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JOSHUA PAUL

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Joshua Paul joined Collen IP as Of Counsel in April 2009. Mr. Paul is an experienced IP litigator and trial attorney. He represents clients in trademark, copyright, advertising, trade secret and general business disputes. He also counsels clients in these areas and in transactions involving intellectual property assets

Mr. Paul is active in various professional associations and organized bar groups. He has chaired the ABA Section of Intellectual Property Law’s special committee on the trademark counterfeiting statute and has co-chaired the Section’s Trademark Litigation Committee. He also has served on the editorial board of The Trademark Reporter™, published by the International Trademark Association. Currently, Mr. Paul serves on the editorial board of the Intellectual Property Strategist published by American Law Media.

In 2007, Mr. Paul was elected a Fellow of the American Bar Foundation in recognition of his leadership and contribution to the legal profession. Membership in the Fellows is limited to one third of one percent of all attorneys licensed to practice in a given State. Mr. Paul also has been selected for inclusion in New York Super Lawyers (2006, 2007, 2008, 2009, 2010), published as a supplement in the New York Times Magazine.  

Mr. Paul represents clients across a broad spectrum of industries. These include fragrance and cosmetic, technology, pharmaceutical, advertising, alcoholic beverage, banking, insurance, media and retail – among others. 

Mr. Paul’s first chair litigation representations include:

  • Lead counsel for defendant, owner of trademark ELIZABETH ARDEN Provocative Interlude for fragrance products, in lawsuit brought by owner of Interlude trademark, also for fragrances. Court denied plaintiff's motion for preliminary injunction after evidentiary hearing (U.S. District Court, Southern District of New York).
     

  • Lead counsel for respondent, owner of trademarks LUCKY LAGER and LUCKY for beer, in cancellation proceeding initiated by owner of trademark LUCKY BEER in the US PTO’s Trademark Trial and Appeal Board.
     

  • Lead counsel for pharmaceutical companies as plaintiffs in lawsuit brought under federal anti-cybersquatting statute against persons who registered corporate name Parke Davis as Internet domain name <parkedavis.com> and then linked domain name to web site containing offensive material (U.S. District Court, Eastern District of Virginia).
     

  • Lead counsel for hotel property owner against claims of false advertising and trademark infringement brought by plaintiff, operator of Le Meridien hotel chain (U.S. District Court, Southern District of New York).
     

  • Lead counsel for employer as plaintiff in lawsuit against former employees and their current employers complaining about defendants' breach of non-competition clause of employment agreements and theft of trade secrets relating to methodologies of long-range weather forecasting (U.S. District Court, Eastern District of Pennsylvania).
     

  • Lead counsel for manufacturer and distributor of prestige-category fragrance products as plaintiff in trademark counterfeiting action against manufacturers, distributors and retailers of counterfeit Eternity for Men fragrance (U.S. District Court, Southern District of New York).

Mr. Paul is a graduate of Yale College (B.A. cum laude) and Northwestern University School of Law (J.D.)
 

   
 
   
   

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