Jess Collen

RELEVANT EXPERIENCE

Jess Collen co-founded the law firm COLLEN IP in 1996, which was recognized internationally as a leader in trademark and IP law.

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.

Prior to his legal career, Jess was in the retail business and owned and operated a small retail chain. Jess helped found and was executive director of an organization which, for almost a decade, was devoted to healthcare facilities which it funded and built-in eastern Africa.

He also has been included in the annual listing of New York Super Lawyers (2012-2025) in the area of intellectual property and ranked in the WTR 1000 for litigation and enforcement.

REPRESENTATIVE MATTERS

• 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.
• 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 eyeglasses 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.