WELCOME TO COLLENLAW.COM
Contact | Home | Directions

 

Firm News    

 

 

 

 


 

Collen IP Cases Referenced Throughout International Trademark Association Annual Conference Ossining, NY, June 1, 2011 – Collen IP Intellectual Property Law, P.C., a leading intellectual property law firm, had its presence felt throughout the annual International Trademark Association (INTA) conference in San Francisco. In addition to having several attorneys in attendance, leading table-topic discussions and participating in committee meetings, several of the firm’s high-profile cases were referenced during presentations, meetings and receptions.

Omega v. Costco

Five months after the split decision by the United States Supreme Court affirmed the position argued by the Collen IP -directed legal team in favor of its client Omega, the case continues to attract attention. The presenters at the Fashion and Design Protection Seminar focused on the case, displaying it on a jumbo screen while discussing the issues and results. Not only were the case specifics prominently displayed, but Collen IP attorneys were sought out by other attorneys interested in adopting similar strategies for their clients.

The Supreme Court found that the first sale doctrine does not apply to goods manufactured and sold abroad, which allows U.S. copyright holders to maintain and enforce their rights in the U.S. to distribute and control the importation of works manufactured and sold abroad.

Balenciaga v. Steve Madden

Another hot topic at the Fashion and Design Protection Seminar was Balenciaga v. Steve Madden, a Collen IP case that is currently pending in the Eastern District of New York. Balenciaga had created fancy and colorful shoes, playfully nicknamed LEGO shoes, which received a lot of attention and were worn by Beyonce during a televised performance. Soon after, Steve Madden came out with its Bukled shoe. Collen IP brought suit for copyright and trade dress infringement, claiming that Madden’s shoes were knockoffs of Balenciaga’s.

Collen IP is a premier intellectual property law firm that represents domestic and international clients, from multi-national luxury goods makers and entertainment industry leaders, to start-up technology ventures and local businesses.

Kyle-Beth Hilfer Joins Collen IP Of Counsel

Collen IP is proud to announce that Kyle-Beth Hilfer has assumed an of Counsel position with the Firm, effective November, 2010.

Ms. Hilfer holds a B.A. from Yale College (summa cum laude, Phi Beta Kappa) and a Juris Doctor from Harvard Law School (cum laude). Ms. Hilfer specializes in advertising, marketing, and intellectual property law. She has practiced in both large firm environments and independent private practice. With more than twenty years’ experience, her practice is focused on advertising and marketing campaigns, including regulatory compliance, review of copy and claim substantiation, comparative advertising claims, advertising aimed at children and direct marketing development including catalog review and telephonic solicitations. In the area of promotional campaigns, Ms. Hilfer stays abreast of the maze of regulations in 50 states. She routinely advises clients on all aspects of sweepstakes, contests, loyalty programs, instant win games, incentives, coupons and rebates. She also advises on specific marketing techniques, such as negative option and advance consent marketing.

Ms. Hilfer is conversant in all aspects of social media and mobile marketing and frequently advises clients on how to use traditional advertising and marketing applications in these new media platforms. Accordingly, she has up to date knowledge of user generated content, behavioral advertising, and privacy issues. Furthermore, she advises clients about how to protect their intellectual property and brand when using these new technologies. Ms. Hilfer is adept at drafting social media engagement policies, tailored to the business needs of clients.

In addition, Ms. Hilfer is an experienced neutral for the American Arbitration Association (AAA) and is experienced with large, complex cases. She has heard cases in a broad range of industries: advertising, electronic retailing, intellectual property, publishing, public relations, talent management, sports management, event management, entertainment, infomercials, and art. Ms. Hilfer is also a member of the City of New York Office of Administrative Trials and Hearings Contract Dispute Resolution Board.

Ms. Hilfer currently serves in the Intellectual Property and Alternate Dispute Resolution Sections of the Westchester County Bar Association. She is a guest blogger for the Global Strategic Management Institute’s social media blog, and she has been quoted by the media as an expert on social media and advertising law issues. In addition, since 1998, she has served on the Board of Editors for The Intellectual Property Strategist, an American Law Media publication

 

^ Top

Affirmed: Supreme Court Upholds Limitation of U.S. First Sale Doctrine in Favor of Omega
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit’s decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the full story at: http://www.collenip.com/costcoomega

^ Top

The oral arguments for Costco Wholesale Corp. v. Omega S.A. will be heard by the Supreme Court on November 8, 2010
November 2010 - The U.S. Supreme Court is being asked to decide whether to uphold the Ninth Circuit’s decision that the first sale provision under 17 U.S.C. § 109 is inapplicable to copyrighted works that are manufactured and sold abroad in the context of a copyright infringement action under 17 U.S.C. § 602(a) for infringing importation. Read the fact sheet, history and case documents and more about Collen IP’s activity in this historic matter: http://www.collenip.com/costcoomega

^ Top

Collen IP's Jess Collen Interviewed by Westchester Business Journal
June 2010 - Collen IP founder Jess M. Collen describes to reporter John Golden for the Westchester County Business Journal current trends in U.S. and international intellectual property rights enforcement. Read the full article on the Westchester County Business Journal web site  Download the article as it appeared in the June 14, 2010 edition of the Westchester County Business Journal.

^ Top

Collen IP Named Largest Intellectual Property Firm in Westchester County by Newspaper
July 15, 2010 - According to the 2010 Law Firms List in the “Westchester County Business Journal”, Collen IP is the largest IP firm in Westchester County, NY. The “Westchester County Business Journal” also named Collen IP among the 15 largest law firms in the county overall.

^ Top

Collen IP's Founding Partner Named Among Top 50 U.S. Trademark Attorneys
July 2010 – Jess M. Collen, founding partner of Collen IP, has been ranked number 13 in the Trademark Insider’s annual list. This is the third year in a row that Mr. Collen has been named in the Top 50 in this publication. Since Trademark Insider’s list was published, Mr. Collen has been featured in several articles which highlight his accomplishments.
Read the full article on the Westchester County Association web site. Download the article as it appeared in the Gazette.

^ Top

Collen IP Named in Top 5 Law Firms
June 2010 – According to a survey in Towergate Software, Collen IP is the fifth most productive IP firm in the nation, recorded by the number of oppositions filed with the United States Patent and Trademark Office (USPTO) in 2009.
Read the article as it appeared on the Towergate Software web site.

^ Top

Collen IP is pleased to welcome Summer Law Clerks!
June 30, 2010 - Sara Yood just completed her second year at Fordham University School of Law, where she is the Symposium Editor for the Intellectual Property, Media and Entertainment Law Journal as well as a member of the Moot Court Board. Prior to attending law school, Sara worked in music licensing for four years. She is an active member of the Copyright Society of the USA, Farm to Fordham (Fordham Law’s eco-focused student group which is growing vegetables on the roof of the school), and is a writer and director of Fordham Follies, the law school’s parody musical.

Margaret McInerney is entering her third-year at Fordham University School of Law. She is the Managing Editor of Fordham’s Intellectual Property, Media and Entertainment Law Journal and an Associate Editor on Fordham’s Moot Court Board. She is currently working on her student note regarding the transfer of tacit knowledge through patent law. Prior to attending law school, Margaret worked as an energy consultant in Washington, DC and received her U.S. Green Building Council LEED® Accreditation. Margaret graduated from the University of Virginia with a Bachelor of Science degree in Civil Engineering, where she conducted research on run-of-the-river hydroelectricity.

^ Top

David Ewen was admitted to the New York State Bar in a ceremony with his peers
June 23, 2010 - Collen IP is proud to join New York State in welcoming David to the Bar and has high hopes for his accomplishments.

^ Top

Collen IP's Newest Attorney, David Ewen
September, 2009 - David Ewen works both in the firm’s litigation department, on a variety of matters, including anti-counterfeiting and gray market litigation, as well as in protection of rights in trademarks, and proceedings before the United States Patent and Trademark Office, including trademark oppositions and cancellations. He also is involved in licensing and other issues regarding use and protection of all forms of intellectual property rights.

Mr. Ewen is a graduate of Vassar College, where he earned a Bachelor of Arts degree in History, with a minor in Latin. David received his Juris Doctor from the University of Connecticut School of Law, where he served as Articles Editor for the Connecticut Public Interest Law Journal. He was also awarded first prize by the American Society of Composers, Authors and Publishers (ASCAP) at the law school’s Nathan Burkan Memorial Competition, for his paper on copyright law entitled: A New Chapter for the Library Project: Google’s Fair Use Defense Before and After Settlement.

Prior to attending law school, David began his career as an intellectual property paralegal at Collen IP, and also worked on a range of Intellectual Property law issues at the firm as a law clerk during his final year of law school.

David is admitted to the Connecticut state bar and he has been approved for admission to the New York state bar.

^ Top

10 Years in the Making
October 2009 - Collen IP enthusiastically celebrated ten years of service for three of its valued team members last month. The anniversary was marked by a firm wide waffle and topping breakfast and Champagne toast to all three - Linda Cimillo, Mariana Cana and Mary Lou Wheeler. Linda is the firm’s head of accounting and billing, Mariana is the firm’s Trademark Department manager and Mary Lou is a valued administrator and legal assistant.

^ Top

Litigator Joshua Paul Joins Collen IP
Joshua Paul has joined Collen IP as Of Counsel. Joshua is an experienced litigator and trial attorney. He represents clients in trademark, copyright, trade secret and general business disputes. Joshua is active in professional associations and organized bar groups. He has chaired American Bar Association committees on the trademark counterfeiting statute and on trademark litigation, and has served on the editorial board of The Trademark Reporter published by the International Trademark Association.

In 2007, Joshua was elected a Fellow of the American Bar Foundation in recognition of his leadership and contribution to the legal profession. Membership in the Fellows is limited to one third of one percent of all attorneys licensed to practice in a given State. He also has been selected for inclusion in New York Super Lawyers – Metro Edition (2007, 2008), published as a supplement in the New York Times Magazine.

Joshua is a graduate of Yale College (1981) and Northwestern University School of Law (1984).

^ Top

Jeffrey A. Lindenbaum Assumes Partnership Level Position

May 2008 - Collen IP is proud to announce that Jeffrey A. Lindenbaum has assumed a partnership level position in the firm, effective May 1, 2008.

Having been a member of the International Trademark Association and the Intellectual Property Law Section of the New York State Bar Association, Mr. Lindenbaum focuses on litigation including obtaining and defending injunctions, internet disputes, trademark misuse, and ex parte seizures of counterfeit products. Mr. Lindenbaum has appeared and argued patent, trademark and copyright matters in Federal District Courts in New York, Michigan, Nevada and Florida. He also has extensive experience before the United States Trademark Trial and Appeal Board.

Mr. Lindenbaum received his Bachelor of Arts Degree from Binghamton University and his Juris Doctorate Degree from University at Buffalo Law School. Jeff is admitted to practice in the State of New York as well as the Southern, Eastern, Western and Northern Districts of New York, the Eastern District of Michigan and the Court of Appeals for the Federal Circuit.

^ Top

Thomas P. Gulick Assumes Senior Associate Level Position

May 2008 - Collen IP is proud to announce that Thomas P. Gulick has assumed a senior associate level position in the firm, effective May 1, 2008.

Mr. Gulick’s work entails the prosecution of copyright and trademark applications. Tom has counseled both international and domestic clients in matters pertaining to copyright infringement, trade secrets, arbitration, mediation, domain name disputes and other intellectual property matters. In addition, Tom has overseen and coordinated many oppositions both in the United States and internationally and is experienced with U.S. Customs seizures. He has filed appeals with the Copyright Office Board of Review, petitions to cancel copyright registrations with the Copyright Office and is actively involved in trademark and copyright litigations including depositions and appeals in federal courts.

Mr. Gulick received his Bachelor of Arts Degree from Boston College in Communications and his Juris Doctorate Degree from Wake Forest University. During law school, as an intern for the City of Philadelphia Law Department (Intellectual Property Unit) he worked on trademark and copyright infringement disputes, as well as domain name issues. While at Wake Forest University, Mr. Gulick was an editor for the Wake Forest University Intellectual Property Journal. In addition, he worked extensively in administrative law and the notice and comment rulemaking process of the General Service Administration of the U.S. Government.

Tom is admitted to practice in Massachusetts, New Jersey and New York. He is also admitted in the Southern District of New York, the Eastern District of New York and the Ninth Circuit.

^ Top

Donald J. Ranft Assumes Partnership Level Position

April 2005 - Collen IP is proud to announce that Donald J. Ranft has assumed a partnership level position in the firm, effective March 30, 2005.

Having been registered to practice before the United States Patent and Trademark Office (Reg No. 53,510), Mr. Ranft focuses on the prosecution and enforcement of patent rights in both the Patent Office and Federal Courts of the United States. Don actively manages the firm’s domestic and foreign patent practice from invention development, through application filing and issuance, and the subsequent protection of intellectual property rights through licensing, and in the courts.

In addition to his legal experience, Don held positions in a number of industries including the chemical, utility, nuclear power, and transportation sectors. He has an extensive engineering background, and experience managing engineering facilities and personnel in these industries. A longstanding, active member of the Institute of Electrical and Electronic Engineers (IEEE) and the American Nuclear Society, he has been responsible for developing numerous IEEE standards.

Mr. Ranft received his Bachelor of Science Degree in Electrical Engineering from New Jersey Institute of Technology, and his Juris Doctorate Degree from Seton Hall University. Don is a member of the New Jersey State Bar and admitted to practice before the U.S. District Court for the District of New Jersey.

^ Top

Collen IP Hosts an Emerging Issues Seminar at Pace University Law School Continuing Legal Education

October 2004 - Jane F. Collen assembled and chaired a seminar at Pace University on Wednesday, October 6, 2004. The topic was emerging issues in intellectual property. At the seminar, a panel of experts discussed the many issues and aspects of counterfeiting trademarked goods.

Beginning this seminar with a quick overview of recent issues that have emerged through the Appeals Court decisions, Jane Collen reviewed and commented on the Ninth Circuit Decision on the sale of trademarks as keywords by search engines. The 9th Circuit recently held that the sale of trademarks by search engines as key words to competitors of the trademark owner is trademark infringement when the banner ads which appear to the Internet user along with the results of their search are not clearly labeled as to the source or sponsor of the ad. Mrs. Collen also discussed the recent decision holding makers of peer-to-peer file sharing software do not contributorily or vicariously infringe copyright law.

An accountant from Deloitte & Touche, Yogesh Bahl, began the presentation on counterfeiting by briefly outlining its traditional forms. Mr. Bahl discussed his experience in measuring the devaluation of brands caused by counterfeiting. Bringing to the table his experience in investigating counterfeiting, determining the roots of problems, and the effect that it has on the brand, Mr. Bahl outlined the many ways to evaluate the marketplace and the effect of counterfeiting on the international market.

The focus of the discussion then turned to the new market for counterfeit goods, the Internet. Jess M. Collen, co-founder and partner at Collen IP, led the discussion of the “replica” industry and its effect on trademarks and brands around the world. He also took the seminar through the practical aspects of filing a counterfeiting lawsuit, and outlined the many steps necessary and the documentation required in order to prevail in court.

Then, John Bergen, Chief Trademark and Copyright Counsel at Avon Products, Inc., further illustrated the problem of counterfeiting, and its ramifications around the world. Mr. Bergen’s experience in trying to protect the Duracell brand, during his years at Union Carbide, as Chief Trademark and Copyright Counsel, demonstrated the way counterfeiters can capitalize on the markets in different countries through their knowledge of and infiltration of the manufacturing and distribution chain of the brand owner.

A videotape of the seminar is available through the Pace Continuing Legal Education Foundation, either by calling Pace University or through their web site.
 

^ Top

Collen IP Ranked #91 on NameProtect's Trademark Insider

December 2003 - Collen IP ranked as one of the top one hundred trademark law firms in the United States in Trademark Insider for 2003, in the third quarter. Attorney Jess M. Collen was also ranked number 13 of America's Top Trademark Attorneys.

^ Top

Collen IP Trademark Award Winner for Year 2002

April 2003 – Jess M. Collen, a founding partner of Collen IP Intellectual Property Law PC, is a NameProtect Trademark Insider Award recipient for the year 2002, ranking among the nation’s top 10 trademark attorneys. These annual awards are granted by NameProtect to leading trademark attorneys and law firms on a national basis, as recognized in NameProtect’s latest edition of its quarterly NameProtect Trademark Insider™ report. The report provides the general business and legal industries with insight into trademark filing and trademark industry activities.

Further, the firm Collen IP was again ranked among the nation’s top 100 firms in 2002 trademark office activity and in the top 10 among all U.S. firms of 20 lawyers or less for the second consecutive year.

The Trademark Insider Award is granted to those attorneys and law firms that filed the most number of new trademark applications with United States Patent and Trademark Office during calendar year 2002.

This news was also reported in Westchester County Business Journal.

^ Top

Collen IP Announces Affiliation with the Boston Area Law Firm Daly, Crowley & Mofford

March 2003 - Collen IP is pleased to announce that effective March 1, 2003, we have entered into an affiliation with the Boston area law firm Daly, Crowley & Mofford. The firms will enjoy the combined resources of over 20 intellectual property attorneys with well-recognized skills in all areas of intellectual property law, including patent and trademark prosecution, a nationwide IP litigation practice, and IP management and counseling services. "We are thrilled to add the expertise of Daly, Crowley & Mofford", says Jess Collen. "Their strongly focused patent prosecution team is the perfect compliment to our own strengths in IP litigation, trademark and copyright prosecution and counseling. This affiliation was facilitated by the fact that Daly, Crowley & Mofford are people who combine great skill with great character. We are enthusiastically looking forward to providing the superior level of service to all of our national and international clients that this affiliation will afford."

^ Top

Collen IP Leads CLE Program on Intellectual Property Law

January 2003 - Partners Jane F. Collen and Jess M. Collen were key speakers at a recent continuing legal education program in New York on intellectual property and litigation that focused on the development, procurement and enforcement of brands and trademarks. Jane F. Collen coordinated and moderated the event, at which Jess M. Collen spoke on trademark law and the essentials of prosecution before the U.S. Patent and Trademark Office and litigation. The practical aspects of enforcement of intellectual properties on the Internet, as well as jurisdictional issues, including emerging law concerning cyber activities and trademark infringement over the Internet, were also discussed by the partners. Rounding out the panel, the Honorable Colleen McMahon, United States District Judge for the Southern District of New York, provided a most enlightening “view from the bench”. The event was very well attended and well received in the community

^ Top

Collen IP is a full-service intellectual property law firm and consultancy that specializes in all phases of IP law, including trademarks, copyright, patents, and internet/e-commerce issues. Collen IP’s litigation department litigates intellectual property cases throughout the country and in international tribunals on behalf of its domestic and global clients. For further information, please contact us.

   
 
   
   

Copyright © 2009 - 2011  Collen IP - Intellectual Property Law, All Rights Reserved (914) 941-5668

Legal Policy | Privacy Policy | Site Map

S