Jess M. Collen

Partner
jcollen@collenip.com
vCard

Jess M. Collen, a co-founder of the firm, has more than thirty years of experience representing clients across a broad array of industries in intellectual property matters.  His practice includes counselling on issues of strategic trademark portfolio management, as well as counselling and litigation relating to trademarks, copyrights, anti-counterfeiting, advertising and marketing, software protection, patents, and related areas. Mr. Collen also leads the firm’s top-ranked trademark opposition practice.  He is a regular contributing author for Forbes.com, where he writes about IP law and policy.

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Representative Cases

Mr. Collen has represented clients in more than 100 litigations in court and Opposition and Cancellation proceedings in the U.S. Trademark Office’s Trademark Trial and Appeal Board.

 

Representative court litigations

  • Norseland, Inc. v. Fromageries Bel S.A.

    Represented manufacturer and distributor of MINI BABYBEL brand cheese in lawsuit against manufacturer of JARLSBERG MINIS branded cheese.  Client successfully defended its claim of trade dress rights in the MINI BABYBEL product’s wax wrap primary packaging in action involving claims under the Lanham Act and under federal and state antitrust law.

  • Northstar Balloons LLC v. Amscan Inc. and Party City Companies

    Represented plaintiff/manufacturer of Mylar balloons in patent infringement and unfair competition action against competitor and “Party City” retail chain.  Reached mediated settlement shortly before the end of discovery.

  • Omega S.A. v 375 Canal, LLC

    Our client, owner of the OMEGA watch brand, filed a complaint alleging that defendant real estate developer knew or should have known that third parties were selling counterfeit “Omega” watches from defendant’s building. The district court denied defendant’s motion to dismiss, holding that our complaint stated a cause of action for contributory trademark infringement.

  • Skipprint, LLC v. Rastar, Inc.

    Plaintiff’s complaint against our client alleged that aspects of client’s web-based online ordering system infringed software patents owned by plaintiff. The court granted our motion to dismiss plaintiff’s claims for indirect patent infringement.

  • Lakim Industries, Inc. v. Linzer Products Corp.

    Defended a paint brush manufacturer in a patent infringement lawsuit involving a paint roller mounting assembly. The district court granted our motion for summary judgment and awarded our client attorney’s fees. The U.S. Court of Appeals for the Federal Circuit affirmed.

  • DSPA.nl.bv v. ARA Safety, Inc.

    In a lawsuit for trademark infringement and unfair competition, we obtained a Permanent Injunction, Cancellation of the Canadian adversary’s trademark registrations, and an award of over $1.4 million in damages and attorney’s fees in favor of our client a Dutch manufacturer of fire suppression products.

  • FarmaSea Health, L.L.C. v. Maine Coast Sea Vegetables, Inc.

    Successfully defended our client in action for trademark infringement, unfair competition, and cybersquatting brought by owner of several registered trademarks. The court dismissed all of plaintiff’s claims, cancelled the plaintiff’s trademark registration, and awarded our client its attorney’s fees.

  • The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts

    Defended foundation established under the will of Andy Warhol in a lawsuit over the licensing rights to Warhol’s famous “banana design.” The district court granted our motion to dismiss plaintiff’s copyright-related claims. Case settled favorably shortly before trial.

  • BC-USA v. Bel Brands USA

    Defended the manufacturer of the BOURSIN brand of spreadable cheese in a trade dress infringement action brought by its competitor, the manufacturer of ALOUETTE brand of cheese. After a period of expedited discovery, the plaintiff withdrew its motion for a preliminary injunction. Case settled shortly thereafter.

  • Omega SA v. Xie Zhenmin

    A leading-edge anti-counterfeiting lawsuit directed against websites selling “replicas” of our client’s brand name watches. We obtained a temporary restraining order and preliminary injunction against 29 “owners” of the domain names associated with various replica websites. We also obtained a court order authorizing us to seize control of the offending websites, and other assets associated with the defendants’ Pay Pal, Visa and MasterCard accounts.

  • The Swatch Group Management Services Ltd. v. Bloomberg L.P.

    Represented Swiss public company as plaintiff in copyright infringement action arising from defendant media organization’s distribution of an unauthorized recording of our client’s conference call with financial analysts. The District Court upheld our complaint and denied defendant’s motion to dismiss. The Second Circuit eventually reversed on other grounds.

  • The Swatch Group (U.S.) Inc. v. Stürhling Original LLC

    Represented the owner of the HAMILTON watch brand in trade dress litigation brought against competitor. We argued that the HAMILTON Ventura watch’s distinctive face and design attributes was protectable trade dress, and that defendant’s STÜRHLING Ricochet watch infringed client’s rights. Case settled on terms favorable to client.

  • Archie Comic Publications, Inc. v. Penders

    Represented a comic book publisher as the plaintiff in a declaratory judgment action against a former independent contractor. The principal issue involved ownership of the copyright in “Sonic the Hedgehog” and “Knuckles the Echidna” comic book series. The case settled following pre-trial mediation.

  • Umami Café, Inc. v. Umami Burger

    Represented our client, owner of the well-known restaurant UMAMI CAFÉ, in trademark infringement and unfair competition lawsuit brought against party using trademark UMAMI BURGER.

  • Costco Wholesale Corp. v. Omega S.A.

    Our client, the watch company Omega S.A., sued the retail chain Costco for copyright infringement arising from Costco’s unauthorized sale of gray market OMEGA watches. The Ninth Circuit agreed with our position that the Copyright Act’s “first sale” doctrine, 17 U.S.C. § 109(a), applies only to copyrighted items that are made and distributed in the United States. An equally divided U.S. Supreme Court affirmed.

  • Keranos, LLC v. Analog Devices, Inc.

    Represented a defendant in this action for patent infringement involving semiconductor chips using embedded flash memory. The court granted our client’s motion to dismiss the complaint.

  • Swatch S.A. v. Tick Tock, Inc.

    Successfully represented the Swiss watchmaker Swatch S.A. in lawsuit involving unauthorized gray market sales SWATCH brand watches.

  • FarmaSea Health, L.L.C. v. Maine Coast Sea Vegetables, Inc.

    Our client harvests and distributes sea vegetables. We successfully defended our client in action for trademark infringement, unfair competition and cybersquatting brought by the owner of the trademark SEA VEG. The court dismissed all of plaintiff’s claims, cancelled plaintiff’s trademark registration, and awarded our client attorney’s fees.

  • Huang v. GC Technology LLC et al.

    Successfully represented the defendant and declaratory judgment plaintiff in patent infringement actions involving external batteries for the Apple iPhone.

  • Audi AG and Volkswagen of Am., Inc. v. Shokan Coachworks, Inc.

    On behalf of our client, we prevailed at Summary Judgment in a trademark infringement suit filed by German automobile manufacturer, and secured our client’s right to use the vanity telephone number 1-800-ALL-AUDI.

  • Omega S.A. v. GN Corp.

    Successfully represented plaintiff, owner of all trademarks and copyrights used in connection with OMEGA brand watches, in action against gray market reseller of watches.

  • Balenciaga Corporation v. Steve Madden, Ltd.

    Represented French fashion house Balenciaga in lawsuit for copyright infringement, unfair competition and deceptive trade practices filed against competitor. Case arose from defendant’s advertisement and distribution of shoes whose design infringed our client’s rights. Case settled on terms favorable to client.

  • Mitchell Group USA, LLC v. New Beauty Supply

    Our client produces high-quality skin care products under the trademarks NEOPROSONE, LEMONVATE — among others. We represented client in a series of lawsuits against retailers who were selling lower quality skin care products bearing counterfeit versions of client’s trademarks. We obtained seizure orders and court-mandated permanent injunctions and other relief.

  • Omega S.A. v. GN Corp.

    Represented plaintiff, owner of all trademarks and copyrights used in connection with OMEGA brand watches, in action against gray market reseller of watches.

  • Omega, S.A. v. Susan Eisen, Inc.

    Successfully represented owner of trademark OMEGA for watches in action challenging retailer’s use of the OMEGA trademark so as to suggest — incorrectly — that defendant was a part of plaintiff’s network of authorized dealers of OMEGA watches.

  • Maax Spas (Arizona), Inc. v. Hydropool Industries Inc.

    Represented plaintiff, owner of THERMO-LOCK trademark for insulation used for heated pools. In action against competitor using trademark THERMAL-LOCK for identical goods.

  • The Swatch Group (U.S.) Inc. v. New Tang Dynasty TV (NTDTV)

    Represented plaintiff, owner of the trademark SWATCH for watches, in trademark infringement action against company with whom client formerly had a sponsorship agreement. The court granted our motion for a preliminary injunction directing defendant to cease using the SWATCH trademark.

  • Huang v. GC Technology LLC et al.

    Successfully represented the defendant and declaratory judgment plaintiff in patent infringement actions involving external batteries for the Apple iPhone.

  • Smartpros, LTD. v. Bisk Education, Inc.

    Our client, the plaintiff in this action, used service mark SMARTPROS in connection with its business of providing educational services for professionals. We successfully represented client in action against competitor, which had “purchased” client’s mark to use as advertising keyword to generate misleading online advertisements.

  • Edward B. Beharry & Co., Ltd. v. Bedessee Imports Inc.

    Represented plaintiff in trademark counterfeiting lawsuit involving curry powder. We obtained a court order granting our motion for a preliminary injunction and directing that the counterfeit goods be seized and destroyed.

  • Optovision Technology Inc. v. Vision Optics Technologies LTD

    Our client used trademark VISION OPTICS TECHNOLOGIES in connection with its service of applying coatings to optical lenses. We successfully defended client in trademark infringement lawsuit brought by owner of the mark OPTOVISION TECHNOLOGIES for identical services.

  • Swatch S.A., et al v. New City Inc.

    Obtained permanent injunction on behalf of owner of SWATCH watch brand against retailer whose advertisements falsely claimed that watches sold by defendant were covered by manufacturer’s warranty offered by plaintiff.

  • Exxon Mobil Corporation v. Dexxon Digital Storage Inc.

    Our client, a Dutch company, used DEXXON as a trademark for its data storage products and services. We successfully defended client in trademark infringement action brought by owner of the trademark EXXON, used by plaintiff in connection with the sale of gasoline and other petroleum products.

  • Fifty-Six Hope Road Music, Ltd. v. Mayah Collections, Inc.

    Represented defendant in lawsuit involving claims of infringement of trademark and right-of-publicity rights on behalf of the late Reggae performer Bob Marley. After we defeated the plaintiff’s motion for a preliminary injunction, the court granted our motion for an order dismissing plaintiff’s right of publicity claims. Case settled on terms favorable to our client.

  • Avio-Diepen Holding B.V. v. AD Holdings, PLC

    Our client, a Dutch company, used a family of marks in connection with import/export agency services. We represented client in action for trademark infringement and trademark dilution against U.K. company which used the mark AD for various services in the aviation industry. Case settled on terms favorable to client.

  • Addvisual, Inc. v. Airvisual, Inc.

    Plaintiff’s complaint alleged that our client’s use of ADDVISUAL as a trademark for security and surveillance camera systems created a likelihood of confusion via-a-vis plaintiff’s mark AIRVISUAL, used for identical goods and services. We obtained final judgment dismissing plaintiff’s complaint and granting client judgment on counterclaims.

  • Exigent Technology, Inc. v. Radiant Telecom, Inc.

    Represented plaintiff in patent infringement suit involving a multi-functional transaction processing system for the delivery of pre-paid phone and gift cards. We settled the case on terms favorable to the client after obtaining favorable rulings from the court during Markman claim construction hearing.

  • Honeywell International Inc. v. Trolex Corp.

    Represented defendant in action for trademark and copyright infringement.

  • Biella Collezioni S.R.L. v. Standard Merchandising Co.

    Our client, an Italian fashion house, owned and used the registered trademarks BIELLA G. VASTA COLLEZIONI and BIELLA MARIA LOUISA B. COLLEZIONI in the United States in connection with apparel. We successfully represented client in litigation challenging defendant competitor’s use of BIELLA, BIELLA COLLEZIONE for similar goods.

  • Gapardis Health and Beauty, Inc. v. Soho, Inc. et al.

    Represented the plaintiff in action involving use of counterfeit versions of client’s trademarks for cosmetic products. We obtained interim injunctive relief, including an order authorizing seizure of defendant’s counterfeit products. Case settled on favorable terms after we obtained court order preventing defendant from transferring assets.

  • Loris Azzaro, B.V. v. Del Laboratories, Inc.

    Represented the plaintiff, a Dutch corporation, in litigation challenging defendant competitor’s labeling, advertising and point of sale materials relating to nail care products.

  • Aspex Eyewear, Inc. v. E’Lite Optic, Inc.

    Our client’s patents covered a mechanism which made it possible to attach a second pair of lenses to the bridge of eye glasses through the use of magnetic attraction. In patent infringement action we filed on behalf of client, the court granted our motion for summary judgment on claims of willful patent infringement.

  • State of Wisconsin v. Fromageries Bel, Inc.

    Successfully defended our client, the French cheese maker Fromageries Bel, against false advertising claims filed by state Attorney General.

Representative Opposition and Cancellation Proceedings

  • Swatch A.G. v. The Spark Agency

    Following trial and final hearing, we prevailed at the Trademark Trial and Appeal and successfully opposed registration of the trademark SW:TCH. In its decision, the Board endorsed our arguments that our client’s mark is famous and entitled to a broad scope of protection. The Board concluded that the applicant’s mark was likely to cause confusion, and sustained the Opposition under Section 2(d) of the Lanham Act.

  • The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, Inc.

    Successfully defended proceeding initiated by disbanded rock group opposing our client’s application to register Andy Warhol’s “Banana Design.”

  • Victoria’s Secret Stores Brand Management, Inc. v. Administration Lver Inc.

    Our client, a Canadian company, has applied to register the mark LA VIE EN ROSE for retail store services selling apparel, lingerie and related goods. We are defending client in Opposition Proceeding initiated by owner of trademarks VICTORIA’S SECRET PINK, PINK NATION and other “PINK” trademarks.

  • ETA SA Manufacture Horlogère Suisse v. A. Daigger and Company, Incorporated

    Our client manufacturers watches and clocks under the mark ETA. We represent client in opposing application to register the mark ETA HANDS2 MIND for stopwatches and other goods.

  • United States Tennis Association Inc. v. Robert Bowen

    Represented national governing body of sport of tennis in proceeding concerning Applicant’s attempt to register trademark SANTE FE INFERNO.

  • Carl Karcher Enterprises, Inc. v. Iberostar; Hoteles y Apartamentos, S.L.

    Defended applicant in Opposition Proceeding initiated by owner of various “humanized star logos” used in connection with restaurant services.

  • Bel Brands USA, Inc. v. Norseland Incorporated

    Represented owner of registered trademark SPREAD SMILES for cheese spreads in opposing competitor’s application to register UNLOCK A SMILE for cheese.

  • Chatham Imports, Inc. v. Washington Place LLC

    Our client has applied to register the mark KNOW THY FARMER for various goods, including beer, wine and distilled spirits. We are defending client in Opposition Proceeding initiated by owner of trademark FARMER’S for distilled spirits.

  • Morninaga & Co. Ltd. v. Crown Confectionary Co. Ltd.

    Our client, a Japanese candy manufacturer, owned a trademark registration in the U.S. for the mark HI-CHEW for candy. Client’s competitor sought to register the mark MYCHEW in the U.S. for chewing gum, candy and related goods. We successfully represented client in Trademark Opposition Proceeding before the PTO’s Trademark Trial and Appeal Board. After trial, the TTAB issued decision holding that the MYCHEW mark was confusingly similar to client’s HI-CHEW mark.

  • Bel Brands USA, Inc. v. BC-USA, Inc.

    We successfully represented owner of BOURSIN trademark for cheese products in Cancellation Proceeding directed against competitor’s registration for design of the packaging used for ALOUETTE brand of cheese.

  • Maine Coast Sea Vegatables Inc. v. FarmSea Health LLC

    Successfully represented the Petitioner in this Cancellation Proceeding.

  • Swatch AG v. APAJ Holdings LLC

    Successfully opposed application to register METALSKIN for handbags on the ground that the mark was confusingly similar to our client’s mark SKIN for watches.

  • Edward B. Beharry & Co., Ltd. v. AFN Broker LLC

    Represented owner of intent-to-use applications for the marks CHAMPION for use with pasta and CHAMPION ICING SUGAR for use with sugar products in trademark Cancellation Proceeding against owner of registered mark CHAMPION for use with various consumable goods.

  • Mother Parker’s Tea & Coffee, Inc. v. Café Mystique, Inc.

    Defended our client in inter partes proceeding seeking to cancel client’s registered trademark CAFÉ MYSTIQUE COFFEE on grounds of abandonment. Case was resolved successfully; Petition to Cancel was withdrawn.

  • Kabushiki Kaisha Montbell v. Anton Pfanner

    Represented our Japanese client, Kabushiki Kaisha Montbell in a Cancellation action against the owner of a US trademark registration for mark KLIMA-AIR. A favorable settlement was negotiated and reached for our client.

  • Archie Comic Publications, Inc. v. Betty Rides, Inc.

    Represented our client, publisher of the Archie comic book series, in successfully opposing applicant’s attempt to register the mark BETTY RIDES for apparel and accessories.

  • Swatch A.G. v. M.Z. Berger & Co., Inc.

    On behalf the owner of the SWATCH trademark for watches, we successfully opposed an application to register the mark iWATCH for watches. Applicant had applied to register the mark under Section 1(b) of the Trademark Act, which requires that applicant have a bona fide intention to use its mark in commerce. In a decision issued after trial, the TTAB held that applicant had failed to establish this threshold requirement. The TTAB’s opinion is one of only several Precedential Decisions issued by the TTAB every year.

  • Omega S.A. v. FaLanda Hanif

    On behalf of our client Omega S.A., we successfully opposed an application to register the mark OMEGA-OPOLY for board games. The TTAB issued a written opinion after trial, holding that Applicant’s mark OMEGA-OPOLY was likely to cause confusion with our client’s mark OMEGA for watches and related goods.

  • Framgord, Ltd. v. Martin Int’l. Corp.

    Successfully represented client in petitioning to cancel competitor’s trademark registration for non-use.

  • Luxury Goods Int’l (LGI) SA v. Shenzhen Shenchuang Electrical Appliance Co., Ltd.

    Represented our client, owner of the famous YSL trademark, in successfully opposing application to register trademark YSC.

  • Dayhoff LLC v. v The Great Juice Co.

    Our client owned intent-to-use application for the mark JUST JUICEE & Design for packaged fruit juice. We successfully defended Opposition Proceeding initiated by owner of registration for the mark JUST GUIDCEE for fruit-flavored candy.

  • Bostik, Inc. v. Mapei Inc.

    Our client applied to register ULTRA/BOND as trademark for adhesive used in installing floors and wall coverings. We defended client in Opposition Proceeding filed by owner of trademark ULTRA-SET used for construction industry-related adhesive product.

  • Mapei Corporation v. AWI Licensing Company

    Our client owned registration for the mark BIOBLOCK for adhesives and related products used in connection with pool products. We successfully represented client in opposing competitor’s application to register BIOBLOCK for related goods.

  • Mapei Corporation v. AWI Licensing Co.

    Successfully represented the Opposer in this inter partes proceeding involving registration rights to the trademark BIOBLOCK.

  • Omega S.A. v. Oldenberg

    Successfully represented owner of OMEGA watch brand in opposing application to register OMEGA for golf bags and related goods.

  • The Andy Warhol Foundation for the Visual Arts, Inc. v. Carnegie Institute

    On behalf of our client, a not-for-profit foundation established under the will of the artist Andy Warhol, we successfully petitioned to cancel museum’s registrations for the marks THE WARHOL CAFÉ, THE WARHOL STORE and ANDY WARHOL.

  • Omega S.A. v. Platts

    We represented client Omega S.A., owner of worldwide rights to the trademark OMEGA for watches, in successfully opposing application to register the trademark BROADARROW for watches and clocks.

  • Yves Saint Laurent Fashion B.V. v. Goldwater Hawaii, Inc.

    We represented French fashion house in successfully opposing registration of applicant’s mark SL & Design for jewelry on the ground that applicant’s mark was confusingly similar to client’s famous YSL trademark.

  • Kellogg Company v. Conopco, Inc.

    Client sought to register trademark NUTRIFLAKES for food ingredients. We successfully defended client in Opposition Proceeding brought by owner of NUTRI-GRAIN trademark for snack food bars.

  • L.F.P., Inc. v. John De Mol Produkties B.V.

    We successfully represented our client, an international television production company, in dispute over rights to the trademark BIG BROTHER.

  • Del Laboratories, Inc. v. Loris Azzaro B.V.

    We successfully defended client, owner of trademark registration for mark CHROME AZZARO for perfumes, in Cancellation Proceeding initiated by competitor.

  • L.F.P. Inc. v. John de Moi Produkties B.V.

    We represented Respondent in Opposition Proceeding involving trademark BIG BROTHER for various goods and services.

  • Crème Glacee Ital Gelaati Inc. v. Italgel Incorporated

    Represented owner of trademark ITAL GELATI for ice cream in opposing application to register confusingly similar mark for electric ice cream makers.

  • Societa Per Anzioni Chianti Ruffino Esportanzione Vinicola Toscana v. Jose A. Abrante, Jr.

    Successfully represented Opposer, owner of well known wine brands, in Opposition Proceeding against competitor.

Professional Leadership

Mr. Collen 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, Mr. Collen has worked with the Commissioner of Trademarks and U.S. PTO’s senior leaders on issues of rule implementation and legislation.  Mr. Collen is past chair of INTA’s Planning Committee; is a co-author of the Association’s Strategic Plan; and has chaired INTA numerous committees, subcommittees, and task forces.  Mr. Collen also participates actively in professional membership organizations outside the United States — including the Association Internatonaile pour la Protection de la Propriete Intellectuelle (International Association for the Protection of Intellectual Property).

Mr. Collen is a frequent lecturer and author.  He co-authored the updated Copyright treatment in the multi-volume treatise Business Organizations with Tax Planning (published by LexisNexis/Matthew Bender).  He has spoken at conferences of the Consuleigis, International Trademark Association, Westchester Bar Association, and Pace University Law School.

Honors and Awards

Mr. Collen 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, published in the New York Times Magazine, in the area of intellectual property.  In 2012, U.S. Secretary of Commerce John E. Bryson appointed Mr. Collen to the New York District Export Council.  Mr. Collen remains an active District Export Council member today.

Bar Admissions
  • New York State
  • Massachusetts
  • Utah
  • United States Supreme Court
  • United States Court of Appeals, Second Circuit
  • United States Court of Appeals, Federal Circuit
  • United States District Court, Southern District of New York
  • United States District Court, Eastern District of New York
  • United States District Court, Northern District of New York
  • United States District Court, District of Massachusetts
Education

Mr. Collen is a graduate of Boston College (B.A., magna cum laude) and Western New England University School of Law (J.D.)