"Jess and his team have helped us immensely in the areas of enforcement and international trademark protection. They have handled major litigation for us efficiently and within budget, and are a pleasure to work with.”
- Michael Hermann, Director of Licensing, The Andy Warhol Foundation

Overview

For organizations including professional sports teams, nonprofits, a wide variety of luxury brands, and media clients, Jess Collen provides guidance, counsel, and advocacy on trademarks and brand protection, copyrights, social media, and all aspects of intellectual property protection, enforcement, and monetization. He has litigated hundreds of cases for U.S. and foreign clients in the federal trial courts, courts of appeal, administrative tribunals, and even the U.S. Supreme Court. Few U.S. trademark lawyers have handled as many trademark office registrations and Trademark Trial and Appeal Board (TTAB) cases as Jess. With over 35 years of experience, and client relationships measured in decades, he brings strategic thinking, professionalism, and continuity to the development and management of what are often a company’s most valuable asset: its brands.

Jess is also highly involved in the IP professional community in many capacities. He’s a member of the Executive Committee and Board of Directors of the International Trademark Association (INTA), as well as a featured Forbes.com contributor. “What’s Your Trademark?”, his ongoing commentary, focuses on current intellectual property trends. Jess practices out of the firm's New York and Boston offices.

Exceptionally experienced at putting a client’s case in the strongest possible light, Jess is skilled at creating optimal conditions for resolution, settlement, and if necessary, success in court. His knowledge and experience brings to these disputes an early and keen sense of where a conflict is headed, and how to leverage that information for a successful outcome.  

His extensive experience in anti-counterfeiting has led to important and precedent-setting court rulings for his luxury brand clients. These have included successful seizures of and injunctions against counterfeit goods, and long-running enforcement partnerships with U.S. Customs and law enforcement.

Countless clients have protected their copyrights and have successfully litigated important copyright cases with Jess’s help. They have been in diverse industries involving publications, photographs, design features of watch cases, and fabric designs. Jess has also represented clients in numerous utility and design patent disputes.

Over decades of practice, Jess has developed close, trusted working relationships with lawyers and associated law firms all over the world. This enables him to effectively represent clients in every part of the globe. He has devoted considerable time and effort to maintaining and enhancing these ties, frequently traveling, meeting, and speaking outside of the U.S. and overseas. To Jess, it is vitally important to understand the challenges clients face and to communicate with them clearly.

Finally, and perhaps most importantly, Jess brings a boundless loyalty to his clients. As a successful business owner and entrepreneur, he excels at both understanding his clients’ corporate needs and knowing how to integrate that knowledge into an effective, long-term strategy.

Experience

Levi Strauss & Co. v Yves Saint Laurent tab design litigation, Case No. 3:18-cv-06977, represented defendant Yves Saint Laurent in trademark and trade dress matter.

V-Label v. Wholesome, et al. (19-CV-20826) SDFL, represented plaintiff in trademark matter.

Zinus, Inc. v Classic Brands, LLC 2:19-cv-05455 USDC CD-CA Western Division, represented defendant in patent infringement matter.

Car-Freshner Corp. & Julius Sämann Ltd v Balenciaga America, SDNY, represented defendant Balenciaga in trademark and trade dress matter.

Yves Saint Laurent v Steve Madden, represented plaintiff Yves Saint Laurent in design patent and trademark matter.

Fromageries Bel v Emmi Roth USA, 18-cv-7217 USDC-ND ILL, represented plaintiff Fromageries Bel in trademark and trade dress matter.

Scotch & Soda B.V. v Famous Photos/Russell Taylor, 1:17-cv-04561, represented plaintiff Scotch & Soda B.V. in trademark matter.

Sisters of Charity of Leavenworth v Blue Cross & Blue Shield Assoc., represented plaintiff Sisters of Charity of Leavenworth in trademark matter.

PGI Polymer, Inc. v Karmin Group, et al., USDC WDNC, Charlotte Division, Civil Action No. 3:15-cv-00214, represented defendant Karmin Group in trade dress matter.

Mitchell v FJerry, LLC, et al., USDC CD-CA 2:19-cv-04620, represented defendant FJerry, LLC in copyright matter.

Norseland, Inc. v. Fromageries Bel S.A., represented defendant Fromageries Bel in trade dress matter involving claims under the Lanham Act and under federal and state antitrust law.

The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, represented defendant, The Andy Warhol Foundation, in a lawsuit over the licensing rights to Warhol’s famous “banana design.”

Northstar Balloons LLC v. Amscan Inc. and Party City Companies, represented the plaintiff, Northstar Balloons, in patent infringement and unfair competition matter.

DSPA.nl.bv v. ARA Safety, Inc., represented the plaintiff DSPA.nl.bv, in a trademark and unfair competition matter, obtaining an award of over $1.4 million in damages and attorney’s fees in favor of our client.

Lakim Industries, Inc. v. Linzer Products Corp., represented the defendant Linzer Products Corp., in a patent matter.

Archie Comic Publications, Inc. v. Penders, represented the plaintiff, a comic book publisher, in a declaratory judgment action against a former independent contractor in a matter of copyright ownership.

BC-USA v. Bel Brands USA, represented the defendant, Bel Brands USA, in a trade dress matter.

Omega SA v. Xie Zhenmin, represented the plaintiff Omega SA, in a leading-edge anti-counterfeiting lawsuit directed against websites selling “replicas” of our client’s brand name watches.

The Swatch Group Management Services Ltd. v. Bloomberg L.P., represented the plaintiff, Swatch, in a copyright matter.

Umami Café, Inc. v. Umami Burger, represented the plaintiff, Umami Café, Inc., in a trademark matter. Costco Wholesale Corp. v. Omega S.A., represented defendant, Omega, in copyright matter. Judged in our favor before the Ninth Circuit, affirmed by an equally divided U.S. Supreme Court.

Audi AG and Volkswagen of Am., Inc. v. Shokan Coachworks, Inc., represented defendant, Shokan Coachworks, Inc., in a trademark matter.

Balenciaga Corporation v. Steve Madden, Ltd., represented plaintiff Balenciaga in copyright, unfair competition, and deceptive trade practices matter.

Edward B. Beharry & Co., Ltd. v. Bedessee Imports Inc., represented the plaintiff, Edward B. Beharry & Co., Ltd., in trademark matter.

Loris Azzaro, B.V. v. Del Laboratories, Inc., represented the plaintiff, Loris Azzaro, B.V., in a trademark and trade dress matter.

Maax Spas (Arizona), Inc. v. Hydropool Industries Inc., represented plaintiff, Maax Spas, in a trademark matter.

The Swatch Group (U.S.) Inc. v. New Tang Dynasty TV (NTDTV), represented the plaintiff, Swatch, in a trademark matter.

Smartpros, LTD. v. Bisk Education, Inc., represented the plaintiff Smartpros, LTD., in a trademark matter.

Exxon Mobil Corporation v. Dexxon Digital Storage Inc., represented the defendant, Dexxon, in a trademark matter.

Fifty-Six Hope Road Music, Ltd. v. Mayah Collections, Inc., represented the defendant, Mayah Collections, Inc., in a trademark and right-of-publicity matter pertaining to Bob Marley.

Honeywell International Inc. v. Trolex Corp., represented the defendant, Trolex, in a trademark and copyright matter.

Biella Collezioni S.R.L. v. Standard Merchandising Co., represented the plaintiff, Biella Collezioni S.R.L., in a trademark matter.

State of Wisconsin v. Fromageries Bel, Inc., represented defendant, Fromageries Bel, against false advertising claims filed by Wisconsin State Attorney General.

United States Tennis Association Inc. v. Robert Bowen, represented the plaintiff, United States Tennis Association Inc. (“USTA”), in a trademark matter.

Carl Karcher Enterprises, Inc. v. Iberostar Hoteles y Apartamentos, S.L., represented the defendant, Iberostar, in a trademark matter before the USPTO Trademark Trial and Appeal Board.

Morinaga & Co. Ltd. v. Crown Confectionary Co. Ltd., represented the plaintiff, Morinaga, in a trademark matter before the USPTO’s Trademark Trial and Appeal Board.

Mapei Corporation v. AWI Licensing Company, represented the plaintiff, Mapei, in a trademark matter.

Yves Saint Laurent Fashion B.V. v. Goldfinger Hawaii, Inc., represented the plaintiff, Yves Saint Laurent, in a trademark matter.

L.F.P., Inc. v. John De Mol Produkties B.V., represented defendant, John De Mol Produkties B.V., in a trademark matter.

Honors & Recognitions

New York Super Lawyers (2012-present)

Newsroom

Speaking Engagements

Jess is a frequent lecturer. He has spoken at conferences of Consulegis, the International Trademark Association (“INTA”), Westchester Bar Association, and Pace University Law School.

Frenemies: Fan Fiction and Intellectual Property Rights, presented for the International Intellectual Property Society IIPS (September 17, 2019, in New York, New York)

U.S. and Brexit, Annual CITMA Conference in London (Chartered Institute of Trademark Attorneys) (2017)

Intellectual Property Rights for Exporters, Moderator, hosted by eBay in Manhattan (July 2016)

Slow Living Summit, panelist for Food and Agricultural Entrepreneurship, Brattleboro, Vermont (April 2016)

SCORE-sponsored event on IP rights, speaker, Boston (April 2016)

ExportTech program panelist at the Industrial Technology Assistance Corporation in New York City (April 2015)

U.S. Trademark Rights, for Italian-Canadian Chamber (Montreal)

New Developments in U.S. Trademark Law, for Consulegis (Vienna)

Ethics in Trademark Litigation Discovery, panelist, International Trademark Association (INTA)

Negotiations: How to Settle Cases, for Westchester [NY] Bar Association

Pace Law School CLE series

Intellectual Property Law “C.E.O.” Business Owner’s Certificate Program, instructor, F.I.T. Fashion Institute of Technology – New York, New York

Publications

A respected author, Jess is a contributor to Forbes.com where he writes principally about trademarks and branding, but also looks at all IP-related topics from what he has learned and seen in more than thirty years as a federal litigator and long-time counselor of businesses. What's Your Trademark?  www.forbes.com/sites/jesscollen

Brands, Political Brands, and Donald Trump. Published October 2020 by Streamline Brands, examining the striking similarity between political and product brands.  www.brandsandpolitics.com

Brand Names and Politics. Scheduled for publication Spring 2022. Combines experience as a trademark lawyer, and research on the history of brand names. (It also allows Jess to feel that, 40 years later, he is able to put a degree in Political Science to some practical use!) Brand Names and Politics studies in-depth why political brand names work, and how a family name functions like a brand extension of any other product. Many professional athletes have children who are also star athletes. Is that because their names open the door to opportunities, or is it genetics, or is it the product of a lifetime of exposure to a skill set and a community of elite athletes which is simply beyond the reach of everyone else? In this same way, access provided by a political family can mold a member of one of these families to be a qualified candidate, and most notably – just like a manufacturer – can use its skills, experience, business success, and reputation to leverage one successful “product” into many others. 

Branding in the Sharing Economy White Paper (February 2014)

The Evolving Threat and Enforcement of Replica Goods, Western New England Law Review (2011)

Intellectual Property in Virtual Worlds, a California Bar Journal on the topic of trademarks in Second Life and other Virtual Worlds, on law.com (2009)

Community & Professional

Jess participates actively in various organizations relating to intellectual property law and practice.

He has served on the Board of Directors of the International Trademark Association (INTA), at which he served consecutive terms on the Board’s Executive Committee. In his capacity as a member of the Trademark Office Practices Committee, Jess has worked with the Commissioner of Trademarks and U.S. Patent and Trademark Office (USPTO) senior leaders on issues of rule implementation and legislation.

He is past chair of INTA’s Planning Committee; is a co-author of the Association’s Strategic Plan; and has chaired numerous INTA committees, subcommittees, and task forces. He also participates actively in professional membership organizations outside the United States — including the Association Internationale pour la Protection de la Propriete Intellectuelle (International Association for the Protection of Intellectual Property).

He has been a member and former committee member of the New York City Bar Association for over 30 years.

Jess has also served as an expert witness on U.S. Patent and Trademark Office procedure in court and U.S. Patent and Trademark Office proceedings.

Jess has been recognized by Trademark Insider magazine as one of the Top 50 trademark attorneys in the United States.

He also has been included in the annual listing of New York Super Lawyers (2012-2022), published in the New York Times Magazine, in the area of intellectual property.

In 2012, U.S. Secretary of Commerce John E. Bryson appointed Jess to the New York District Export Council. He remains an active District Export Council member today.

Jess was co-founder of the first blockchain-based trademark management and documentation portal, Cognate. He has also acted as a consultant to businesses on trademark-related product development issues.

Jess also learned first-hand about products and packaging as owner of retail businesses for fifteen years.

In the community, Jess was co-founder and chief executive of Life Project for Africa, an aid organization which supported the building of two health centers to provide services to the poor in Tanzania through services that promote health, education, and shelter to the homeless, and orphans and vulnerable children.

Among other things, Jess has also been an active member on finance committees, chaired social action organizations, and was co-awarded person of the year by his church community in New York (together with his wife, Jane), as well as being active in youth sport coaching and administration.

Education

J.D., Western New England University School of Law

B.A., Boston College (magna cum laude)

Bar & Court Admissions

Bar Admissions

  • New York
  • District of Columbia
  • Massachusetts
  • Utah

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Northern District of New York
  • U.S. District Court for the District of Massachusetts
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