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203-358-0800 Ext. 3349
203-569-1195, 203-520-2606
Fax: 203-348-2321
mwagner@dmoc.com
Diserio Martin
One Atlantic Street
Stamford, CT 06901
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Matthew C. Wagner

PARTNER

Practice Areas

  • Worldwide Brand and Product Development

  • IP Enforcement, Investigations, and Litigation

  • Federal Litigation

  • Regulatory Compliance

  • IP Corporate and Transactional Support

  • Alternative Dispute Resolution

  • Business Disputes and Commercial Litigation

  • Intellectual Property

  • Mergers and Acquisition

  • Start-Ups and Emerging Companies

Admissions

  • New York, 1997

  • Connecticut, 2007

  • Massachusetts, 1996

  • Washington, D.C., 1998

  • Supreme Court of the United States

  • U.S. Circuit Courts of Appeals for the Federal, Second, Sixth, Seventh and Ninth Circuits

  • U.S. Federal District Courts in Connecticut, New York, Massachusetts, District of Columbia, and Michigan

Matt Wagner is a partner at Diserio Martin and Chair of the firm’s Intellectual Property Practice Group. He counsels clients in the global procurement, enforcement, licensing, commercialization, and strategic planning for worldwide brand and product development, including trademarks, copyrights, and industrial designs. Matt serves as outside general and intellectual property counsel, primarily to international cosmetics and consumer goods companies, and leads the firm’s active intellectual property litigation practice in federal courts throughout the United States, and trademark oppositions and cancellations at the United States Patent and Trademark Office (PTO), through its Trademark Trial and Appeal Board (TTAB).

Matt has more than 20 years experience as an IP litigator and has appeared in more than 150 federal lawsuits relating to some form of IP and concerning diverse technology and subject matter, such as cosmetics, consumer goods and personal care products, publishing and literature, comic books and characters, eyewear, electronic transaction processing and pre-paid gift card technology, industrial lasers, cable television and navigation devices, and computer software. He has extensive experience obtaining emergency injunctions (temporary restraining orders) and conducting civil seizures and asset restraints to combat counterfeiting and unauthorized gray market imports. Matt has acted as an expert in federal trademark infringement litigation, and provided formal opinions on trademark damages, jury instructions and verdict forms. Through a trusted network of foreign associates, Matt coordinates the management, enforcement and defense of intellectual property rights worldwide.

Matt is an elected official in Fairfield, Connecticut, where he is a Commissioner and the Chairman of the town’s Plan and Zoning Commission. He is active in the American Intellectual Property Law Association (AIPLA), where he is presently a member of the Board of Directors and immediate past Chair of the Copyright Law Committee. Matt is also a frequent lecturer of accredited continuing legal education programs in intellectual property. He is a published author of various articles and papers in copyright and trademark matters.

Representative Matters

Worldwide Brand and Product Development

  • Outside General and Intellectual Property Counsel for multi-national health and beauty products company (PDC BRANDS®), responsible for management of worldwide IP portfolio, end-to-end supply chain support, import/export, marketing and advertising clearance, regulatory compliance, and corporate governance.

  • Outside IP counsel for leading and innovative companies in various consumer products sectors, including:

    • mattresses and bedding products (Classic Brands);

    • luxury skin care and cosmetics companies (KAT BURKI®, Mitchell Group);

    • famous maker of rooftop car carriers and racks (THULE®);

    • luxury ski helmets (OSBE®);

    • fashion design: acclaimed Menswear Designer (JEFFREY BANKS®);

    • fashion design: famous wedding dress designer (MATTHEW CHRISTOPHER®)

    • food and beverage (MOO® chocolates; Pestano Foods; Rauss Coffee Company);

    • handbags and accessories (LOLO®);

    • luxury home décor and finishes (THE WELL APPOINTED HOUSE®);

  • Outside IP counsel for specialty chemical manufacturer (Hampford Research); property and casualty insurance company (PURE®); famous sportscaster and production company (Hannah Storm and BRAINSTRORMIN’®); transportation services (MTC Worldwide);

  • Counsel of record in hundreds of trademark files in the United States Patent and Trademark Office, and responsible for managing the registration and maintenance of thousands of marks around the world.

IP Enforcement, Investigations, and Litigation

  • Lead anti-counterfeiting and grey market and parallel import investigations and enforcement campaigns nationwide.

  • Utilize court procedures to discover identity of users acting maliciously over the internet, and secure take down of infringing material.

Federal Litigation

  • Lead counsel in anti-counterfeiting and grey market enforcement campaign, on behalf of cosmetics company maker of high quality body creams, lotions and soaps. Obtain civil seizures, coordinate simultaneous raids, seize cash and business records, and achieve summary judgment and favorable settlements.
    Represented wedding accessories designer in suit for copyright infringement, false advertising and unfair competition against major department store, and achieved favorable settlement after discovery.

  • Represented maker of internet access equipment in lawsuit against publicly traded telecommunications company for trademark infringement and unfair competition, resolved on terms very favorable to client.

  • Tried trademark and copyright infringement case to verdict on behalf of plaintiff mattress manufacturer, resulting in million dollar verdict in favor of client.

  • Lead counsel in numerous Markman patent claim construction hearings.

  • Lead counsel in trademark opposition proceedings resulting in very favorable settlement for client including substantial monetary payment of nearly a million dollars.

  • Lead counsel in coordinated patent infringement cases nationwide on behalf of telecommunications company

  • Represented Campangolo, S.r.L., the world famous Italian manufacturer of bicycle components, in the successful defense of its CAMPY® trademark. Obtained summary judgment dismissing claims for trademark cancellation. Burkina Wear, Inc. v. Campagnolo, S.R.L., No. 07 CIV 3610, 2011 WL 70563 (S.D.N.Y. Jan. 7, 2011).

  • Acted as disclosed Rule 26 testifying expert in trademark infringement litigation, and provided written opinions and testimony concerning damages analysis and jury instructions.

  • Lead trial counsel and member of appellate team, representing Swiss watch maker Omega, S.A. in copyright infringement case against Costco Wholesale Corp. On the brief at the Ninth Circuit, which held in favor of Omega. On the brief at the US Supreme Court, to defend Costco’s appeal, which affirmed by an equally divided Court. Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982, 984 (9th Cir. 2008), aff’d by equally divided Court, 562 U.S. 40 (2010), abrogated by Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013).

  • Obtained summary judgment on the basis of acquiescence and laches in favor of client sued for trademark infringement by car maker Audi, A.G., and secured right to use 1–800–ALL–AUDI vanity telephone number and the phrase “Audi Used Parts.” Audi AG v. Shokan Coachworks, Inc., 592 F. Supp. 2d 246, 268 (N.D.N.Y. 2008).

  • Obtained injunction against former employee of manufacturer and importer of gloves, inserts, and other hair color accessories, from using misappropriated trade secrets, such as customer and vendor lists, glove and kit specifications, and rubber formulations. U.S.A. Corp. v. Ecogloves, Inc., No. 05 CIV. 9988 (SCR), 2006 WL 3302841 (S.D.N.Y. Jan. 31, 2006).

  • Secured judgment of more than $80 million dollars against Korean electronics manufacturer for breach of joint venture and manufacturing agreement on behalf of client in the United States District Court. Successfully enforced judgment through further action in Korea to recover funds in satisfaction of judgment. Northern District of Georgia.

  • Successfully tried copyright infringement case to jury verdict in favor of copyright owner, resulting in award of compensatory damages, and costs of the action. Eastern District of Tennessee.

  • Led successful nationwide patent enforcement campaign on behalf of leading multinational manufacturer of eyewear and owner of patent portfolio related to magnetic eyewear, resulting in numerous favorable decisions and settlements. Obtained favorable claim construction rulings resulting in summary judgment in favor of client, and, collectively, millions of dollars in judgments and settlement proceeds. New York, Nevada, California, Florida, Texas.

  • Successfully represent manufacturer of nail polish in trademark infringement action (case settled after jury selection). Eastern District of New York.

  • Won full reversal of conspiracy convictions in federal criminal prosecution related to cable television equipment, successfully arguing the federal district court committed plain error when it failed to instruct the jury properly concerning the buyer-seller relationship between the defendants. The government elected not to retry the defendant. United States v. Gee, 226 F.3d 885 (7th Cir. 2000).

Regulatory Compliance

  • Represent OTC aspirin manufacturer (ST. JOSEPHS®) in defense of advertising claims before National Advertising Division (NAD) of the Better Business Bureau (BBB).

IP Corporate and Transactional Support

  • Outside IP counsel for multinational beauty and personal care products company PDC Brands in US$1.425 billion acquisition by CVC Capital Partners.

  • Lead counsel for cosmetics company in successful transition from assembly and distribution center to turn-key supply chain, worldwide, concluding successful negotiations with key suppliers, vendors, manufacturers and facilities in key geographic regions around the world.

  • Represented mattress manufacturer in the sale of trademarks and other intellectual property to European multi-national corporation expanding into the United States.

Education

  • Western New England University School of Law, J.D., 1996

  • University of Rochester, B.A., 1992

  • Avon Old Farms School, 1988