JESS M. COLLEN

Partner. Jess Collen’s expertise in the field of trademark law has long been recognized. He has been active in IP practice for 25 years and highly involved in the profession, having acted in many capacities, including as a member of the Executive Committee and Board of Directors of the International Trademark Association.

Areas of Practice:
His areas of practice include Trademark, Copyright and Unfair Competition law, Federal Court litigation, and actions before the United States Trademark Office. His experience includes anti- counterfeiting, patent litigation, licensing, false advertising and misrepresentation, licensing, software protection and other related matters. Jess has been recognized as one of the “Top 50 Trademark Attorneys in the United States,” by the national legal and financial publication Trademark Insider. This marks at least the third time that he has received this distinction, twice having received “Top 10” Awards.

Industries:
Jess has represented clients patent in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as watchmaking, consumer electronics, high fashion, fashion eyewear, food, entertainment, software, and other industrial and consumer fields. He is presently counsel in a copyright infringement case argued before the Supreme Court of the United States in the fall of 2010.

Jess also heads the firm’s top-rated trademark opposition practice. Collen IP’s trademark office opposition practice placed in the top five law firms nationally, as measured by “opposition proceedings” commenced during 2009 before the three-judge panel at the U.S. Patent and Trademark Office, Trademark Trial and Appeal Board. These proceedings determine likelihood of confusion factors and related legal issues when trademarks of different owners are in question. (The survey was compiled by Towergate Software.)

He has frequently lectured on Intellectual Property Law issues both in the USA and abroad. Jess is a regularly sought-after speaker and panelist for continuing legal education programs which teach other lawyers new and recent developments in Intellectual Property law. He has published many articles involving various subject matters within his expertise, including a recent publication in a California bar journal on the topic of trademarks in Second Life and other Virtual Worlds, Intellectual Property in Virtual Worlds (2009) on law.com. Presentations and publications have included Italian-Canadian Chamber (Montreal), Consulegis (Vienna), INTA Panel Ethics in Trademark Litigation Discovery, “Negotiations: How to Settle Cases” (Westchester [NY] Bar Association), and Pace Law School CLE.

He has co-authored the updated 320 page Copyright treatment in the multi-volume treatise Business Organizations with Tax Planning (published by LexisNexis/Matthew Bender).

His pro bono work includes the American Eagle Foundation, the German American Steuben Parade, PATH Public Advocates Together for Health, and the United States Navy League.

Jess is also a co-founder of Life Project for Africa, Inc., based in New York, supporting the building of hospitals, education, orphan relief and fresh water drilling in impoverished and underserved regions of Tanzania. He currently serves on the Board and as Executive Director.

Professional Associations:

- International Trademark Association (INTA)

• INTA Board of Directors. INTA is the world’s preeminent association dedicated to the support and advancement of trademarks and related intellectual property. Comprising 6,000 trademark professionals, from more than 190 countries, meeting with heads of national trademark office, international World Intellectual Property Office (WIPO) in Geneva, and meetings with senior legislators and staff in Washington to promote the Association’s legislative and policy agendas.
• Served consecutive terms on the Executive Committee of the INTA Board of Directors, where responsibilities included review of association Amicus briefs.
• Served four years on the USPTO Trademark Office Practices Committee. Worked collaboratively with Commissioner of Trademarks and trademark Office leadership on rule implementation and legislation.
• Currently serves on the U.S. Legislative Analysis Committee, which also interfaces with USPTO issues and reviews, drafts and recommends IP, and particularly Trademark legislation, including domestic law and treaty implementation, and has proposed both rule and legislation changes.
• Past Chair, Planning Committee and co-author of. Association’s Strategic Plan.
• Chair/Committee Member of numerous committees, subcommittees and task forces - 1987 to present

- Association of the Bar of the City of New York (New York City Bar Association) (Since 1985)

• Past member, Trademark Committee, Program Co Chair

- L.E.S. Licensing Executive Society (since 1986)

- AIPPI Association Internatonaile pour la Protection de la Propriete Intellectuelle International Association for the Protection of Intellectual Property

- CONSULEGIS – worldwide consortium of commercial law firms comprising more than 1500 lawyers. Member, Intellectual Property committee and Business Government Committee

EXPERT WITNESS in trademark infringement actions, U.S. District court.

He was also appointed to the UNITED STATES DEPARTMENT OF COMMERCE DISTRICT EXPORT COUNCIL for the New York City Region, where he served for many years in this group formed by the U.S. government to encourage private export trade.

Jess was educated at Western New England University School of Law, where he received his Juris Doctor, and Boston College, where he received his Bachelor of Arts and graduated Magna Cum Laude.

Court Admissions

States

Massachusetts

New York

Federal District Courts

Including:

Southern District of New York

Eastern District of New York

Northern District of New York

District of Massachusetts

Circuit Courts of Appeals

Federal Circuit

Second Circuit

Jess also been admitted to practice on a case-by-case basis in countless federal District and Appellate courts throughout the United States (Pro Hac Vice).

Both prior to and for many years during his legal career, Jess was a business owner. For his story, and to read more about how his business experience shaped his legal career, click here.

Click to hear Mr. Collen speak about advocacy techniques in a recent International Trademark Association (INTA) video.

Click to hear Mr. Collen  - Continuing Business Education Training , by SMARTPROS ®

We use the word 'Partner' to refer to a shareholder or member of the PC, or an employee or consultant with equivalent standing and qualifications.