Captain and Co-Founder).
B.A., Political Science
1991 – 1994
Graduated Magna Cum Laude, Phi Beta Kappa, Dean's List (4.0 GPA) for 9 semesters.
Activities and Societies: Instructor and Teaching Assistant for numerous advanced courses in Political Science and Social Psychology.
Cathedral Preparatory Seminary, New York
1986 – 1990
National Forensic League (National Finalist in Debate and Extemp), Brooklyn-Queens Catholic Forensic League (New York State Finalist in Debate and Extemp).
Activities and Societies: Currently a member of St. Matthew's Society, an alumni association of Cathedral graduates working in the finance and legal fields.
Joseph C. Gioconda's Additional Information
Authored: Joseph C. Gioconda, "Can Intellectual Property Laws Stem the Rising Tide of Art Forgeries?" 31 Hastings Comm. & Ent. L.J. 47 (2008). Mentor-in-Residence, Yale Law School.
- Groups and Associations:
Admitted to United States Supreme Court, United States Court of Appeals for the Federal Circuit, United States Court of Appeals for the Second Circuit, United States Court of Appeals for the Third Circuit, United States Court of Appeals for the Ninth Circuit, United States Court of Appeals for the Eleventh Circuit, District Court for the Southern District of New York, District Court for the Eastern District of New York, District Court for the Eastern District of Michigan, Bar of the State of New York. Member of: International Bar Association (IBA), International Trademark Association (INTA), International Press Association, Harper's Bazaar Anticounterfeiting Summit (Speaker), Art Law Conference 2007 in Milan, Italy (Speaker), Yale Mock Trial Association 2008 (Judge).
- Honors and Awards:
Rated a "Superb" Attorney by ratings on AVVO.com.
• ABC TV Is Sued Over Plan for Show, The New York Times
• A 'Satire' of a Classic Fails to Amuse The August House of Hermès, The New York Times
• Counterfeiter, Imitators: Fine Line, Wall Street Journal
• Fashion Industry Copes With Designer Knockoffs, National Public Radio
• Special Report: Accessories -- or a Crime? NBC News
• Suit Sends Message to Bootleg Sellers: Knock It Off, Los Angeles Times
• Designers Add Muscle in Battle Against Knockoffs, National Jeweler
• Big Business in Counterfeiting Products, Voice of America
• Bag the Knockoffs! New York Newsday
• Handbag Wars, Vogue
• The Fighters of the Fake Get Real, New York Newsday
• Duped By Designer Doubles; Are Knockoffs Worth the Price? Black Enterprise
• Vuitton Sues Rival Dooney, New York Post
• Playboy Set to Turn Page in Web Trial, New York Daily News
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