Profile
Joel Feldman, Vice Chair of the Trademark & Brand Management Group, counsels companies, organizations, and individuals on the protection of their intellectual property rights. He focuses his practice on establishing effective domestic and international brand management best practices, and resolving intellectual property controversies between his clients and third parties, including trademark, copyright, domain-name and right-of-publicity disputes.
- Preparing and negotiating license, coexistence, and purchase agreements
- Defending and prosecuting trademark oppositions and cancellations
- Appealing adverse trademark registration decisions and responding to Trademark Office registrations refusals
- Evaluating the strength, availability, and enforceability of new brand names
- Evaluating and resolving potential brand threats and litigation options
- Developing brand standards, style guides, and philosophies for internal and external use
- Recovering domain names from cybersquatters and infringers
- Enforcing intellectual property rights on social media and user-generated content sites
- Preparing and presenting intellectual property seminars for in-house business and legal meetings
- Developing effective and affordable domestic trademark and copyright registration portfolios
- Expanding trademark protection abroad through the Madrid Protocol and national applications
- Terminating copyright transfers under Copyright Act Sections 203 and 304
- Preparing and negotiating book publishing and literary agent agreements
Capabilities
Experience
- Represented brands such as GRAMMY Awards, Margaritaville, Skyy Vodka, CrossFit, The Limited, Michael Jackson, and Wild Turkey in inter partes proceedings before the Trademark Trial and Appeal Board.
- Recovered dozens of infringing domain names from cybersquatters through the Uniform Domain-Name Resolution Policy.
- Created several worldwide trademark portfolios through the Madrid Protocol.
- Negotiated three publishing agreements on behalf of a New York Times bestselling children’s author.
- Drafted and negotiated license agreements for goods and services in a wide variety of industries including clothing, retail stores, restaurants, food, beverage, and other consumer goods.
- Successfully resolved hundreds of intellectual property disputes through settlement and co-existence.
- Supervised and advised litigation counsel in all aspects of trademark enforcement and infringement defense.
- Negotiated licensing and sponsorship agreement between state-owned facility and NFL team.
- Negotiated on behalf of a sports drink manufacturer for exclusive sponsorship of a professional sports league.
- Negotiated stadium naming rights agreements on behalf of team-owned facility.
- Successfully obtained hundreds of trademark registrations after initial Trademark Office refusal.
- Coordinated copyright termination for a world-famous singer and songwriter.
- Justice Charles T. Wells, Florida Supreme Court, 2003
Recognition & Leadership
- Listed, The Best Lawyers in America, Litigation - Intellectual Property; Trademark Law, 2015-2021
- Listed, Super Lawyers magazine, Georgia Super Lawyers, "Rising Star," 2013-2020
- Listed, The Legal 500 United States, "Intellectual Property - Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing)," 2020
- Listed, World Trademark Review, 2014-2020
- "WTR Global Leaders," 2020
- "WTR 1000," 2014-2019
- Ranked in Georgia, General Trademarks, 2014-2019
- Listed, Georgia Trend magazine "Legal Elite," 2013, 2016-2017, and 2019
- Recipient, Lexology's "Client Choice" Award, Intellectual Property — Trademarks: Georgia, 2017
- Listed, Fulton County Daily Report, "On the Rise," 2016
- Listed, Atlanta Business Chronicle, "40 Under 40," 2015
- Team Member, a U.S. News - Best Lawyers® "Law Firm of the Year" in Entertainment Law - Music, 2011-2012
- Florida Blue Key
- University of Florida Hall of Fame
- Rated, AV Preeminent® 5.0 out of 5.0
- Member, International Trademark Association
- Brands for a Better Society Committee, 2020-2021
- Impact Studies Committee, 2016-2019
- Vice Chair, Jacobson Leadership Institute, 2015, 2016
- Member, LEAD Atlanta, Class of 2014
- Board Member, Atlanta American Jewish Committee, 2012-Present
- Member, Executive Committee, 2012-2014, 2015-Present
- Co-Chair and President, ACCESS Atlanta, 2012-2014
- Vice-Chair/Vice President, ACCESS Atlanta, 2009-2012
- Participant, Jacobson Leadership Institute, 2013
- Board Member and Legal Advisor, Classroom Champions
- Previous Board Member and Legal Advisor, National Football League Alumni Association, Atlanta Chapter
- Member, American MENSA
- Member, State Bar of Georgia
- Member, The Florida Bar
- Alumnus, Alpha Epsilon Pi Fraternity
Credentials
Education
-
J.D., magna cum laude, University of Florida Levin College of Law, 2004
- Order of the Coif
- Member, Florida Law Review
- Member, Florida Journal of Law and Public Policy
- Teaching Assistant, Appellate Advocacy
- Book award in Trademarks, Advanced Appellate Advocacy and Professional Responsibility
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B.A., summa cum laude, University of Florida, 2001
- Best Undergraduate Thesis Award in Political Science Department
Admissions
- Florida
- Georgia