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Andrew J. Hollander

Of Counsel
+1.973.848.4128
Fax +1.973.848.4001
Mr. Hollander protects his clients’ valuable intellectual property including their brands, inventions, creative works, proprietary business information, and more. His trademark practice includes registering, enforcing, and licensing trademarks in the U.S. and abroad. He regularly conducts clearance on new brands for U.S. and worldwide rollout and manages global portfolios comprising trademarks in more than 100 countries. Further, he handles opposition and cancellation actions before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office and in trademark actions in federal court.

A patent attorney registered to practice with the U.S. Patent and Trademark Office, Mr. Hollander prepares and prosecutes patents on computer software and hardware, online and offline business models, artificial intelligence, mechanical inventions, and more.

He advises on many industries include travel, health and beauty care, consumer packaged goods, equipment rentals, and financial institutions. He negotiates and drafts agreements, such as license, trademark coexistence, celebrity endorsement, and influencer agreements. He also advises on advertising, domain names, and social media.

Mr. Hollander has experience in protecting designs of all kinds with trade dress registrations and design patents, including bottle shapes, graphical user interfaces (GUIs), apparel, bicycles, and more.

Formerly head of an in-house intellectual property department, he is solutions-oriented and advises on portfolio management strategies, IP due diligences, and M&A transactions.

Mr. Hollander is an Adjunct Professor at Seton Hall University School of Law where he teaches courses in both Trademark Registration and in Patent Law.

He contributes pro bono IP work to an anti-bullying organization.

Professional Background

Prior to joining K&L Gates, Mr. Hollander was Vice President of Intellectual Property for a $4 billion dollar global company, where he headed its IP activities. Mr. Hollander also practiced at two leading law firms where he engaged in IP counseling, litigation, and prosecution.

Professional/Civic Activities

  • Adjunct Professor of Law, Seton Hall University School of Law
    • Teach semester-long core courses in Trademark Registration, and in Patent Law
  • President, Board of Trustees, Chatham, N.J., Public Library

Speaking Engagements

  • Panelist, “Due Diligence of IP Assets,” PLI’s IP Issues in Business Transactions Conferences, 2013 & 2014.
  • Speaker, “Social Media Law: Who Owns Your Tweets?,” The Foundation Center / Nonprofit Technology Network, March 2012.
  • Co-Speaker, “Social Media Policy: Building, Monitoring and Enforcing,” ALM’s Virtual LegalTech webcast, March 2012.
  • Panelist, “Understanding the Legal Issues in Social Networking,” The Knowledge Congress webcast, February 2012.
  • Moderator, “The Evolving Aftermath of Licensing Agreements: Keeping Track of What is Important to Ensure Their Success,” K&L Gates and BDO technology and life sciences seminar, October 2011.
  • Co-Chair, "Ethics and Intellectual Property: Patent Law Developments, the Oracle v. SAP Verdict, and New Social Media Issues," West Thomson Reuters webcast, December 2010.
  • Co-Chair, "Ethics and IP Due Diligence in View of Bilski v. Kappos and Sarbanes-Oxley," West Thomson Reuters webcast, June 2010.
  • Speaker, "Successful Tools for IP Due Diligence -- Keys to Getting the Deal Done," National Constitution Center webcast, June 2010.
  • Panelist, "International Intellectual Property," Rutgers Law School, presenting on international trademark protection strategies, April 2010.
  • Co-Chair, "Intellectual Property Due Diligence and Ethics: Avoiding Ethics and Securities Violations," West Thomson Reuters webcast, December 2009.
  • Co-Chair, "Intellectual Property Due Diligence and Audit Boot Camp: Identify Invaluable IP Assets and Rights," West Thomson Reuters event, New York City, June 2009.
  • Co-Chair, Corporate Patent Congress 2007, New York City, January 2007.

Additional Information

Publications
  • Contributor, “Intellectual Property Due Diligence in Corporate Transactions: Investment, Risk Assessment and Management,” West Thomson, 2010-15 editions.
  • Contributor, “Assets & Finance: Audits and Valuation of Intellectual Property,” West Thomson, 2010-11 editions.
  • “Identity Theft and Phishing,” New York Intellectual Property Law Assn. Bulletin, November 2005.
  • “Patenting Computer Data Structures: The Ghost, The Machine, and the Federal Circuit,” Duke Law & Technology Review, December 2003.
Trademarks
  • Manage global trademark portfolios for popular health and beauty care field provider, and leading travel services providers.
  • Obtained federal registrations of trade dress of bottle shape with the U.S. Patent and Trademark Office, and obtained consent judgments for leading skin-care provider in U.S. District Courts against infringers whose bottles infringed the registered trade dress.
  • Compelled major global technology company to amend trademark application to avoid client’s brand space.
  • Represented leading health and beauty care provider against competitor in multi-front battle that successfully obtained worldwide rights to key disputed brand sought by both, including negotiating favorable coexistence agreement.
  • Evaluated hundreds of brands for clearance in many fields.
Patents
  • Prepared, prosecuted, and obtained grants of numerous U.S. utility patents in computer-related fields, including software, hardware, memory management, and artificial intelligence, with counterparts granted in Europe.
  • Prepared, prosecuted, and obtained grants of numerous U.S. utility patents in mechanical fields.
  • Obtained design patents in the U.S., with counterparts granted in Europe and China.
  • Advised clients on non-infringement and freedom-to-operate evaluations for key products.
  • Negotiated resolution of patent lawsuit with a “top 5” company.
Due diligence and IP management
  • Led intellectual property due diligence investigations during acquisition of companies in the fields of travel, electronic filters, control systems, and door seals, including responsibility for deal documents relating to IP.
  • Advised client on developing effective IP Management Committee, and inventor recognition program.
Copyright
  • Obtained a half-dozen registrations from U.S. Copyright Office after successfully preparing Requests for Reconsideration of initial refusal by Examining Division.
Agreements and New Media
  • Prepared and negotiated numerous agreements including: licensing agreements, research agreement with leading U.S. university, celebrity endorsement agreements with well-known celebrities, trademark coexistence agreements, services agreements, influencer agreements, sponsorship agreements, distributor agreements, confidentiality agreements, and more.
  • Represented licensor of luxury brand in successful negotiations with European licensee.
  • Negotiated sale of a client’s domain name for six figures.