Dora M. Peñagarícano

Dora PeñagaricanoDora M. Peñagarícano será una de las participantes invitadas a la conferencia organizada por Microjuris.com y la Federación Interamericana de Abogados «Cuba: Inversión, Comercio y Garantías Financieras» el 4 y 5 de noviembre de 2015. Haz clic aquí para matricularte.

Dora M. Peñagarícano concentrates her practice in intellectual property and commercial litigation cases. Ms. Peñagarícano was part of the State Department Committee that drafted the new Trademarks Act of Puerto Rico and the Regulation for the Registration of Trademarks in Puerto Rico. She was the President of the Intellectual Property Committee of the PR Bar Association and, under her presidency, the Committee drafted the Right of Publicity bill, the Trade Secrets bill, and the Moral Rights bill which were signed into law between 2011 and 2012.

Ms. Peñagarícano won a landmark case in 1998, garnering a permanent injunction against a company illegally using the name of former Miss Universe Dayanara Torres in the first “right of publicity” action brought in federal court in Puerto Rico.

In 2000, she won a precedent setting case in the First Circuit Court of Appeals for The Clorox Company in which the Appeals Court reversed the dismissal of a Lanham Act false advertising action brought by Clorox against Procter & Gamble. This decision, The Clorox Company Puerto Rico v. The Procter & Gamble Commercial Company, 228 F.3d 24 (1st Cir. Oct. 3, 2000), was the first false advertising case decided in the First Circuit.

In 2001, Ms. Peñagarícano filed the first case before the federal court of Puerto Rico under the Anticybersquatting Consumer Protection Act and obtained from the defendant the domain name of her client. That year, she also successfully defended against a claim of trademark infringement for her client, PGD, Inc., involving the name of a generic drug in the case Doral Pharmamedics v. PGD, 148 F. Supp. 2d 127 (D.P.R. 2001).

In 2004, Ms. Peñagarícano was part of the legal team that obtained an injunction in favor of McNeil and against Merisant ordering the withdrawal from the Puerto Rico market of the yellow artificial sweetener product SAME, since its trade dress was a copy of the trade dress of the SPLENDA artificial sweetener product.

She litigated the first “right-of-publicity” case brought in state court in Puerto Rico in which, in 2009, the Supreme Court of Puerto Rico established the rights of the parties. In 2009, she also obtained an ex-parte TRO and seizure order in a jewelry copyright infringement case. In 2011, she obtained an ex-parte TRO and seizure order in the Britto counterfeit, trademark and copyright infringement case against 177 defendants. In 2011 and 2012, she presented claims against various stores for selling shoes in violation of the design patents of her client Creative Recreation. In 2012, she also presented claims against various stores for selling gray goods in Puerto Rico.

In 2013, Ms. Peñagarícano obtained an ex-parte TRO and seizure order in the TOUS counterfeit, trademark and copyright infringement case against 177 defendants. In 2014, she obtained a Judgment from the Supreme Court dismissing 93 DACO penalties issued to Toys R Us. In 2014, she also obtained a Judgment from the United States District Court for the District of Puerto Rico holding that plaintiff, an ex-employee of her client Church’s, was not the owner of the PechuSandwich trademark and holding that such ex-employee did not have copyrights over the PechuSandwich recipe –since recipes are not subject to copyright protection. In 2015, this Judgment was affirmed by the First Circuit Court of Appeals. In 2015, she also obtained an ex-parte TRO and seizure order in the Nicole Lee copyright infringement case against Novus.

In addition, she has successfully litigated intellectual property claims for such clients as Kraft Foods, Gillette, Clorox, Shell, Carvajal, S.A., Century 21, Wells Fargo, Vitamin World, Mattel, JWT, McNeil, PGD, ConAgra, Cajun Operating Company (Church’s), Aggreko, Pernod Ricard, Kabushiki Kaisha Pilot, Danone, Quest Beads & Cast, Nobox Marketing Group, Ponte Fresco, Gymboree, Pottery Barn, Elba Jewelers (Sophia Fiori), and others.

She has been an active member of the International Trademark Association (INTA) for many years, and member of its Sub-Committee on Legislation in Latin America, and its Sub-Committee on Trade Dress. Ms. Peñagarícano has been a speaker in many Intellectual Property seminars and conferences in Puerto Rico and in the United States.
She is ranked as one of Puerto Rico’s Leading Attorneys in the Intellectual Property field by the renowned international publication Chambers & Partners in its Latin America Guide and was recently selected by her peers for inclusion in The Best Lawyers in Puerto Rico 2016 in the Intellectual Property Law field.

Before joining McConnell Valdés, she was a Law Clerk to the Hon. Wilfredo Alicea López, the Hon. Pedro López Oliver, and to the Hon. Arnaldo López Rodríguez, Extraordinary Writs Section of the Superior Court of Puerto Rico.

EDUCATION

B.A., Cum Laude, Georgetown University
J.D., Magna Cum Laude, University of Puerto Rico Law School

BAR ADMISSIONS

Commonwealth of Puerto Rico
U.S. District Court District of Puerto Rico
U.S. Court of Appeals 1st Circuit
U.S. Supreme Court

CLERKSHIPS

Law clerk to the Hon. Wilfredo Alicea López, Extraordinary Writs Section of the Superior Court of Puerto Rico
Law clerk to the Hon. Pedro López Oliver, Extraordinary Writs Section of the Superior Court of Puerto Rico
Law clerk to the Hon. Arnaldo López Rodríguez, Extraordinary Writs Section of the Superior Court of Puerto Rico

MEMBERSHIPS

Puerto Rico Bar Association, Federal Bar Association, International Trademark Association (INTA)

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