Firm News
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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
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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 |
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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 |
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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. |
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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. |
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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.
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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. |
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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. |
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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. |
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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. |
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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. |
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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). |
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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.
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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. |
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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. |
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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.
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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. |
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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. |
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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." |
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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 |
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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. |
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