PROFESSIONAL EXPERIENCE

Arlen Olsen, has been recognized by Fortune Magazine as a Top-Rated Lawyer in Intellectual Property Law. Mr. Olsen is currently rated an AV attorney by Martindale Hubble. In 2013, Mr. Olsen was also featured on American Dreams, a Silicon Valley talk show as a leading expert in Intellectual Property. Mr. Olsen has over 25 years of experience in all aspects of intellectual property law, including infringement litigation and appeals, transfer and enforcement, patent and trademark prosecution including oppositions, cancellations, interferences, reexaminations and other post grant proceedings. Mr. Olsen is a founding Partner of Schmeiser, Olsen & Watts LLP and a former United States Patent Examiner. Mr. Olsen has prosecuted numerous patents that have been litigated and received damages in excess of $60 million dollars. Additional activities include teaching seminars and appearing as a guest lecturer on intellectual property matters for corporations and educational institutions and evaluating and consulting with clients regarding the scope, enforcement and protection of intellectual property rights. Named one of the top attorneys in business services (Intellectual Property) in the July/August 2010 Corporate Counsel Edition of Super Lawyers magazine and an AV rated attorney by his peers in Martindale-Hubbell. Mr. Olsen has been an adjunct professor of law at Albany Law School since 2005 where he teaches Patent Prosecution and Claim Drafting. Mr. Olsen graduated from George Mason University Law School in 1993 with distinction in Intellectual Property Law.

OTHER

AFFCO Zealand Ltd. v. Am. Fine Food Corp. 913 F.Supp.2d 1331 (S.D. Fl. 2012) (No. 10-cv-24105) and (No. 12-cv-21325) Prevailed on Opponent’s claims of breach of contract, specific performance, and trademark infringement; opponent’s untimely filing of claim for specific performance under Florida law; opponent’s untimely motion to add claim of trademark cancellation based on court scheduling order and Fed. R. Civ. P 15; opponent’s cancellation claim untimely based on time period and incontestability; opponent’s failure to file separate Fed. R. Civ. P. 56(d) motion for additional information when served with summary judgment motion and opponent did not have enough information to respond to summary judgment motion. View Details >

Clark v. Bluewater Key RV Ownership 2016 WL 4761853 (S.D. Fl.) (Opposition/Cancellation No. 91209747) TTAB Successfully opposed and cancelled mark. Trademark opposition Trial before TTAB; standing; priority; likelihood of confusion. View Details >

Power Equipment Systems Inc. dba Condensing Heat Exchanger v. Combustion Energy Systems (No. 04-3cv-0098) (W.D.Mass.) Successful settlement of patent infringement re heat exchangers.

Danko v. Longstreet Press, Inc. No. 2005-cv-109094 Superior Court Georgia Represented Author of best seller The Millionaire Next Door through local counsel for default judgment against literary book publisher for breach of contract in failing to pay author.

The Fort Miller Co., Inc v Con-Fab California Corp. et al. 11-cv-05473 (N.D. Cal.) Successfully settled patent infringement dispute for client after evidentiary court mediation proceeding.

In re Cancellation of the Trademark Magictime against Distribuciones Roma S. de R.L. in Honduras Successfully cancelled Trademark in Honduras opposition proceeding.

Manildra Milling Corporation v. Magic Time Int’l, LLC (Cancellation No. 92062262) Trademark cancellation proceeding; coexistence agreement executed regarding industrial flour and products that can be made with flour

BG Industries v. MPL, Ltd (No. 02-cv-02055) (C.D. Cal.) Successfully dismissed Declaratory Judgment for Patent infringement dispute and patent ownership for inflatable cushioning device.

Northeast Center for Beekeeping, LLC DBA Betterbee v. Neidig (Cancellation No. 92063761) Trademark cancellation before TTAB, standing, priority and likelihood of confusion. Cancelled mark of third party and registered client’s mark.

Banana Republic (Apparel) LLC v. Nerenberg (Opposition No. 91195018 TTAB) Represented Brand Owner in dispute with Banana Republic over BR mark.

Nationwide Tarps, Inc. DBA NTI Global v. Handwerker and Midwest Canvas (No. 04-cv-1188) (N.D.N.Y.) First to file in district court, race to the courthouse, jurisdiction, and declaratory judgment action; false advertisement claims; declaratory judgment action of non-infringement of patents; failure to mark dismissed because it is was a defense to patent infringement rather than an affirmative claim; actions in Illinois and New York.

Otis Elevator Company v. Otis Products, Inc. (Opposition No. 91169715 TTAB) Defended small company in Trademark opposition before TTAB over Otis mark.

Zalewski v. T.P. Builders, Inc. et al. 875 F. Supp.2d 135 (N.D.N.Y. 2012), 107 U.S.P.Q.2d 1143 (No. 10-cv-876 and 11-cv-1156) Copyright infringement; Represented Defendant, T.P. Builder’s who won on summary judgment motion against plaintiffs’ copyright infringement claims and failure to sufficiently plead violation of Digital Millennium Copyright Act with respect to home designs and architectural works; DMCA; motions to dismiss and summary judgment motions by other defendants against plaintiffs’ copyright infringement claims; district court determined that the discovery rule will be used for copyright infringement rather than the injury rule which does not help Defendant, T.P. Builders and other defendants; won attorney’s fees at district court level, Second Circuit provided directive of deciding attorney’s fees and lawsuit not unreasonable by plaintiff and we subsequently lost attorney’s fees on remand. View Details >

Birmingham v. Robotics, Incorporated (No. 04-cv-0753) Issues of patent infringement by Michael Birmingham; successfully invalidated patent based on-sale bar; trade secret misappropriation alleged; issue of whether invention is owned by former employee, Michael Birmingham or the company, Robotics; issue of failure of employee to assign invention over to company and breach of confidentiality agreement

Stealth International Inc. v. Ross Valve Manufacturing Company, Inc. (No. 07-CV-0523A) (W.D.N.Y.) Settled patent infringement defense against Ross Valve

Whipps, Inc. v. Ross Valve Manufacturing Company, Inc. (No. 14-cv-400450) (District of Mass Central Division) Injunction for trade secret misappropriation and trademark infringement

Saratoga Spring Water Company v. Saratoga Juice Bar, LLC (Cancellation No. 92063492 TTAB) Defended petition to cancel trademark, Saratoga Juice Bar against Saratoga Spring Water Company in TTAB

Specialty Silicone Products v. Trico Products and Genuine Parts Company, Inc. (No. 1:02-cv-504) Dispute regarding windshield wiper blades. Case successfully settled.

Tempur-Peduc v. Simmons Bedding Company et al. (No. 09-CV00032) (S.D.Va.) Represented defendant in large bedding patent infringement dispute. Case successfully settled.

Western Supreme Buddha Ass’n, Inc. v. Oasis World Peace and Health Foundation, 2011 WL 856378, (N.D.N.Y. 2011) (No. 08-cv-1374) Secured for client default judgment in claims under the Lanham Act, 15 U.S.C. § 1125(a), and under state law sounding in trademark infringement, unfair competition, conversion, and defamation. View Details >

John Mezzalingua Associates, Inc. v. International Trade Comm’n, 660 F.3d 1322, 33 ITRD 1401, 100 U.S.P.Q.2d 1462, (Fed. Cir. 2011) Patent prosecution counsel in successful ITC proceeding and Federal Circuit Appeal in which the client was granted a favorable general exclusion order.

John Mezzalingua Associates, Inc. v. Arris Intern Inc., ., 2003 WL 23282752, 2003 Markman 23282752, (W.D. Wis., 2003) (NO. 03-C-353-C) Patent prosecution counsel in patents successfully litigated through trial and found to be valid and wifully infringed resulting in the grant of attorney’s fees.

International Karate Organization Kyokushinkaikan and Shokei Matsui v. Henriot Zephirin, 2008 WL 902841, (Trademark Tr. & App. Bd., February 27, 2008) Opposition 91166753 against Serial 76566572. Successful trial in cancellation of mark of competitor before the Trademark Trial and Appeal Board for well-known Karate mark. View Details >

Hsin Ten Enterprise USA, Inc. v. Clark Enterprises, 149 F.Supp.2d 60, 2001 Markman 753779, (S.D.N.Y. 2001) (No. 00-CIV-5878 (SAS) Obtained highly favorable Markman ruling in Design Patent case resulting in settlement and dismissal of case. View Details >

New York Racing Ass’n, Inc. v. Perlmutter Pub., Inc., 959 F.Supp. 578, 42 U.S.P.Q.2d 1844, (N.D.N.Y. 1997) (No. 95-cv-994 (FJS)) Successful summary judgment motion in trademark infringement case where artist was found not to infringe copyrights of the famous Saratoga Race Course. View Details >

Education:

• B.S., Mechanical Engineering, Brigham Young University 1987
• M.S., Mechanical Engineering, Brigham Young University 1988
• J.D., with distinction in intellectual property law, George Mason University 1993

Bar Admissions:

United States Patent Office
Court of Appeals for the Federal Circuit
Second Circuit Court of Appeals
South District of New York
Northern District of New York
New York State – third department
State of Arizona

PUBLICATIONS

Schmeiser, Olsen & Watts Hosts International Virtual Meeting – Schmeiser, Olsen & Watts hosted a Virtual Meeting attended by international attorneys and practitioners around the world.  The meeting was attended by 15 law firms from 14 different countries, and proved to be a great opportunity to discuss the state of the global intellectual property community in light of the pandemic and other global events […]

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