Jess M. Collen

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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. He is also a featured Forbes.com contributor, whose blog, What's Your Trademark?, focuses on all aspects of intellectual property.

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. Mr. Collen 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:

Mr. Collen 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.

Mr. Collen 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. Collen IP has been top ranked for the past three years. (The survey was compiled by Towergate Software.)

Court Admissions

  • States
    • Massachusetts
    • New York
  • Federal District Courts
    • 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

Publications and Speaking Engagements

  • Western New England Law Review, The Evolving Threat and Enforcement of Replica Goods (2011)
  • 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
  • Italian-Canadian Chamber (Montreal)
  • Consulegis (Vienna)
  • INTA Panel Ethics in Trademark Litigation Discovery
  • “Negotiations: How to Settle Cases” (Westchester [NY] Bar Association)
  • Pace Law School CLE 
  • Co-authored the updated 320 page Copyright treatment in the multi-volume treatise Business Organizations with Tax Planning (published by LexisNexis/Matthew Bender).

Pro Bono

  • The American Eagle Foundation
  • The German American Steuben Parade
  • PATH Public Advocates Together for Health
  • The United States Navy League.

Mr. Collen 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.

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

 

Representative Engagements:

  • ICE WATCH & Watch Design opp 85043814 Swatch AG (Swatch SA)(Swatch Ltd) v TKS S.A. (2011)
  • The Swatch Group Management Services Ltd. v. Bloomberg L.P. (2011)
  • Umami Cafe, Inc. v. Umami Burger (2011)
  • Solid 21, Inc. v. The Swatch Group U.S. Inc. et al (2011)
  • DSPA.NL B.V. et al v. ARA Safety Inc. et al (2010)
  • METALSKIN opp. 91194993 Swatch AG v. APAJ Holdings LLC (2010)
  • CHAMPION cancel 92052370 Beharry v AFN Broker LLC (2010)
  • BETTY RIDES opp 91191556 Archie Comic Publications v Betty Rides Inc (2009)
  • FIT cancel 92050774 ARA Safety Inc ARA Safety (US) Inc v Flame Guard Nijmegen BV (2009)
  • Edward B. Beharry & Co., Ltd. v. Bedessee Imports Inc. et al (2009)
  • Balenciaga Corporation v. Steve Madden, Ltd (2009)
  • SHETLAND SALMON NATURAL CHOICE 92049440 Framgord, Ltd v Martin International Corporation (2008)
  • YSC opp 91182016 LGI v Shenzhen Shenchuang Electrical Appliance Co., Ltd. (2008)
  • Aspex Eyewear, Inc. et al v. Clariti Eyewear, Inc. (2007)
  • Audi AG et al v. Shokan Coachworks, Inc. et al (2007)
  • Burkina Wear, Inc. v. Campagnolo, S.R.L. (2007)
  • Collen IP, Intellectual Property Law, P.C. v. American Bar Association (2007)
  • Maax Spas (Arizona), Inc. v. Hydropool Industries Inc. (2007)
  • Omega, S.A. et al v. Susan Eisen, Inc. (2007)
  • The Swatch Group (U.S.) Inc. et al v. New Tang Dynasty TV (NTDTV) (2007)
  • Swatch S.A., et al v. New City Inc. (2006)
  • Optovision Technology Inc v. Vision Optics Technologies LTD (2006)
  • Smartpros, LTD. v. Bisk Education, Inc. (2006)
  • Morinaga v Crown Confectionary 91171726 (78615145) MYCHEW opp (2006)
  • Dayhoff v GREAT JUICE opp 91173749 (75588742 JUST JUICE) (2006)
  • JUST JUICE opp 91172666 (Smucker Natural Foods, Inc. v The Great Juice Company) (2006)
  • ULTRA/BOND opp 91170215 (Bostik v Mapei) (2006)
  • Addvisual, Inc. v. Airvisual, Inc. et al (2005)
  • Avio-Diepen Holding B.V. v. AD Holdings, PLC et al (2005)
  • Exxon Mobil Corporation v. Dexxon Digital Storage Inc et al (2005)
  • Fifty-Six Hope Road music, LTD., etal VS Mayah Collections, Inc., et al (2005)
  • Omega SA et al v. Costco Wholesale Corporation (2004)
  • Omega, S.A. 96 rue Stampfli Bienne Switzerland et al v. 192 Broadway Jewelry Inc. (2004)
  • Creme Glacee Ital Gelati Inc v. Italgel Incorporated (2004)
  • Honeywell International Inc. et al v. Trolex Corporation et al (2004)
  • BROADARROW opp.  91158655 (Omega v. Platts) (2003)
  • Melwani v. Singh et al (2004)
  • Biella Collezioni v. Standard Merchandise (2003)
  • Advanced Comfort, In, et al v. Atlantis Medical, Inc (2002)
  • Loris Azzaro, B.V. v. Del Laboratories, Inc. (2002)
  • ETA Fabrique v. TCJC, Inc. (2002)
  • Omega S.A. et al v. RHS Products, Inc. (2002)
  • Omega S.A., et al v. A&E Creations, Inc. (2001)
  • Aspex Eyewear Inc, et al v. BLM&D, Inc., et al (2000)
  • Barkley Internationa v. New Gal Network, Inc (2000)
  • Aspex Eyewear Inc, et al v. Elite Optik Inc (1998)
  • Aspex Eyewear Inc v. Jonathan Cate Eye, et al (1998)
  • Omega Engineering v. Omega, SA (1998)
  • Dewhurst v. Swatch Group Ltd, et al (1999)
  • Eagles, Ltd, et al v. Eagles Foundation (1998)
  • Frederick Atkins v. J.C. Penney Company (1997)
  • Littleton Industrial v. Garth S.Ryan & Assoc, et al (1996)
  • Rado Watch, et al v. Timestar (1996)
  • Wisconsin, State of v. Fromageries Bel, Inc (1995)
  • Foods of All Nations v. Burchard Food Enter, et al (1995)
  • Davidov, et al v. Elf Sanofi S.A., et al (1994)
  • Wiest, et al v. Storz GMBH, et al (1993)
  • Anheuser-Busch, Inc. v. Riley, et al (1993)
  • Swatch, S.A. 94, et al v. Charlex Time (1992)
  • Swatch, S.A., et al v. Ballanda Corporation, et al (1992)
  • Swatch, S.A., et al v. Visage Marketing, In, et al (1991)
  • Omega S.A. v. Romanson Time Inc. (1991)
  • Shiah Yih Industries v. Mirtex Trading Corp. (1990)
  • Mattel, Inc. v. Securenet Info. Servs. & 2857111 Can., Inc.
  • Omega SA v. Giftland Co.

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

Click to read Collen IP’s blog, Brands in SM, focusing on how brands are using the various social mediums to speak directly with their target audience.

Click to read Mr. Collen’s weekly blog featured on Forbes.com, What’s Your Trademark?, focusing on all aspects of intellectual property.

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 ®