A business-minded intellectual property and technology attorney, Joel helps brand-oriented and creative companies develop, launch, and protect strong brands and license technology and creative content.

Overview

Trademark and Advertising Counseling and Representation

Joel works closely with clients to develop global brand protection strategies and advises on selecting, clearing, registering, and enforcing trademarks in the U.S. and abroad. He manages global trademark portfolios for Fortune 500 companies and serves as outside trademark counsel to a variety of domestic and global companies, including in the fields of medical devices, consumer products, interactive entertainment, and apparel. Joel has considerable experience advising clients on identifying, developing, and protecting non-traditional trademarks such as trade dress to further build brand awareness and value. Joel also works with clients as they create and roll out advertising campaigns, providing counsel on advertising law issues, comparative advertising, false advertising, and social media issues.

Joel stands out for his combination of counseling and litigation know-how. He handles disputes involving trademarks, copyrights, and domain names, including litigation in federal courts and proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Joel has been listed in the World Trademark Review 1000 where clients commented that he “understands our situation intimately and has been very generous with his time. Frankness and hard work describe him to a tee. His communication is top-notch: he kept us updated throughout the loops and hoops of the legal processes and led us through thousands of pages of documents during discovery.” A former adjunct professor of trademark law at William Mitchell College of Law (now Mitchell Hamline School of Law), Joel also has been a guest lecturer on copyright and trademark law at the University of Minnesota Walter Mondale School of Law.

Licensing Creative Content and Technology Transactions

With roots in the arts and as a performing musician, Joel also helps clients protect and license creative content and technology. Joel has significant experience licensing and exploiting intellectual property, including negotiating and preparing trademark licenses, ingredient-branding licensing, co-branding arrangements, copyright-related agreements, technology licenses and services agreements, and name and likeness licenses. He routinely serves as lead attorney negotiating technology transactions involving software, information technology services, data privacy, and security issues. Joel balances incorporating security and appropriate vendor controls into each transaction while at the same time moving transactions to completion.  

Experience

Representative transactional and counseling experience:

Represents Fortune 500 companies on international trademark issues to build brand awareness and protect trademarks on a global basis.

Coordinated and oversaw trademark clearance and registration for spin-off of multi-national consulting company in connection global rebranding project.

Work closely with in-house legal team at leading video game developer and publisher in connection with trademark clearance and enforcement.

Routinely negotiate and draft copyright and trademark licenses in the apparel industry to enable use of entertainment properties on apparel.

Routinely negotiate and draft technology services and license agreements for major e-commerce company.

Advise industrial and consumer products companies on comparative advertising campaigns to allow clients to effectively communicate product advantages

Assist technology company with establishing in-house protocols for trademark clearance and maintenance, including providing training and strategic portfolio review.

Audit international trademark portfolios to identify cost cutting opportunities.

Advise major e-commerce company on data privacy issues.

Representative dispute and litigation experience:

Successfully negotiated resolution to trademark opposition brought against medical device company allowing client to obtain trademark registration (2019).

Vigorously defended restaurant chain in trademark opposition that resulted in client obtaining trademark registration (2018).

Routinely handle trademark enforcement and opposition matters for a media company.

Giants Snacks, Inc. v. Wild Dutchman Products, Inc. (2018) (represented plaintiff and successfully negotiated settlement in a false advertising dispute).

Resolved dispute to end improper use of trademarks in company name and domain name by unauthorized distributor.

Cap Index v. Location, Inc. (2015) (defended against trade dress infringement, copyright infringement, and false advertising claims; case settled following mediation)

News & Insights

Speaking Engagements

Springboard for the Arts, Facebook Live for World IP, 2018

"Protecting Your Intellectual Property," Podcast, Spot On Insurance, September 2018

A Day in the Life of In House Counsel, Midwest IP Institute, September 2017

"Controversy: Prince and Minnesota’s Proposed Right of Publicity," Midwest IP Institute, September 2016

"Key IP Issues in Advertising Law," The 2015 Midwest IP Institute, September 2015

"Intellectual Property Issues in Advertising Review", Intellectual Property Essentials for the Non-IP Lawyer, Minnesota CLE, April 2015

"Copyright Issues with Websites, Software, and Presentations", 2014 Midwest IP Institute, Minnesota CLE 2014

Publications

"Think Globally, Act Globally: Legal Consideration for developing and Managing a Global Brand," World Trademark Review Yearbook, 2014

"Debunking Copyright Myths, Avoiding Trouble," Minneapolis Star Tribune, 2013

Recognitions

Recognitions

Listed in The Best Lawyers in America® for Trademark Law, 2014-2018

World Trademark Review 1000, Minnesota (Gold and Silver Bands, 2012-2019)

Named an “Up & Coming Lawyer” by Minnesota Lawyer in 2010

Named a “Forty Under 40” honoree by the Minneapolis/St. Paul Business Journal in 2009

Inaugural recipient of Springboard for the Arts' Clough & Post Distinguished Service in the Arts Award for serving the legal needs of Minnesota's arts community.

Admissions

  • Minnesota
  • U.S. District Court for the District of Minnesota
  • U.S. District Court for the Western District of Wisconsin

Education

William Mitchell College of Law, J.D., summa cum laude, 2001

  • Class valedictorian
  • William Mitchell Law Review

University of Wisconsin, B.A., Political Science and Psychology, 1993

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