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Jeffrey L. Costellia - IP Counseling & Transactions - Nixon Peabody LLP
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Jeffrey L. Costellia



Jeffrey Costellia is a co-leader of the Intellectual Property group and also chairs the firm's Global Strategies Committee. He represents both U.S. and foreign companies to develop overall, global intellectual property protection strategies involving all phases of patent and trademark prosecution and enforcement.

What do you focus on?

I focus my practice in three main areas, capitalizing on over 25 years of experience, to provide practical IP protection strategies that help clients meet or exceed their business objectives.

Tailored Patent Protection

I represent clients ranging from startups to Fortune 500 companies, helping them successfully navigate the ever-changing Patent Laws before the U.S. Patent and Trademark Office. I work closely with inventors and business managers to ensure that the patents I secure align with my client's business plans. I regularly review competitor patent validity and infringement issues and have helped clients obtain valuable patent rights covering electronic circuits, semiconductors, LCD and electroluminescent displays, chemical composites and polymers, locomotive and other transportation monitoring, photonics and sensing technologies and large scale product conveying equipment.

In-Depth Brand Protection

I work with clients to develop and protect their brand from initial product development through launch. I assist with mark selection, clearance, registration, and enforcement against third-party infringers. I tailor trademark protection strategies to fit my client's industry and global scope, whether it be for travel and entertainment services, cosmetics, transportation monitoring and sensing technologies, large scale product conveying equipment or sporting goods products and services.

IP Enforcement in the Federal Courts and Trademark Trial and Appeal Board

I have considerable experience in patent and trademark litigation in the United States federal courts and trademark cancellation and opposition proceedings before the Trademark Trial and Appeal Board. I develop comprehensive, broad-based intellectual property plans that give clients a greater return on investment.

What do you see on the horizon?

I foresee companies placing a greater emphasis on increasing the international scope of their IP protection and an increasingly competitive and global marketplace.

Presentations

  • “Google v Oracle,” 2021 International Bar Association Annual Conference, Washington, DC, November 4, 2021
  • “Man versus Machine,” 2019 International Bar Association Annual Conference, Seoul, South Korea, September 26, 2019

Publications

  • “Reactor, Workshop 1: Did They or Did They Not? The Standards for Proving Patent Infringement,” Asian Patent Attorneys Association, Auckland, New Zealand, November 4–7, 2017
  • Coauthor of a chapter in the 2012 edition of The International Comparative Legal Guide to: Trade Marks, published by Global Legal Group Ltd.

Brunetti case attempts to further determine “unprotected speech”

Rochester Business Journal | July 26, 2019

This column by Rochester Corporate partner Jeremy Wolk analyzes a recent Supreme Court decision on whether individuals have a First Amendment right to register federal trademarks of “obscene” words and phrases. The column is based on an NP Alert written by Intellectual Property partners Jeff Costellia, Jason Kravitz and Deanna Kunze, and associate Anthony Duncan.

Contact

Jeffrey L. Costellia

Partner
Chair, Global Strategies Committee
Co-leader, Intellectual Property

Washington, DC

Phone: 202-585-8207

Singapore

Phone: +65 8299 3682


Fax: 202-585-8080

George Washington University, J.D., with honors

University of Missouri-Rolla, B.S., Chemical Engineering, magna cum laude

District of Columbia

Virginia

U.S. Patent and Trademark Office

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals, Fourth Circuit

U.S. District Court, Eastern District of Virginia

  • World Trademark Review 1000—Recommended as a leading DC lawyer for trademark prosecution and strategy (2014–2021)
  • Managing Intellectual Property—Recognized as an “IP Star” (2013–2021)
  • IAM Patent 1000—Ranked as one of the world’s leading patent practitioners (2014–2021)
  • IAM Strategy 300—Ranked as one of the world’s leading IP strategists in the legal and IP management consultancy sectors (2020-2021)
Jeff is a member of the American Bar Association, the American Intellectual Property Law Association, and a particularly active member of the International Trademark Association. Jeff is also a regular attendee of the Asian Patent Attorneys Association.
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