Joelle A. Milov

Joelle represents clients in all aspects of securing and defending intellectual property rights:  She assists clients in prosecuting and enforcing their trademarks domestically and internationally.  She also has extensive experience in intellectual property litigations in federal courts and the Trademark Trial and Appeal Board, as well as domain name disputes brought by UDRP.  Additionally, Joelle has significant experience in litigating cases in New York State Courts and has represented clients and served as local counsel in general commercial cases in these venues.  She represents clients in a wide range of industries, including those in the music, food, financial services, consumer products, and professional sports industries.

“I enjoy hiking, kayaking, and baking.”

Honors & Recognitions

Best Lawyers: Ones to Watch (Intellectual Property Law): 2021-2022

Community & Professional Activities

New York City Bar Association

(Art Law Committee Member (2014-2017), Affiliate (2017-2018)); (Trademark & Unfair Competition Committee Member (2017-2020))

The Copyright Society of the USA

Federal Bar Council

Federal Bar Council American Inn of Court (2017-present)

Experience

Joelle has represented clients in state and federal courts, as well as the Trademark Trial and Appeal Board

Clients for whom she has worked on trademark litigations include S&P Global, Barclays, Major League Baseball, Universal Music Group, Tristar Pictures, and Heat Make Sense.

Prior Employment

Proskauer Rose LLP, Associate (2012-2015)
New York Supreme Court, Hon. Saliann Scarpulla, Assistant Law Clerk (2015-2016)

Blog Posts

Cases

Trademark

• TriStar Pictures, Inc. v. St. Fort, Opp. No. 91239957 (T.T.A.B. 2021) (on trial brief) (obtained judgment after trial that applicant’s JU’MAÑJI for clothing was likely to be confused with motion picture studio’s JUMANJI)
• Barclays PLC v. Sklarov et al, 20-cv-8437 (S.D.N.Y.) (represented financial services companies in infringement suit concerning use of marks comprising or containing LEHMAN BROTHERS and/or SHEARSON LEHMAN)
• Chicago Cubs Baseball Club, LLC v. CUBSESSED, Opp. No. 91239415 (T.T.A.B. 2020) (obtained judgment after trial that applicant’s CUBSESSED and IAMCUBSESSED marks were likely to be confused with baseball club’s marks)
• Heat Makes Sense, Inc. v. Amy-Mary LLC, Canc. No. 92071384 (T.T.A.B.) (represented creator of hair care products in dispute over registration of P/Y/T BEAUTY for cosmetics on the basis of client’s PYT trademark)
• Chicago Cubs Baseball Club, LLC v. Huber, Op. No. 91232736 (T.T.A.B. 2019) (obtained judgment after trial that applicant’s CUBNOXIOUS mark was likely to be confused with baseball club’s marks).
• Miller v. Participatory Safety, 19-cv-6994 (S.D.N.Y.) (represented promoters of SANTACON events in dispute over SANTACON mark)
• Weight Watchers International, Inc. v. Golo, LLC, 18-cv-8928 (S.D.N.Y.) and Opp. Nos. 92065762, 92065771 (T.T.A.B.) (represented wellness and weight management services provider in dispute over defendant’s use and attempted registration of FIT POINTS, as well as attempted registration of GOLO FIT POINTS)

Copyright

• Watch Tower Bible and Tract Society of Pennsylvania v. BMG management (US) LLC, 20-cv-10844 (S.D.N.Y.) (represented rights holder in copyright suit alleging infringement of musical composition)
• PK Music Performance, Inc. v. Timberlake, 16-cv-1215 (S.D.N.Y.) (represented music publisher in case claiming infringement of musical composition)

Patent

• Wine Enthusiast, Inc. v. Vinotemp Int’l Corp., 17-cv-6782 (S.D.N.Y.) (represented wine refrigerator manufacturer in defending against claims of utility and design patent and trade dress infringement)

Other

• Lawson v. Warner Music Group, Index No. 511050/2019 (Sup Ct, Kings County 2020) (represented music labels in defense of state law claims; successfully moved to dismiss all claims against clients)
• Warner Music Inc. v. ROK Mobile Inc., Index No. 651155/2018; Sony Music Entm’t v. ROK Mobile Inc., Index No. 652138/2018; Orchard Enters. NY v. ROK Mobile Inc., Index No. 652139/2018 (Sup Ct, NY County) (represented music labels in breach of contract suits against mobile service provider)