From a FedEx package sent to his Ossining office, attorney Jess M. Collen pulled a fistful and more of watches with luxury brand names. He held up one that bore the trademark of Omega, one of his law firm”™s many clients, both foreign and domestic, in the luxury-goods industry.
“Swiss Made,” the knockoff”™s watch face was inscribed, just like the real thing from the prominent Swiss watchmaker. Turning it over, he pointed to a more telling label stuck on the band: “Made in China.”
The U.S. Marshal”™s office and a private investigator confiscated the heap of watches from illegal vendors on Canal Street in Manhattan, said Collen. “We do a lot of work in the watch industry,” he said. “Selling counterfeit watches is something we”™ve always gone after.”
At Collen Intellectual Property Law P.C., the firm he and his wife, Jane, founded in Westchester in 1996, obtaining and protecting patents and trademarks for client companies are staples of a boutique practice that has grown to 16 attorneys at the firm”™s restored 19-century office in a former “crack house” on South Highland Avenue in Ossining and eight lawyers at an affiliate firm in Boston. It requires legal vigilance that extends from the streets of New York to bureaucratic offices in China, a growing market for the firm”™s international practice, where many clients”™ trademarked products are manufactured and where trademark stockpiling by “scam artists,” an illegal practice in the U.S, can pose problems for companies lacking in-house legal watchdogs.
In China and other foreign countries, “If somebody holds your trademark, they can essentially hold yours up for hostage,” said Collen. “You have to ransom your trademark, so to say. You have to fight to get it back, which is not always easy.”
Foreign trademarking “is a lot of work,” said Collen. “It”™s a lot of money. It”™s really hard for small companies.”
“A majority of our clients are overseas,” primarily in Western Europe, Japan, Taiwan and Korea, said Collen. The Westchester firm works with foreign companies and with foreign law firms in about 60 countries, he said.
Collen frequently represents clients in U.S. federal courts and at the U.S. Patent and Trademark Office. A trade publication, Trademark Insider, recently ranked the Massachusetts native 13th among attorneys nationally in number of trademark applications submitted to that federal office in the third quarter of 2009. In a software company”™s survey, the Collen firm ranked sixth in the nation last year in number of opposition filings with the federal agency”™s Trademark Trial and Appeal Board for clients claiming damage to their marks and consumer confusion from other owners”™ registered trademarks.
“It can be a pretty demanding and complicated system,” said Collen. “Companies will sometimes use that (appeal board proceeding) instead of federal courts. It”™s still cheaper than going to court.”
Collen this fall will argue his client Omega”™s case against Costco Wholesale Corp., the giant retail warehouse-club chain, before the U.S. Supreme Court. In a potentially precedent-setting case that began in 2004, Omega seeks to stop Costco from purchasing its Swiss-made watches in foreign countries for import and sale in Costco”™s U.S. stores, thus avoiding Omega”™s own distribution system with less costly purchases in the so-called “grey market.” Collen said the Supreme Court could rule whether a foreign company such as Omega has the same right of first sale on its products in the U.S. as U.S. companies have.
Protecting one”™s trademark or patent is expensive both here and abroad. In the pending Supreme Court case, “Between the two parties, it will clearly cost several million dollars in legal fees,” Collen said. The average patent infringement case costs each party well over $1 million, he said.
Intellectual property once was considered “esoterica” and a fringe area of legal practice, Collen said. But that has changed, just as business has changed in the digital age.
“Our field of the law has grown exponentially,” he said. “The Internet has had a huge impact on our practice. The primary effect is that it has created so many more intellectual property law issues.”
“Today even the smallest companies have a website. If they have a website, they almost certainly have intellectual property issues,” some arising from the use of photos and music on a company site and site-creator disputes.
“The other big area that changed things in our practice is Internet domain names,” said Collen. “There”™s a whole cottage industry, a billion-dollar or multibillion-dollar industry, of people who just register names” to hold for sale to businesses likely to use them for their products. Those “cybersquatters” in part have increased the Ossining firm”™s legal work in Internet domain names, which Collen said now accounts for 15 percent to 20 percent of the practice.
Unlike previous economic downturns, the firm”™s patent and trademark filings declined by 15 to 20 percent in 2009, Collen said. “Typically, intellectual property law was not nearly as affected by recession economics as other areas of the economy were,” he said. “That wasn”™t seen in this recession,” as startup companies were unable to find financing and larger companies chose to restrict their budgets rather than spend more to defend their patent and trademark rights in hard times.
After a relatively lean year, “We certainly from our side see signs of a lot of bounceback” in the economy, said Collen. “We”™ve seen a lot of clients who we know have a lot of work on hold. That”™s sort of coming back into the pipeline now.”
