Jeffrey Kass

Partner

  • location icon Denver, CO
    1700 Lincoln Street
    Suite 4000
    Denver, CO 80203
  • location icon Madison County, IL
    103 W. Vandalia St.
    Suite 300
    Edwardsville, IL 62025

Jeffrey Kass is a partner in the Denver office of Lewis Brisbois and a member of the Intellectual Property & Technology Practice. Recognized by the National Law Journal as an "Intellectual Property Trailblazer," an award given to only 50 lawyers annually, as well as by Super Lawyers (an honor given to less than 5 percent of lawyers) for Intellectual Property Litigation, Jeffrey Kass focuses his practice on providing clients with intellectual property, commercial litigation and business counsel.

Jeffrey is a trial lawyer focusing on trademark, patent, trade secrets, and copyright litigation, as well as technology law, business and commercial disputes. Jeffrey’s practice also focuses on contract issues, licensing, Internet domain name disputes and related areas of law. He has handled preliminary injunctions and temporary restraining orders, jury and non-jury trials in federal and state courts, and disputes before the U.S. Patent & Trademark Office. Jeffrey has secured multiple intellectual property victories in federal court, including winning a significant trademark jury trial in 2009, winning a complex copyright infringement jury trial in 2015, and obtaining dismissal of two high-profile trademark lawsuits in 2012 and 2013. Also in 2013, his efforts led to a favorable settlement in a high-profile patent case for less than one percent of the amount sought by the plaintiff. In 2014, he obtained a favorable settlement in a significant copyright infringement case. In 2016, Jeffrey obtained summary judgment of non-infringement in a patent case involving computer equipment. Jeffrey also provides expert witness opinions in trademark and unfair competition cases.

He advises companies on various business planning issues, and he is general counsel to numerous startup and emerging companies across the country. Small Business Monthly named Jeffrey one of the Top 10 lawyers for entrepreneurs.

He has significant experience in the vehicle service contract, organic and natural products industry, advertising, apparel, luggage and consumer electronics areas.

In addition, Jeffrey is the author of numerous articles and he has given many presentations to businesses and lawyers on a wide range of intellectual property litigation and business related topics. Jeffrey also is an adjunct law professor teaching intellectual property litigation, and he is active in Startup Colorado and a sponsor and judge for the City of Denver's Business Plan Competition, among many other commitments to professional and community service.

Publications

  • "A Rare 'Spaghetti' Software Code Copyright Decision", Law360, June 25, 2015
  • "Trade Secrets 50 State Survey", DRI 2010, Co-editor and author of Missouri chapter
  • Author, "Implications of Keyword Advertising", For the Defense, August 2010
  • Chapter Author, "Trade Secrets and Agreements Not to Compete, A State-by-State Compendium", DRI, 2009
  • Co-Author, "Revisiting Defense of Trademark Infringement Claims – Recent Case Law Update", The Business Suit, May 2009
  • Author, "New Help on the Way for IP Protection", The Defense Blog, January 2009
  • Author, "New Help is on the Way for IP Protection – The Prioritizing Resources and Organization for Intellectual Property Act (PRO-IP)", The Business Suit, December 2008
  • Author, A Rose By Any Other Name . . . Designer Joseph Abboud Enjoined From Using His Name:  Analysis of JA Apparel Corp. v. Abboud, 07 Civ. 7787 (S.D.N.Y. June 5, 2008), August 2008
  • Author, "KSR Changes Obviousness Analysis", The Business Suit, June 2007
  • Claims Chapter Author, "Fair Use and Nominative Fair Use in Trademark Cases", Defending Intellectual Property, 2006
  • Author, "The Real Confusion in Trademark Law, Genericness vs. Descriptiveness", DRI’s For the Defense, August 2006
  • Author, "Anonymous E-mailers – How to Find and Stop Them from Breaking the Law", Defense Research Institute’s e-News Publication, July 2006
  • Author, "Tips for Protecting Your Company’s or Client’s Trademark", Defense Research Institute’s The Business Suit, June 2006
  • Co-Author, "The Criminal Reach of the Computer Fraud and Abuse Act", December 2005
  • Author, "Cease and Desist Letters and the Declaratory Judgment Act in Patent Cases – A New Federal Circuit Case All But Closes the Door", Defense Research Institute’s The Business Suit, December 2005
  • Author, "Offensive Use of the Patent Reexamination Process When Litigation Takes an Unexpected Turn", Defense Research Institute’s The Business Suit, November 2005
  • Author, "The U.S. Patriot Act:  Mohammed Atta Meets John Gotti", March 2004
  • Author, "Spam Bam Thank you Ma’am", PC Journal, April 2002
  • Co-Author, "Trademark Litigation", Boot Camp, 2016

Representative Cases

  • Represented one of the largest retailers in the U.S. in a patent infringement case involving computer equipment. Obtained summary judgment of non-infringement for the client.
  • Represented U2logic in copyright litigation over software code. Successfully tried case to a jury and obtained favorable verdict for U2logic.
  • Represented multiple companies in cases involving keyword advertising and trademark infringement that resulted in cessation of keyword advertising campaigns. Companies sometimes purchase keywords on Internet search engines so that their advertisements display as sponsored links in search results when the keyword is searched. Some companies buy competitors’ trademarks as keywords. Successfully stopped several of such campaigns.
  • Represented Primal Wear in copyright litigation over its cycling jersey designs. Case settled favorably for client.
  • Represented major computer company in patent litigation involving cases for computer tablets. After Markman briefing, case settled for less than one percent sought by plaintiff.
  • Represented bebe, inc. as second chair trial attorney in lawsuit filed against The May Company over use of the mark “be” in connection with women’s clothing. After a bench trial on whether to issue an injunction, the court entered an order requiring defendant to cease all use of the infringing mark. This was a high-profile case in the apparel industry.
  • Represented Fuse Advertising as first chair trial attorney in trademark lawsuit filed by the owner of the federally registered mark “Fuse,” which the client had used in connection with advertising services. Despite identical marks in the same industry, the court refused to order Fuse to cease using the same mark.
  • Represented Just Enterprises as first chair trial attorney in jury trial over the mark 1-800-JUSTICE. Jury found defendant to willfully infringe the client’s mark, and the court subsequently entered an award of enhanced damages and attorneys’ fees. The main issue in the case was whether the mark 1-800-JUSTICE was descriptive of legal services.
  • Represented American Racing Equipment in trademark litigation that was resolved in favor of our client and resulted in cessation of use of the mark in question following extended litigation and discovery. The issue in the case related to use of a surname mark.
  • Represented luggage company in patent litigation that resulted in multiple favorable settlements obtained against competitors using luggage features subject to utility and design patents. Successfully removed from the market more than 12 different infringing competitor pieces of luggage containing the feature.
  • Represented Barker Company in design patent infringement litigation that, following extended discovery, a motion for summary judgment and a motion for sanctions, ended with plaintiff voluntarily dismissing its case against the client with prejudice. The case involved refrigerated cases used by grocery stores to display flowers.
  • Represented Bonita Bay in trademark litigation that ended in the defendant ceasing from its use of the mark after extended discovery and expert survey results. Bonita Bay owned its mark in connection with golf communities and real estate. Defendant was using a similar mark in connection with a medical practice.
  • Represented maker of camping equipment in patent litigation involving camping and kitchen equipment. After favorable Markman ruling, client was permitted to continue making its camping and kitchen equipment.
  • Represented publisher in a trademark infringement matter in the food industry in which we obtained dismissal of the complaint based on lack of use of the alleged mark as an actual trademark, fair use and other matters.
  • Represented famous maker of cutting boards used in cooking in a patent infringement and trade secrets suit. After Markman hearing, case settled very favorably for client.

Community Activities

  • Jake Jabs Center for Entrepreneurship, University of Colorado-Denver Business School, Board of Directors, 2015-Present
  • Camp Mak-A-Dream Montana, 2013-2015
    • Volunteer counselor for kids diagnosed with cancer, 2013-2015
    • Board of Directors, 2015-Present
  • City of Denver Jumpstart Biz Plan Competition, 2012-Present
    • Judge, panelist
    • Sponsor
  • United Way of Denver's Vision Program, 2012-2013, Reading Support for at-risk elementary-age children
  • The Downtown Denver Partnership
    • Leadership Program, 2012
    • Business Incubator Committee, 2011-2012
  • St. Louis Economic Council's Enterprise Centers, Board of Directors, 2007-2012
  • Naturally Boulder, Pitch Slam Business Plan Competition, Sponsor, 2011-2012
  • Anti-Defamation League, Missouri Region, Board of Directors, 1997-2004
  • Shaare Chesed Synagogue, Board of Trustees, 2004-2007
  • Vaad Hoer of St. Louis, Board Member, 2004-2007
  • Epstein Hebrew Academy, Board of Trustees, 2004-2005
  • Urban League of Metropolitan St. Louis
    • Board of Directors, 2001-2002
    • President of Young Professionals, 2001-2002
  • Teens Speak Out, Bar Association Program in St. Louis City Schools, Volunteer
  • Jewish National Fund, St. Louis Leadership Cabinet, 2001-2002
  • Matthews Dickey Boys Club, Tutor, 1995-1996
  • ShatterMask Theatre, Board of Directors, 1995-1996
  • The Ohio State University Alumni Association, St. Louis And Denver Chapters
  • Legal Services of Eastern Missouri, Volunteer Lawyers Program, 1995-1999; 2010-2011
  • Jewish Federation of St. Louis
    • Young Professionals Division
    • Board of Directors, 1996-1998
  • B'nai B'rith Youth Organization, High School Youth Advisor, 1995-2000

Professional Presentations

  • Intellectual Property Issues for Entrepreneurs, The Commons on Champa, Campus for Entrepreneurship, May 2016
  • Trademark Litigation Bootcamp for Young Lawyers, DRI, Nashville, TN, May 2016
  • Patent Trolls, Business Law Institute, Denver, CO, Summer 2015
  • The Top 10 Intellectual Property Issues Every CEO Should Know, University of Colorado, Denver Business School, Denver Startup Week, 2014, 2015
  • VIDEO - Social Media - What Every Business Owner Needs to Know, September, 2012
  • I Have a Great Idea, Now Who Can I Tell?, Startup Denver, April 5, 2012
  • Cease and Desist Letter - What Do I Do Now?, Startup Denver, April 5, 2012
  • How Do I Choose a Company or Brand Name?, Startup Denver, April 5, 2012
  • Do I Own My Company's Website?, Startup Denver, March 16, 2012

Admissions

Missouri

Illinois

Colorado

U.S. District Court, Eastern District of Missouri

U.S. District Court, Western District of Missouri

U.S. District Court, Southern District of Illinois

U.S. District Court, Central District of Illinois

U.S. District Court, Northern District of Illinois

U.S. District Court, Colorado

U.S. District Court, Eastern District of Texas

U.S. Tax Court

8th Circuit Court of Appeals

7th Circuit Court of Appeals

11th Circuit Court of Appeals

Associations

  • The Missouri Bar
  • Bar Association of Metropolitan St. Louis
  • American Bar Association
  • American Intellectual Property Law Association (INTA)
  • Defense Research Institute (DRI)

Awards & Honors

  • National Law Journal, Intellectual Property Trailblazer, 2016
  • Missouri & Kansas Super Lawyers, 2012-2014, 2016
  • Top Ten Lawyers for Entrepreneurs, Small Business Monthly, 2009

Education

University of Toledo College of Law

Juris Doctor, cum laude

  • Law Review, Notes and Comment Editor 
  • Dean's Scholar
  • Student Bar Association Scholar

The Ohio State University

Bachelor of Arts

  • Sphinx Senior Honor Society
  • President's Leadership Citation

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