Ronald D. Coleman

Ron Coleman is a commercial litigator focusing on torts of competition who has shaped the law relating to the use and abuse of intellectual property as a tool of competition and free speech in the last two decades. An experienced first-chair litigator and appellate advocate, he has also been recognized for his pioneering use of social media in his legal role. His blog about copyright, trademark and free speech, LIKELIHOOD OF CONFUSION®, has since its inception in 2005 become one of the most influential publications in IP law.

Recent representations include:

  • Leading the effort – from Patent and Trademark Office proceedings through oral argument before the U.S Court of Appeals for the Federal Circuit and, ultimately, appearing before the U.S. Supreme Court – to overturn the PTO’s refusal to register the trademark THE SLANTS to Asian American band leader Simon Tam. In June 2017 the Supreme Court unanimously ruled in Mr. Tam’s favor, finding viewpoint-based restrictions on trademark registration unconstitutional under the First Amendment
  • Preparing and arguing the successful opposition to a motion brought by one of the world’s largest pharmaceutical companies to dismiss a competitor’s counterclaims for trademark infringement, Sherman Act monopolization and other torts of competition in the Eastern District of Virginia
  • Leading the litigation team, as first chair in injunction and dispositive motion proceedings in federal courts throughout the country, that vindicated the rights of review websites threatened with IP infringement claims meant to intimidate them into removing legally protected information or commentary.  Ron’s aggressive defense against these claims helped set the standards nationwide for protection of such activities under both trademark law and the Section 230 of the Communications Decency Act
  • Successfully resolving copyright infringement claims against a past major party nominee for Vice President of United States arising out of her brief use of a famous photograph on Facebook, and

Ron has tried innumerable cases to verdicts in jury and bench trials in the U.S. District of New Jersey, the Southern and Eastern Districts of New York, the District of Arizona and the Superior Court of New Jersey and has successfully resolved cases on dispositive motions in federal district courts in California, Nevada, Utah, Pennsylvania, Florida, Maryland and in the state courts in New York and 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.

Ron was co-author of the chapter on “Responses to Complaints” in Business and Commercial Litigation in the Federal Courts (ABA / West Group 1998) and wrote the first article on Internet law in the ABA Journal (1995). He was also principal co-author of a New York City Bar Association report, “Online Auction Sites and Trademark Infringement Liability,” that has been cited extensively in academic treatments of the issue of online trademark infringement liability. Ron has presented on copyright and trademark law at virtually every major intellectual property organization and at the invitation of bar associations and IP groups across the U.S. His 2016 article on the use of social media evidence in proving trademark rights in the The Trademark Reporter, the peer-reviewed journal of the International Trademark Association, was cited approvingly in a judicial opinion within a year of its publication.

A graduate of Princeton University and Northwestern University School of Law, Ron was named a leader in the field of intellectual property law and profiled in the World Intellectual Property Review’s (WIPR) 2017 Leaders Directory and a World Trademark Review “WTR 1000 Top Practitioner” for trademark litigation in New York City the last two years, and has been listed in the “Super Lawyer” directory for intellectual property litigation in New York City since 2012. In 2017 he was named a “Distinguished Leader” by the New Jersey Law Journal in recognition of his accomplishments and demonstrated leadership skills within the legal industry and business community.

Representative Experience

  • 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)
  • Matter of Woodbridge Structured Funding, LLC v. Pissed Consumer, 125 A.D.3d 508 (N.Y. App. Div. 1st Dep’t 2015)
  • 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)

Professional And Community Involvement

Current Professional Organization Membership

  • International Trademark Association – Internet Committee
  • New York State Bar Association – Intellectual Property Committee
  • New Jersey State Bar Association Federal Bar Association
  • New York Intellectual Property Law Association
  • Association of the Bar of the City of New York – Legal History Committee
  • American Intellectual Property Law Association
  • Copyright Society of the USA

Awards And Recognition

  • 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)

Articles

  • Article, “Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary MeaningThe 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)

Presentations

  • 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)

 

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