Ronald D. Coleman, Member

Ronald D. Coleman

Member

rcoleman@lawfirm.ms

3 Becker Farm Road, Suite 105
Roseland, NJ 07068
1270 Avenue of the Americas, Suite 1808
New York, New York 10020
Tel: 973-736-4600 x346
Direct Dial: 973.295.3654
Fax: 973-325-7467

Ron Coleman is Chairman of the Firm’s Intellectual Property and Brand Management Practice Group and a member of its Commercial and Corporate Litigation Practice Groups. He is a commercial litigator focusing on torts of competition who has established an international reputation relating to the use and abuse of intellectual property as a tool of competition and free speech. Ron is best known as the lead lawyer for band leader Simon Tam in his successful appeal of the U.S. Patent and Trademark Office’s refusal to register the trademark THE SLANTS on First Amendment grounds.

Ron’s pioneering blog, LIKELIHOOD OF CONFUSION®, has been online since 2005, and has established Ron as one of trademark law’s most influential voices. He has also been recognized for his pioneering use of social media in his legal role.

Ron has tried or successfully resolved, by dispositive motions, business and intellectual property cases in federal courts around the country and in the Superior Court of New Jersey. He has also argued appeals before the U.S. Circuit courts in the Second, Third, Ninth and Federal Circuits, Trademark Trial and Appeals Board of the Patent and Trademark Office and the appellate divisions in both New York and New Jersey. His successful argument before the en banc U.S. Court of Appeals for the Federal Circuit in Matal v. Tam, known as “The Slants case,” resulted in his appearance before the United States Supreme Court, which in 2017 issued a unanimous, historic ruling that invalidated the Lanham Act’s viewpoint-based restrictions on trademark registration.

Besides being an experienced first-chair commercial litigator, Ron has also spoken before audiences at virtually every major intellectual property law group and is a prolific legal writer. He wrote the first article on Internet law in the ABA Journal in 1995 and was co-author of the chapter on “Responses to Complaints” in Business and Commercial Litigation in the Federal Courts (ABA / West Group 1998). In 2011, Ron broke new ground analyzing the challenges concerning liability for indirect trademark infringement on the Internet as principal co-author of a New York City Bar Association report, “Online Auction Sites and Trademark Infringement Liability” which is still cited in academic treatments of the topic. And his 2016 article on the use of social media evidence in establishing trademark rights in The Trademark Reporter, the peer-reviewed journal of the International Trademark Association, was cited approvingly in a judicial opinion soon after its publication.

A graduate of Princeton University and Northwestern University School of Law, Ron has been named a leader in the field of intellectual property law and profiled in the World Intellectual Property Review’s (WIPR) Leaders Directory, the World Trademark Review “WTR 1000 Top Practitioner” for trademark litigation in New York City “Super Lawyers” for intellectual property litigation in New York City since 2012. The New Jersey Law Journal recognized him as a “Distinguished Leader” in 2017 and in 2018 he received the Mark T. Banner Award, given to individuals who have made an impact on intellectual property law or practice from the American Bar Association’s Intellectual Property Section.

International Trademark Association, Firm Representative
New York State Bar Association, Intellectual Property Law Section
New Jersey State Bar Association
Federal Bar Association
New York Intellectual Property Law Association, Program Committee and Trademark Law & Practice Committee
New York City Bar Association, Trademarks and Unfair Competition Committee
American Intellectual Property Law Association
Copyright Society of the USA
The Federalist Society

  • Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017)
  • Badia Spices, Inc. v. Gel Spice Co., Inc., No. 15-24391-CIV, 2017 WL 2082794 (S.D. Fla. May 15, 2017)
  • Kimberlin v. Frey, No. GJH-13-3059, 2017 WL 3141909 (D. Md. July 21, 2017), aff'd, 714 F. App'x 291 (4th Cir. 2018)
  • In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015)
  • Roca Labs, Inc. v. Consumer Op. Corp., 140 F. Supp. 3d 1311 (M.D. Fla. 2015)
  • Naffe v. Frey, 789 F.3d 1030 (9th Cir. 2015)
  • Ferguson v. Ferrante, 2015 U.S. Dist. LEXIS 68416 (S.D.N.Y. May 27, 2015)
  • Kimberlin v. Nat’l Bloggers Club, 2015 U.S. Dist. LEXIS 32528 (D. Md. Mar. 17, 2015)
  • Summit Transp. Corp. v. Hess Energy Mktg., LLC, 2015 U.S. Dist. LEXIS 23921 (D.N.J. Feb. 27, 2015)
  • Woodbridge Structured Funding, LLC v. Pissed Consumer, 125 A.D.3d 508 (N.Y. App. Div. 1st Dep’t 2015)
  • SAE Power Inc. v. Avaya Inc., No. A-3834-12T3, 2014 WL 982562 (N.J. Super. Ct. App. Div. Mar. 14, 2014)
  • Amerigas Propane, L.P. v. Opinion Corp., 2012 U.S. Dist. LEXIS 84679 (E.D. Pa. June 19, 2012)
  • Boarding Sch. Review, LLC v. Delta Career Educ. Corp., 108 U.S.P.Q.2d 1785 (S.D.N.Y. 2013)
  • deVere Group GmbH v. Opinion Corp., 877 F. Supp. 2d 67 (E.D.N.Y. 2012)
  • Kolel Beth Yechiel Mechil of Tartikov, Inc. v. YLL Irrevocable Trust, 878 F. Supp. 2d 459 (S.D.N.Y. 2012)
  • Tropp v. Conair Corp., 845 F. Supp. 2d 485 (E.D.N.Y. 2012)
  • Ascentive, LLC v. Opinion Corp., 842 F. Supp. 2d 450 (E.D.N.Y. 2011)
  • Righthaven, LLC v. Hyatt, 2011 U.S. Dist. LEXIS 93115 (D. Nev. Aug. 19, 2011)
  • Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008)
  • S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y. 2007)
  • Burch v. Nyarko, 2007 U.S. Dist. LEXIS 43275 (S.D.N.Y. June 15, 2007)
  • Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006)
  • Dorsey v. Black Pearl Books, Inc., 2006 U.S. Dist. LEXIS 83093 (D.N.J. Nov. 14, 2006)
  • Lawson v. N.Y. Billiards Corp., 331 F. Supp. 2d 121 (E.D.N.Y. 2004)
  • Louis Vuitton Malletier v. Veit, 211 F. Supp 2d 567 (E.D. Pa. 2002)
  • Valley Nat’l Bank v. Lavecchia, 59 F. Supp. 2d 432 (D.N.J. 1999)
  • Lewis v. Am. Cyanamid Co., 155 N.J. 544 (N.J. 1998)

Recent Publications:

  • Article, “Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning” The Trademark Reporter, (July-August, 2016 Vol. 106 No. 4)
  • Blogger, Likelihood Of Confusion Blog (www.likelihoodofconfusion.com) (2005 – present)
  • Article, “Bloggers, Journalists, Reporting and Privilege,” 22 Bright Ideas 17 (Fall 2013); reprinted in 85 New York State Bar Assoc. Law Journal 18 (Nov. / Dec. 2013) and 31 Computer and Internet Lawyer (March 9, 2014)
  • Chapter, “How Trademark Protection Intersects with the Athlete’s Right of Publicity in In the Arena: A Sports Law Handbook (New York State Bar Association 2013)
  • Article, “Bully for Who?,” Intellectual Property Magazine 10 (January 4, 2011)
  • Article, “Trademark, Copyright, and the Internet: Time to Return Balance to Civil Litigation,” 11 Engage 69 (August 2010)
  • Article, “Hands off Blogs: Mandatory disclosure of payment to bloggers runs counter to free expression,” 187 New Jersey Law Journal 23 (January 26, 2007)
  • Article, “De Minimis Confusion on the Internet: Compounding the Error of Initial Interest,” Journal of Internet Law (October 2003)
  • Article (Primary Co-Author), “Online Auction Sites and Trademark Infringement Liability,” 58 Record of the Association of the Bar of New York City 236 (2003)
  • Article (Co-Author), “Hacker with a White Hat,” Mealey’s Cyber Tech Litigation (May 14, 2001)
  • Article, “New York’s Declaratory Judgment Insurance Trap,” Mondaq.com (2001)
  • Principal Author, The ABA Legal Guide for Small Business (American Bar Association 2000)
  • Co-Author, “Responses to Complaints,” Chapter in Commercial Litigation in Federal Courts (ABA Section of Litigation | West Group, 1st Ed., 2000)
  • Article, “Depositions and Wrongful Profits in Infringement Cases: Cornering Your Prey with Rule 30(b)(6),” Mondaq.com (2002)
  • Article, “Prudential Standing: Who is ‘any person’ under the Lanham Act?,” Mondaq.com (1998)
  • Article, “Court Nixes Fees for Fact Witness,” 20 New Jersey Law Journal 22 (1997)
  • Article, “New York’s Choice of Law Doctrine in Coverage Cases is Moving Inexorably Toward the Site-Specific Approach,” 11 Mealey’s Litigation Report 1 (January 28, 1997)
  • Principal Author, The ABA Legal Guide to Consumer Law (American Bar Association 1997)

Recent Seminars

  • Presenter, “Standard of Review in IP Cases: Developments in Trademark Law,” New York Intellectual Property Law Association Annual Meeting (May 2018)
  • Panelist, “The Slants, Scandal and Speech: Do the First Amendment and Trademark Law Collide?,” State Bar of California IP Section 42nd Annual IP Institute (November 2017)
  • Presenter, “A Supreme Court Victory: Untold Stories,” Beverly Hills Bar Association (November 2017)
  • Presenter, “Disparaging Trademarks: Arguing the SLANTS Case at SCOTUS,” Program in Law and Technology Annual Seminar, University of Dayton School of Law (June 2017)
  • Panelist, “What’s the Use? Exploring Recent Challenges and Changes to Common Law Unfair Competition and Trademark Use Requirements in the U.S. and Canada,” International Trademark Association Annual Meeting (May 2017)
  • Panelist, “Trademark Disparagement and the First Amendment,” The McCarthy Institute and Microsoft Corporation Symposium: Trademark Law and Its Challenges 2017 (February 2017)
  • Panelist, “Litigating a Brand: The Dual Perspective of In-House and Outside Counsel,” 2017 Federal Bar Association Fashion Law Seminar (February 2017)
  • Panelist, “Trademark Disparagement and the First Amendment,” The McCarthy Institute and Microsoft Corporation Symposium: Trademark Law and Its Challenges 2017 (February 2017)
  • Panelist, “Litigating a Brand: The Dual Perspective of In-House and Outside Counsel,” 2017 Federal Bar Association Fashion Law Seminar (February 2017)
  • Presenter, “Section 2(a): Trademark’s Law of Unforeseen Consequences,” 26th All Ohio Annual Institute on Intellectual Property, Cincinnati Bar Association (September 2016)
  • Presenter, “On the (Un)Constitutionality of Section 2(a) of the Lanham Act,” 2016 Intellectual Property Law Section Annual Meeting, North Carolina Bar Association (March 18, 2016)
  • Presenter, “Registering Offense: Disparaging Trademarks, The First Amendment, and In Re Simon Shiao Tam,” Los Angeles Copyright Society (March 14, 2016)
  • Presenter, “Mastering Section 2(a) of the Lanham Act: Strategies for Overcoming Deceptiveness, False Suggestion, Scandalous, and Disparaging Refusals,” Advanced Trademark Law Seminar, Minnesota CLE (February 16, 2016)
  • Presenter, “Deposing Rule 30(b)(6) Corporate Witnesses” – Strafford CLE Webinars (December 8, 2015)
  • Panelist, “Hate Speech, Threats, and Terror: In the News and On Your Site” – MLRC Forum, Media Law Resource Center (November 11, 2015)
  • Panelist, “Green Paper Roundtable on Statutory Damages in Copyright” – United States Copyright Office and Berkman Center for Internet & Society at Harvard University (June 25, 2014)
  • Panelist, “Hot Topics in Trademark Law” – Trademark Talk Symposium, New York City Bar Association (May 20, 2014)
  • Panelist, “Addressing the Efficacy of §2(a) of the Lanham Act” – Annual Federal Circuit Symposium, American University Washington College of Law, (April 11, 2014)
  • Speaker, “THE SLANTS Appeal: Examining Attorneys and Independent Research” – Cleveland Intellectual Property Association (March 10, 2014)
  • Panelist, “Trademarks, Goodwill and Free Speech” – Annual Meeting, American Intellectual Property Law Association (October 24, 2013)
  • Panelist, “Labeling Yourself: The Do’s and Don’ts of Fashion Law Advertising” – Fashion Law Institute of Fordham Law School (October 24, 2012)
  • Panelist, “Righthaven and Mass Copyright Infringement Campaigns” – Annual Meeting, Copyright Society of the USA (June 7, 2011)
  • Facilitator, “Policing Trademarks on the Internet and the Web 2.0” – Table Talk, International Trademark Association (January 14, 2010)
  • Panelist, “A Focus on Initial Interest Confusion: Post-Sale Confusion and Related Strategies” – Advanced Trademark Law Seminar, Minnesota CLE (March 4, 2010)
  • Panelist, “Keying Up Keywords: The Role of Intellectual Property in Keyword Searching” – Global IP Positioning Strategies Panel, American Intellectual Property Law Association Spring Meeting (May 11, 2010)
  • Presenter, “Legal Aspects of Blogging,” Lawline.com (2008)
  • Moderator of rabbinic panel, “Jew law issues in legal practice” – Halacha Conference, Agudath Israel of America (June 3, 2007)
  • Panelist, “Faith Under Democracy: What have religious believers gained? What have they lost?” 1 Geo. J. L. & Pub. Pol’y 249 (Summer, 2003)
  • Panelist, “Advanced Trademark Law” – Association of the Bar of the City of New York (March 1, 2006)
  • Facilitator, “Issues in Trademark Dilution” – International Trademark Association – Table Talk (2004)
  • Panelist, “Electronic Data Management and Discovery Issues: Where is the Tipping Point?” – Electronic Discovery Seminar, Delaware Bar Association (2003)
  • Panelist, “Managing Risks and Costs of Acquiring IT Solutions” – Annual Business Law Institute, New Jersey State Bar Association (2003)
  • Panelist, “Attacking Counterfeiting in the 21st Century” – New York Intellectual Property Association (2002)
  • Panelist, “Protecting Intellectual Property Rights Where Wireless is Ubiquitous” – Annual Wireless Conference, The Conference Board (2001)
  • Panelist, “Trademark Rights vs. Free Speech” – Annual Trademarks in Cyberspace Program, International Trademark Association (October 16, 2000)
  • Recipient, Mark T. Banner Award for Impact on IP Law by American Bar Association Intellectual Property Law Section (2018)
  • Recipient, Distinguished Leader award, N.J. Law Journal (2017)
  • Named “Global Intellectual Property Leader” by World IP Review (2017, 2018)
  • Named “Top Attorney” in Internet Law, SJMagazine (2016, 2017)
  • Named to “WTR 1000” listing of “the world’s leading national and international trademark practitioners” by World Trademark Review (2016, 2017, 2018)
  • Named a Global Intellectual Property Leader by World IP Review (2017)
  • Named “Top Attorney” in Internet Law, SJMagazine (2016)
  • Named one of the world’s leading national and international trademark practitioners by WTR 1000 (2016, 2017)
  • Designated “AV” by Martindale-Hubbell as an associate attorney (2000 –)
  • National Bloggers Club “Friend to Bloggers” (Julie Laughridge) Award for Pro Bono Legal Defense of Bloggers (2015)
  • Named a “Super Lawyer” for Intellectual Property Litigation in New York City (2012 –)
  • Featured as a “Bergen Top Lawyer” by (201) Magazine in 2012
  • Avodas Hakodesh Award, Agudath Israel of America, 2009
  • LIKELIHOOD OF CONFUSION® Blog named to the first ABA “Blawg 100” list of best law-related blogs (2007)
  • Chicago Newspaper Guild Stick-O-Type Award for Feature Writing, “A Lawyer and His Sabbath, Student Lawyer magazine (1987)
Overview

Ron Coleman is Chairman of the Firm’s Intellectual Property and Brand Management Practice Group and a member of its Commercial and Corporate Litigation Practice Groups. He is a commercial litigator focusing on torts of competition who has established an international reputation relating to the use and abuse of intellectual property as a tool of competition and free speech. Ron is best known as the lead lawyer for band leader Simon Tam in his successful appeal of the U.S. Patent and Trademark Office’s refusal to register the trademark THE SLANTS on First Amendment grounds.

Ron’s pioneering blog, LIKELIHOOD OF CONFUSION®, has been online since 2005, and has established Ron as one of trademark law’s most influential voices. He has also been recognized for his pioneering use of social media in his legal role.
Experience

Ron has tried or successfully resolved, by dispositive motions, business and intellectual property cases in federal courts around the country and in the Superior Court of New Jersey. He has also argued appeals before the U.S. Circuit courts in the Second, Third, Ninth and Federal Circuits, Trademark Trial and Appeals Board of the Patent and Trademark Office and the appellate divisions in both New York and New Jersey. His successful argument before the en banc U.S. Court of Appeals for the Federal Circuit in Matal v. Tam, known as “The Slants case,” resulted in his appearance before the United States Supreme Court, which in 2017 issued a unanimous, historic ruling that invalidated the Lanham Act’s viewpoint-based restrictions on trademark registration.

Besides being an experienced first-chair commercial litigator, Ron has also spoken before audiences at virtually every major intellectual property law group and is a prolific legal writer. He wrote the first article on Internet law in the ABA Journal in 1995 and was co-author of the chapter on “Responses to Complaints” in Business and Commercial Litigation in the Federal Courts (ABA / West Group 1998). In 2011, Ron broke new ground analyzing the challenges concerning liability for indirect trademark infringement on the Internet as principal co-author of a New York City Bar Association report, “Online Auction Sites and Trademark Infringement Liability” which is still cited in academic treatments of the topic. And his 2016 article on the use of social media evidence in establishing trademark rights in The Trademark Reporter, the peer-reviewed journal of the International Trademark Association, was cited approvingly in a judicial opinion soon after its publication.

A graduate of Princeton University and Northwestern University School of Law, Ron has been named a leader in the field of intellectual property law and profiled in the World Intellectual Property Review’s (WIPR) Leaders Directory, the World Trademark Review “WTR 1000 Top Practitioner” for trademark litigation in New York City “Super Lawyers” for intellectual property litigation in New York City since 2012. The New Jersey Law Journal recognized him as a “Distinguished Leader” in 2017 and in 2018 he received the Mark T. Banner Award, given to individuals who have made an impact on intellectual property law or practice from the American Bar Association’s Intellectual Property Section.

Professional Affiliations

International Trademark Association, Firm Representative

New York State Bar Association, Intellectual Property Law Section

New Jersey State Bar Association

Federal Bar Association

New York Intellectual Property Law Association, Program Committee and Trademark Law & Practice Committee

New York City Bar Association, Trademarks and Unfair Competition Committee

American Intellectual Property Law Association

Copyright Society of the USA

The Federalist Society

Noteworthy Cases
  • Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017)
  • Badia Spices, Inc. v. Gel Spice Co., Inc., No. 15-24391-CIV, 2017 WL 2082794 (S.D. Fla. May 15, 2017)
  • Kimberlin v. Frey, No. GJH-13-3059, 2017 WL 3141909 (D. Md. July 21, 2017), aff'd, 714 F. App'x 291 (4th Cir. 2018)
  • In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015)
  • Roca Labs, Inc. v. Consumer Op. Corp., 140 F. Supp. 3d 1311 (M.D. Fla. 2015)
  • Naffe v. Frey, 789 F.3d 1030 (9th Cir. 2015)
  • Ferguson v. Ferrante, 2015 U.S. Dist. LEXIS 68416 (S.D.N.Y. May 27, 2015)
  • Kimberlin v. Nat’l Bloggers Club, 2015 U.S. Dist. LEXIS 32528 (D. Md. Mar. 17, 2015)
  • Summit Transp. Corp. v. Hess Energy Mktg., LLC, 2015 U.S. Dist. LEXIS 23921 (D.N.J. Feb. 27, 2015)
  • Woodbridge Structured Funding, LLC v. Pissed Consumer, 125 A.D.3d 508 (N.Y. App. Div. 1st Dep’t 2015)
  • SAE Power Inc. v. Avaya Inc., No. A-3834-12T3, 2014 WL 982562 (N.J. Super. Ct. App. Div. Mar. 14, 2014)
  • Amerigas Propane, L.P. v. Opinion Corp., 2012 U.S. Dist. LEXIS 84679 (E.D. Pa. June 19, 2012)
  • Boarding Sch. Review, LLC v. Delta Career Educ. Corp., 108 U.S.P.Q.2d 1785 (S.D.N.Y. 2013)
  • deVere Group GmbH v. Opinion Corp., 877 F. Supp. 2d 67 (E.D.N.Y. 2012)
  • Kolel Beth Yechiel Mechil of Tartikov, Inc. v. YLL Irrevocable Trust, 878 F. Supp. 2d 459 (S.D.N.Y. 2012)
  • Tropp v. Conair Corp., 845 F. Supp. 2d 485 (E.D.N.Y. 2012)
  • Ascentive, LLC v. Opinion Corp., 842 F. Supp. 2d 450 (E.D.N.Y. 2011)
  • Righthaven, LLC v. Hyatt, 2011 U.S. Dist. LEXIS 93115 (D. Nev. Aug. 19, 2011)
  • Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008)
  • S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y. 2007)
  • Burch v. Nyarko, 2007 U.S. Dist. LEXIS 43275 (S.D.N.Y. June 15, 2007)
  • Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006)
  • Dorsey v. Black Pearl Books, Inc., 2006 U.S. Dist. LEXIS 83093 (D.N.J. Nov. 14, 2006)
  • Lawson v. N.Y. Billiards Corp., 331 F. Supp. 2d 121 (E.D.N.Y. 2004)
  • Louis Vuitton Malletier v. Veit, 211 F. Supp 2d 567 (E.D. Pa. 2002)
  • Valley Nat’l Bank v. Lavecchia, 59 F. Supp. 2d 432 (D.N.J. 1999)
  • Lewis v. Am. Cyanamid Co., 155 N.J. 544 (N.J. 1998)
Publications/Seminars

Recent Publications:

  • Article, “Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning” The Trademark Reporter, (July-August, 2016 Vol. 106 No. 4)
  • Blogger, Likelihood Of Confusion Blog (www.likelihoodofconfusion.com) (2005 – present)
  • Article, “Bloggers, Journalists, Reporting and Privilege,” 22 Bright Ideas 17 (Fall 2013); reprinted in 85 New York State Bar Assoc. Law Journal 18 (Nov. / Dec. 2013) and 31 Computer and Internet Lawyer (March 9, 2014)
  • Chapter, “How Trademark Protection Intersects with the Athlete’s Right of Publicity in In the Arena: A Sports Law Handbook (New York State Bar Association 2013)
  • Article, “Bully for Who?,” Intellectual Property Magazine 10 (January 4, 2011)
  • Article, “Trademark, Copyright, and the Internet: Time to Return Balance to Civil Litigation,” 11 Engage 69 (August 2010)
  • Article, “Hands off Blogs: Mandatory disclosure of payment to bloggers runs counter to free expression,” 187 New Jersey Law Journal 23 (January 26, 2007)
  • Article, “De Minimis Confusion on the Internet: Compounding the Error of Initial Interest,” Journal of Internet Law (October 2003)
  • Article (Primary Co-Author), “Online Auction Sites and Trademark Infringement Liability,” 58 Record of the Association of the Bar of New York City 236 (2003)
  • Article (Co-Author), “Hacker with a White Hat,” Mealey’s Cyber Tech Litigation (May 14, 2001)
  • Article, “New York’s Declaratory Judgment Insurance Trap,” Mondaq.com (2001)
  • Principal Author, The ABA Legal Guide for Small Business (American Bar Association 2000)
  • Co-Author, “Responses to Complaints,” Chapter in Commercial Litigation in Federal Courts (ABA Section of Litigation | West Group, 1st Ed., 2000)
  • Article, “Depositions and Wrongful Profits in Infringement Cases: Cornering Your Prey with Rule 30(b)(6),” Mondaq.com (2002)
  • Article, “Prudential Standing: Who is ‘any person’ under the Lanham Act?,” Mondaq.com (1998)
  • Article, “Court Nixes Fees for Fact Witness,” 20 New Jersey Law Journal 22 (1997)
  • Article, “New York’s Choice of Law Doctrine in Coverage Cases is Moving Inexorably Toward the Site-Specific Approach,” 11 Mealey’s Litigation Report 1 (January 28, 1997)
  • Principal Author, The ABA Legal Guide to Consumer Law (American Bar Association 1997)

Recent Seminars

  • Presenter, “Standard of Review in IP Cases: Developments in Trademark Law,” New York Intellectual Property Law Association Annual Meeting (May 2018)
  • Panelist, “The Slants, Scandal and Speech: Do the First Amendment and Trademark Law Collide?,” State Bar of California IP Section 42nd Annual IP Institute (November 2017)
  • Presenter, “A Supreme Court Victory: Untold Stories,” Beverly Hills Bar Association (November 2017)
  • Presenter, “Disparaging Trademarks: Arguing the SLANTS Case at SCOTUS,” Program in Law and Technology Annual Seminar, University of Dayton School of Law (June 2017)
  • Panelist, “What’s the Use? Exploring Recent Challenges and Changes to Common Law Unfair Competition and Trademark Use Requirements in the U.S. and Canada,” International Trademark Association Annual Meeting (May 2017)
  • Panelist, “Trademark Disparagement and the First Amendment,” The McCarthy Institute and Microsoft Corporation Symposium: Trademark Law and Its Challenges 2017 (February 2017)
  • Panelist, “Litigating a Brand: The Dual Perspective of In-House and Outside Counsel,” 2017 Federal Bar Association Fashion Law Seminar (February 2017)
  • Panelist, “Trademark Disparagement and the First Amendment,” The McCarthy Institute and Microsoft Corporation Symposium: Trademark Law and Its Challenges 2017 (February 2017)
  • Panelist, “Litigating a Brand: The Dual Perspective of In-House and Outside Counsel,” 2017 Federal Bar Association Fashion Law Seminar (February 2017)
  • Presenter, “Section 2(a): Trademark’s Law of Unforeseen Consequences,” 26th All Ohio Annual Institute on Intellectual Property, Cincinnati Bar Association (September 2016)
  • Presenter, “On the (Un)Constitutionality of Section 2(a) of the Lanham Act,” 2016 Intellectual Property Law Section Annual Meeting, North Carolina Bar Association (March 18, 2016)
  • Presenter, “Registering Offense: Disparaging Trademarks, The First Amendment, and In Re Simon Shiao Tam,” Los Angeles Copyright Society (March 14, 2016)
  • Presenter, “Mastering Section 2(a) of the Lanham Act: Strategies for Overcoming Deceptiveness, False Suggestion, Scandalous, and Disparaging Refusals,” Advanced Trademark Law Seminar, Minnesota CLE (February 16, 2016)
  • Presenter, “Deposing Rule 30(b)(6) Corporate Witnesses” – Strafford CLE Webinars (December 8, 2015)
  • Panelist, “Hate Speech, Threats, and Terror: In the News and On Your Site” – MLRC Forum, Media Law Resource Center (November 11, 2015)
  • Panelist, “Green Paper Roundtable on Statutory Damages in Copyright” – United States Copyright Office and Berkman Center for Internet & Society at Harvard University (June 25, 2014)
  • Panelist, “Hot Topics in Trademark Law” – Trademark Talk Symposium, New York City Bar Association (May 20, 2014)
  • Panelist, “Addressing the Efficacy of §2(a) of the Lanham Act” – Annual Federal Circuit Symposium, American University Washington College of Law, (April 11, 2014)
  • Speaker, “THE SLANTS Appeal: Examining Attorneys and Independent Research” – Cleveland Intellectual Property Association (March 10, 2014)
  • Panelist, “Trademarks, Goodwill and Free Speech” – Annual Meeting, American Intellectual Property Law Association (October 24, 2013)
  • Panelist, “Labeling Yourself: The Do’s and Don’ts of Fashion Law Advertising” – Fashion Law Institute of Fordham Law School (October 24, 2012)
  • Panelist, “Righthaven and Mass Copyright Infringement Campaigns” – Annual Meeting, Copyright Society of the USA (June 7, 2011)
  • Facilitator, “Policing Trademarks on the Internet and the Web 2.0” – Table Talk, International Trademark Association (January 14, 2010)
  • Panelist, “A Focus on Initial Interest Confusion: Post-Sale Confusion and Related Strategies” – Advanced Trademark Law Seminar, Minnesota CLE (March 4, 2010)
  • Panelist, “Keying Up Keywords: The Role of Intellectual Property in Keyword Searching” – Global IP Positioning Strategies Panel, American Intellectual Property Law Association Spring Meeting (May 11, 2010)
  • Presenter, “Legal Aspects of Blogging,” Lawline.com (2008)
  • Moderator of rabbinic panel, “Jew law issues in legal practice” – Halacha Conference, Agudath Israel of America (June 3, 2007)
  • Panelist, “Faith Under Democracy: What have religious believers gained? What have they lost?” 1 Geo. J. L. & Pub. Pol’y 249 (Summer, 2003)
  • Panelist, “Advanced Trademark Law” – Association of the Bar of the City of New York (March 1, 2006)
  • Facilitator, “Issues in Trademark Dilution” – International Trademark Association – Table Talk (2004)
  • Panelist, “Electronic Data Management and Discovery Issues: Where is the Tipping Point?” – Electronic Discovery Seminar, Delaware Bar Association (2003)
  • Panelist, “Managing Risks and Costs of Acquiring IT Solutions” – Annual Business Law Institute, New Jersey State Bar Association (2003)
  • Panelist, “Attacking Counterfeiting in the 21st Century” – New York Intellectual Property Association (2002)
  • Panelist, “Protecting Intellectual Property Rights Where Wireless is Ubiquitous” – Annual Wireless Conference, The Conference Board (2001)
  • Panelist, “Trademark Rights vs. Free Speech” – Annual Trademarks in Cyberspace Program, International Trademark Association (October 16, 2000)
Awards
  • Recipient, Mark T. Banner Award for Impact on IP Law by American Bar Association Intellectual Property Law Section (2018)
  • Recipient, Distinguished Leader award, N.J. Law Journal (2017)
  • Named “Global Intellectual Property Leader” by World IP Review (2017, 2018)
  • Named “Top Attorney” in Internet Law, SJMagazine (2016, 2017)
  • Named to “WTR 1000” listing of “the world’s leading national and international trademark practitioners” by World Trademark Review (2016, 2017, 2018)
  • Named a Global Intellectual Property Leader by World IP Review (2017)
  • Named “Top Attorney” in Internet Law, SJMagazine (2016)
  • Named one of the world’s leading national and international trademark practitioners by WTR 1000 (2016, 2017)
  • Designated “AV” by Martindale-Hubbell as an associate attorney (2000 –)
  • National Bloggers Club “Friend to Bloggers” (Julie Laughridge) Award for Pro Bono Legal Defense of Bloggers (2015)
  • Named a “Super Lawyer” for Intellectual Property Litigation in New York City (2012 –)
  • Featured as a “Bergen Top Lawyer” by (201) Magazine in 2012
  • Avodas Hakodesh Award, Agudath Israel of America, 2009
  • LIKELIHOOD OF CONFUSION® Blog named to the first ABA “Blawg 100” list of best law-related blogs (2007)
  • Chicago Newspaper Guild Stick-O-Type Award for Feature Writing, “A Lawyer and His Sabbath, Student Lawyer magazine (1987)
Admissions

New Jersey

New York

U.S. District Court for the Northern District of New York

U.S. Court of Appeals for the Eleventh Circuit

Education

Northwestern University School of Law, J.D.

Princeton University, A.B.