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Joseph F. Nicholson’s practice principally involves trademark, copyright and unfair competition matters, such as client counseling, brand management, and the creation, protection and enforcement of all related rights. He has over 16 years of experience in virtually all aspects of Intellectual Property, including domestic prosecution, counseling, licensing and varied types of conflict resolution including, litigation before the Trademark Trial and Appeal Board as well as the federal and state courts (including false advertising, unfair trade practices, and violations of franchise agreements) for clients which include well-known players in the telecom, food, publishing, apparel, luxury goods, pharmaceutical, airline, computer hardware and software, banking, finance and insurance industries. He is regularly involved in developing, protecting, and enforcing large domestic and foreign trademark portfolios. In addition, he has handled a large number of copyright matters, both before the U.S. Copyright Office and in the federal courts, including complex issues related to computer software copyright protection, and works claiming the benefits of various multinational treaties.
In recent years, Mr. Nicholson has gained significant experience in helping clients develop and protect their Intellectual Property related to commerce on the Internet, and in particular copyright, unfair competition, domain name and metadata issues.
Mr. Nicholson was among the inaugural appointments made by the U.S. Secretary of Commerce to the USPTO's Trademark Public Advisory Committee, created by the American Inventors Protection Act. In his capacity on this Committee, he served as an advisor to the Director of the USPTO on the agency's trademark operations, including its strategic goals for improvement, enhanced performance, budget issues and user fees.
Mr. Nicholson has been selected by in-house counsel and other unaffiliated peers for inclusion among Managing IP’s Guide to the World’s Leading Trademark Law Practitioners. He has been listed in Who's Who Legal USA's Trademark Directory as one of the nation's expert trademark attorneys, and serves on the GWU Law School Intellectual Property Advisory Board.
Mr. Nicholson has authored many articles on U.S. and comparative copyright and trademark law/counterfeiting, and related subjects, and has lectured on such issues for a variety of organizations, including The International Trademark Association, for which he also is active in committee work.
At Kenyon and Kenyon, Mr. Nicholson serves on the Strategic Planning and Diversity Committees. Outside the firm, he serves on the board of several non-profit and for-profit corporations. He also regularly participates in pro bono work, particularly through representation of artists and arts organizations through the New York chapter of Volunteer Lawyers for the Arts. | 