Jess M. Collen

Jess M. Collen

Attorney Profile

Top Rated Intellectual Property Attorney in Ossining, NY

Collen IP
 | 80 S Highland Ave, Ossining, NY 10562
Phone: 914-941-5668
Fax: 914-941-6091
Selected to Super Lawyers: 2012 - 2019
Licensed Since: 1985
Practice Areas:
  • Intellectual Property (50%),
  • Intellectual Property Litigation (50%)
Attorney Profile

A co-founder of COLLEN, Jess Collen’s expertise in the field of trademark law has long been recognized. Collen IP represents some of the world’s leading brands, providing legal representation to global companies and other businesses in the areas of trademark, copyright, design and utility patent, advertising and marketing and privacy and information management. 

Jess Collen has been active in IP practice for over 30 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, What’s Your Trademark?, which focuses on all aspects of intellectual property. Mr. Collen and COLLEN have represented clients in U.S. District Courts and federal Courts of Appeal across the United States in industries as diverse as consumer electronics, high fashion, fashion eyewear, food, entertainment, watchmaking, software, and other industrial and consumer fields. He was counsel in a copyright infringement case argued before the Supreme Court of the United States.

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

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.

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.

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

White Papers

  • The Collaborative Economy and IP law (2014) - This paper reviews the future of Intellectual Property law rights in the collaborative / sharing economy.  The paper focuses on Trademark, Patent, Grey market and counterfeiting, Copyright and Advertising Law and Social Media with Collen IP.

  • About Jess Collen

    Admitted: 1985, New York

    Professional Webpage: http://www.collenip.com/team/jessmcollen.asp

    Honors/Awards:

    • Above the Bar Award, IP lawyer of the year 2011  
    • 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., Appointed to New York District Export Council, New York District Export Council, 2012

    Pro bono/Community Service:

    • CEO, Board Member, co-founder Life Project Inc.  Not for profit, 2006

    Representative Clients:

    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.
    • 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.

    Industry Groups

    • Cosmetic
    • Hospitality Industry
    • Luxury Goods
    • Manufacturing
    • Retail
    • Tech
    Office Location for Jess M. Collen

    80 S Highland Ave
    Ossining, NY 10562

    Jess M. Collen:

    Last Updated: 4/15/2019

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