Intro
Noel co-chairs the firm's Intellectual Property practice. He concentrates on trademark and copyright enforcement, litigation, counseling, prosecution, and licensing. He specializes in the protection and enforcement of trademarks, designs, images, and a variety of other content. Noel has worked with clients in a variety of fields, including the outdoor and retail industries, software/internet, product and furniture design, character merchandising, food and beverage, music, and insurance coverage.
Noel is a member of the INTA Board of Directors and the Copyright Society of the USA Board of Trustees, reflecting his leadership in the IP field. He is also a member of INTA's Panel of Mediators.
He is a frequent speaker on copyright and trademark law at INTA, Copyright Society and ABA meetings, among others, on topics including product design protection, trademarks on the Internet and damages in trademark and copyright cases. In addition, in 2017 Noel co-authored a US Supreme Court amicus brief on behalf of INTA.
Education
Academic Distinction
Associate Editor, Santa Clara Law Review
Admissions and Courts
Role
Intellectual Property Practice Co-Leader
Major automobile company. Recently took over trademark and advertising clearance and filing responsibilities. Among many other things, have cleared and filed for numerous marks, designed and implemented enforcement strategy, and revised longstanding master trademark license agreement.
National organic dairy producer. Took over representation of trademark portfolio. Counseled company on strategy for resolving longstanding block of pending trademark applications. Implemented cancelation strategy based on bad faith and non-use; resulted in negotiated settlement and co-existence agreement, clearing pathway for registration of all of company’s long-pending trademark applications.
Leading international outdoor equipment manufacturer and retailer. Decades-long relationship managing global trademark portfolio including clearance, filing, enforcement and defense. Among many matters, implemented strategy to successfully oppose EU trademark application infringing client’s house mark; involved complex analysis and evidence of priority of use/registration in multiple EU member countries, and resulted in withdrawal of infringing EU application.
Major furniture retailer. Counseled the company on international protection of classic modern furniture designs and defended the retailer against multiple enforcement actions involving such designs. These matters settled favorably for the client through a mutually beneficial business deal.
International character merchandising and entertainment company. Among many matters, l led the team in preparing, filing and successfully arguing three concurrent trademark and copyright infringement actions, obtaining TROs, preliminary and permanent injunctions, monetary settlements, and consent judgments.
International outdoor apparel and gear retailer. Took over the management of the company’s global trademark portfolio, streamlining and re-focusing the scope of coverage in a cost-effective manner. As a result, the client saved tens of thousands of dollars while ensuring its important countries and classes of goods and services are covered.
Leading finance technology company. Handle all aspects of global trademark portfolio.
Major cloud software company. Led global trademark clearance, prosecution and enforcement efforts.
The International Trademark Association (INTA): Member, Board of Directors, (2022-present) (Chair, Compensation & Benefits Committee Jan. 2024-present); Copyright Committee Chair 2020-21, and Vice-Chair 2018-19; numerous committee memberships
The INTA Mediation Panel, 2008-present
The Copyright Society of the U.S.A.: Member, Board of Trustees, 2023-present; 2024 Annual Meeting Planning Committee; Past Executive Committee Member (two terms); Past Trustee (two terms) and Chapter Chair
IP Advisory Council, University of Akron School of Law: Member, 2000-present; Past Chair, Vice-chair and Secretary
"Mercedes-Benz Gears Up for Logo Showdown," World Intellectual Property (April 2023)
World Trademark Review, Bronze Category - "Individuals: Enforcement and Litigation" (2019-2024)
"Trademark Enforcement and Anticounterfeiting," co-presenter, International Trademark Association Roundtable (July 2023)
"Hot Topics and Current Issues in Copyright Law in the United States and the European Union," moderator, INTA Leadership Meeting (November 2019)
"The U.S. Copyright Office Speaks: Hot Topics for Practitioners," moderator, INTA Annual Meeting (May 2019)
"Copyright Protection for Logos," INTA Annual Meeting (May 2017)
"Copyright Update," Akron Law IP Symposium (March 2017)
"Mediation Through INTA and WIPO," WIPO/USPTO (2016)
"Protection of Product Design in the U.S.," INTA Annual Meeting (2009)