Joel handles U.S. and international intellectual property counseling, protection and enforcement matters.
His clients include lifestyle and fashion companies, start-ups, hotels and restaurants, financial services firms, wine and food companies, game publishers, a major sports organization, global charitable organizations and foundations, and prominent artists and designers.
Joel has extensive experience managing and resolving complex problems and disputes, and overseeing worldwide trademark and copyright programs and proceedings.
He practices before the Trademark Trial and Appeal Board, advises clients on anti-counterfeiting and litigation, and has assisted clients with licenses, strategic alliances, publishing and technology agreements and the intellectual property aspects of private placements, mergers and acquisitions, joint ventures, financings and reorganizations.
“When I’m away from the office, I’m either biking, mountain hiking, running, skiing, scuba diving, or traveling along with my spouse 'the science professor, former IDF officer, and superwoman' and four amazing kids.”
Honors & Recognitions
“First class all round, Joel Schmidt and his team are responsive, thorough, pragmatic and commercial. Joel himself is a brilliant lawyer and strategist, who likes to be hands-on; working with him is not only super-productive and effective, but also fun.” 2021 WTR 1000 – The World’s Leading Trademark Professionals
“Joel Schmidt stands our for practical, straight forward advice often coming up with solutions that are unbeatable.” 2020 The Legal 500.
“Joel Karni Schmidt is a most experienced lawyer, very reasonable and pleasant to work with, His advice is much appreciated.” 2020 The Legal 500.
“Joel Karni Schmidt – a creative thinker and miracle worker when it comes to helping clients avoid costly litigation while still coming out on top of disputes.” 2020 WTR 1000 – The World’s Leading Trademark Professionals
"[R]ecommended is Joel Karni Schmidt, who is an 'outstanding lawyer', 'always available' and 'very friendly and attentive'." 2019 The Legal 500.
"Deft all-round strategist and resolver of difficult disputes Joel Schmidt is 'very hands on, responsive, pragmatic and cost effective' and unanimously considered a 'delight to deal with'." 2019 WTR 1000 – The World’s Leading Trademark Professionals
"Fellow prosecution and counselling specialist Joel Karni Schmidt is one of the brightest and most experienced trademark attorneys around and is known for his pragmatic advice, robust negotiation skills and commercial acumen. One peer reports, 'He is a really thoughtful professional and has a knack for choosing battles wisely and steering clients away from unnecessary confrontations'." 2018 WTR 1000 – The World’s Leading Trademark Professionals
Who's Who Legal Trademarks (Law Business Research Ltd) (2020)
Named in WTR 1000 World Leading Trademark Professionals, Individuals: for Prosecution and Strategy (2018 to present); Gold Band for Prosecution and Strategy (2020 to present)
Named in the Legal 500 -Intellectual Property - Trademarks, non-contentious (2015)
Named in New York Super Lawyers (2019 – present)
Community & Professional Activities
International Trademark Association - Internet Committee, Future of IP on the Internet Subcommittee - Member (2018-present)
The Copyright Society of the USA – Member (2000-present)
New York Intellectual Property Law Association - Trademark Law Committee - Member (2013-present)
New York Intellectual Property Law Association - Copyright Law Committee - Chair (2011-2013), Member (2013-present)
International Trademark Association - Internet Committee, IANA Transition Subcommittee - Member (2016-2018)
International Trademark Association - Emerging Issues Committee, Issues Identification Subcommittee - Member (2012-2016)
American Intellectual Property Law Association - Special Committee on Israel - Co-Chair (2011-2012)
New York City Bar - Copyright & Literary Property Committee - Member (2008-2010)
New York Intellectual Property Law Association - Privacy Law Committee - Member (2008-2011)
International Trademark Association - Legislation & Regulation Committee, Middle East, Africa & South Asia Subcommittee - Member (2005-2007)
Fordham Fashion Institute Clinic, Volunteer (2012-present)
Simon Wiesenthal Center, International Leadership Council (2016)
Represented the New York City Bar Association at the United Nations Commission on International Trade Law (UNCITRAL) Third International Colloquium on Secured Transactions in Vienna, Austria (March 2010)
Cardozo/BMI Entertainment and Communications Law Moot Court Competition, Judge (2003-2005)
U.S. International Film and Video Festival, Judge (2002)
- Was a law clerk at the Supreme Court of Israel.
- He represents and counsels an array of multi-national companies, start-ups, disruptors, and non-profit organizations in a wide range of industries with respect to trademark clearance, protection and enforcement in the U.S. and internationally.
- Clients include J. Crew, Madewell, Warby Parker, Nasty Pig, Thompson Hotels & Resorts, Sixty Hotels, Central European Media Enterprises, Mondi Worldwide, Happify.com (new positive psychology website and App.), PrimeClerk.com (web-based solution to bankruptcy administration), World Wild Fund for Nature (WWF), Wolfgang’s Steakhouse, Cannonball Wine & Spirits, and The Forward newspaper.
- Joel often speaks, writes, and organizes programs on emerging IP issues, such as IP issues relating to the use of social media, hashtags and emojis, and blogs.
- He is an active member of the International Trademark Association’s Internet Committee.
Schulte Roth & Zabel LLP - Associate (1998-2000)
The Supreme Court of Israel, Justice Dorit Beinisch - Law Clerk (1996 - 1998)
U.S. Attorney's Office (E.D.N.Y.) - Intern (1994)
- Fashion Industry Insight – A Not-So-Sweet Reminder of the Importance of Trademark Clearance Searches03.02.2021
- Four CLL Attorneys are Attending the 2020 International Trademark Association (INTA) Annual Meeting & Leadership Meeting11.16.2020
- Legal 500 United States 2015 again recommends CLL as a National Top Tier Firm in the field of Copyright Law06.04.2015
- Court Denies Puck's Request for Preliminary Injunction Related to Wolfgang's Steakhouse by Wolfgang Zwiener in Beverly Hills06.23.2008
- Cowan, Liebowitz & Latman, P.C., 114 West 47th Street, NY, NY 10036, 02.08.2018
- William Borchard, Mary Donovan and Joel Karni Schmidt will attend the International Trademark Association (INTA) Leadership MeetingWashington Marriott Marquis, 901 Massachusetts Ave., NW, Washington, DC 20001, November 7-10, 2017
- PLI New York Center, 05.11.2017
- The Broadmoor Hotel, Colorado Springs, Colorado, 04.20.2017
- Benjamin N. Cardozo School of Law, 11.06.2016
- PLI's Hot Topics in Advertising Law 2016, 06.09.2016
- Table Topic Moderator, Trademarking Hashtags and Emojis: An International PerspectiveInternational Trademark Association Annual Meeting, Orlando, FL, 05.24.2016
- NYIPLA Program, 11.04.2015
- Table Topic Moderator, The Relationship Between Trademark Prosecution and Trademark LitigationInternational Trademark Association Annual Meeting, San Diego, CA, 05.03.2015
- Table Topic Moderator, The Extraterritorial Application of U.S. Trademark LawInternational Trademark Association Annual Meeting, Hong Kong, SAR China, 05.14.2014
- Cardozo's Semi-Annual Fashion Law Symposium: This Season in Fashion Law: Tackling Challenges in Sourcing & Technology, 11.19.2013
- Christian Louboutin, S.A. v. Yves St. Laurent, Inc.New York State Bar Association CLE Program On the Heels of the Week: The Status of Fashion Protection, 03.2012
- The State of Social MediaCLL Program Selected Issues for the Restaurant, Food & Hospitality Industries, 11.17.2011
- The State of Social MediaCLL Program: Selected Issues for the Restaurant, Food & Hospitality Industries, 11.17.2011
- Negotiating a License Agreement: A Simulated Negotiation and Analysis of Real World Licensing Issues and StrategiesPractising Law Institute CLE Program Understanding the Intellectual Property License, 10.21.2011
- Fashion Company Blogs: A Legal Issues RoadmapCLL Fashion Seminar: Hot Topics - Selected Issues for the Fashion Industry, 06.15.2011
- Protecting Your Company's Names, Marks and ReputationCLL Restaurant, Food & Hospitality Industry Seminar: Eating, Sleeping & Tweeting, 11.16.2010
- Protecting Trademarks on the Internet: Current Legal Issues and Strategies in the Wake of Tiffany v. eBayUnited States Patent and Trademark Office Global Intellectual Property Academy Seminar and Study Tour for Latin American Judges Meeting with the New York State Bar Association, 11.05.2010
- Negotiating a License Agreement: A Simulated Negotiation and Analysis of Real World Licensing Issues and StrategiesPractising Law Institute CLE Program: Understanding the Intellectual Property License, 10.22.2010
- Social Networking Sites and Virtual Worlds: Trademark Issues and OpportunitiesNew York Intellectual Property Association CLE Program: Hot Topics in Trademark Law, 07.15.2010
- Recent Fashion Industry CasesCLL Fashion Seminar: Fashion 2.0: Social Media, Virtual Worlds and the Real World Too, 06.16.2010
- What's Cooking? Recent Suits and SettlementsCLL Restaurant, Food & Hospitality Industry Seminar: Eat. Drink. Sleep. Succeed.: Stategies for Success in Good Times and Bad, 11.18.2009
- Fashion Litigation Review: R is for Recession (and Recovery)CLL Fashion Seminar, 06.23.2009
- The 2006 Stop Counterfeiting in Manufactured Goods ActCLL Fashion Seminar, 2006
- Client Alert - The Supreme Court Decides That Some Trademark Office Tribunal Decisions Are Binding In Later Court Cases04.01.2015
- On My Mind Blog, 06.30.2015
- Apparel, Footwear & Accessories
- Broadcasting, Entertainment & Music
- Computer, Internet & Telecommunications
- Consumer Goods & Services
- Finance, Banking & Insurance
- Games & Toys
- Hospitality, Restaurant & Food
- Non-profits, Religious Organizations & Museums
- Pharmaceuticals, Health & Wellness
- Professional Services Firms
- Publishing & Printing
- Sports & Recreation
- The Supreme Court of Israel, Justice Dorit Beinisch - Law Clerk (1996 - 1998)
Benjamin N. Cardozo School of Law (JD 1996)
The London School of Economics and Political Science (MSc (Econs) 1995)
University of Colorado at Boulder (BA 1991)
- New York
- New Jersey
- United States District Court - Southern District and Eastern District of New York
- Hebrew (fluent)
- Spanish (proficient)