Jennifer Ennis Bollen
Bothell,WA
Summary
IP practitioner with over 27 years of extensive and substantive experience in counseling clients and business stakeholders regarding domestic and global trademark and copyright issues; intellectual property licenses and transactions; advertising, marketing, and promotions strategies; and Internet and domain-name issues. I have also supported cross-group initiatives involving antipiracy/anticounterfeiting, fraud investigations and privacy issues.
Overview
28
28
years of professional experience
Work History
SENIOR IP PARALEGAL
Perkins Coie LLP
2021.11 - 2023.03
- Strong knowledge of domestic and foreign trademark procedures
- Managed trademark portfolios, including prosecution, maintenance, and prosecution
- Drafted and filed electronic trademark and service mark applications with the United States Patent and Trademark Office and the World intellectually Property Organization
- Prepared and filed copyright applications with the U.S
- Copyright Office
- Independently drafted domestic and international Office Action responses, related prosecution & maintenance documents, and correspondence to clients
- Communicated with foreign associates regarding international trademark matters
- Created and generated ad hoc reports, charts, and Excel spreadsheets in connection with IP matters
- Registered and managed Domain Names, both generic and country extensions
- Managed adverse matters, demand letters and domain name arbitration procedures
- Conducted due diligence and analyzed reports for IP owned by target companies for corporate transactions
- Internet Domain Name investigations and related enforcement, including working with Registrars to initiate domain name transfers related thereto.
Senior IP Paralegal (Contract)
Perkins Coie LLP
2021.08 - 2021.11
- See roles and responsibilities listed in permanent position with Perkins Coie, above.
Senior IP Paralegal (Contract)
K & L Gates
2021.05 - 2021.06
- Strong knowledge of domestic and foreign trademark procedures
- Managed trademark portfolios, including prosecution, maintenance, and prosecution.
- Reviewed and managed trademark docket.
- Other projects, as assigned.
Senior IP Paralegal (Contract)
Coates IP
2020.06 - 2020.12
- Focused on all aspects of legal issues including trademark, copyright, content review, and licensing
- Conducted preliminary trademark clearance searches for new marks and drafted advice to the client for the attorney’s review
- Prepared and filed trademark applications in the U.S
- And instruct international counsel
- Submitted takedown requests to various platforms with respect to trademark and copyright infringement
- Responded to Office Actions and liaised with outside counsel with respect to the prosecution of trademark applications and maintaining registrations worldwide
- Drafted Uniform Dispute Resolution Procedure (UDRP) Complaints before the World Intellectual Property Organization (WIPO) for attorney’s review
- Enforced against infringing uses of third-party trademarks
- Other special projects, as assigned.
Senior Paralegal
Expedia, Inc.
2013.02 - 2020.05
- Conducted trademark clearance, manage prosecution and portfolio management, including gathering requests and other factual information from the business, conducting preliminary searches in-house, and advising the business on trademark availability
- Responsible for domain name matters, including registrations and enforcing against cybersquatters
- Manage and collaborate on new gTLD strategy
- Drafted trademark license agreements
- Provided counseling to the business teams on clearing content and assisting them with outreach to procure the appropriate rights
- Collaborated with other team members of Expedia Legal & Corporate Affairs (“ELCA”) and was the designated lead for creating a new SharePoint site for Expedia’s Intellectual Property team that had both client- and ELCA-only facing documentation, for the purpose of having our guidelines, policies, templates, frequently asked questions, and other training materials (e.g., on-demand training videos)
- Collaborated with Internal Network Fraud & Investigations team on matters involving the fraudulent use of Expedia trademarks & copyrights in phishing, robocalling and other fraudulent schemes
- Reviewed marketing materials, press releases and IP permissions requests
- Managed IP disputes/enforcement matters
- Counseled business teams on copyright matters
- Advised the business on the company's IP policies
- Developed and delivered legal training on a variety of subjects that intersect with intellectual property, including privacy
- Assisted with due diligence investigations into the intellectual properties owned by target merger and acquisition companies.
Senior Paralegal
Nintendo Of America
2012.04 - 2012.12
- Focused on all aspects of legal issues that affect the gaming industry; intellectual property (trademark, copyright, content review, regulatory considerations, etc.)
- Primary lead on IP enforcement matters and developed a strategy for corporate enforcement efforts
- Extensive IP clearance on new game names, characters, and content within the games
- Enforcement against infringing uses of Nintendo trademarks via marketplace sweeps, other methods for detecting potential infringement, and DMCA takedowns.
Senior Paralegal
Microsoft Corporation
2003.12 - 2012.04
- Advised the business on the company's IP policies
- Assisted with due diligence investigations into the intellectual properties owned by target merger and acquisition companies
- Provided trademark counseling by conducting trademark searching and opining on mitigating risk level, advising on the proper trademark use, and licensing
- Counseled business teams on copyright matters
- Managed trademark portfolios for the XBOX and Microsoft Games Studio, Windows Client and Microsoft Corporate and supervised my team to ensure that new applications were timely filed in the strategic jurisdictions
- Strategically managed global enforcement matters by investigating, conducting due diligence, collaborating with internal stakeholders to ensure that the target is not a Microsoft customer or partner, identify applicable causes of action and available remedies available under the law, including the likelihood of success on the merits (particularly when dealing with Uniform Dispute Resolution Policy and other ADR domain name disputes), drafting cease and desist letters, negotiating resolutions, when practicable, and resolving matters
- Assisted business groups with the drafting and licensing clauses in contracts when the client is interested in licensing Microsoft trademark assets; recommend amendments to terms
- Key member of a cross-team collaboration effort between Microsoft’s Trademark and Digital Crimes Unit to file litigation against large cybersquatting operations
- Primary liaison to the Microsoft Domains Team: supported effort to get Microsoft certified as an Accredited Domain Name Registrar, developed defensive domain name registration strategy and any other legal support that was necessary
- Selected by the Office of Legal Compliance as a Legal Trainer for orientation for new employees covering topics such as competitive intelligence, ethics, insider trading, antitrust issues, open source, and other topics pertaining to corporate compliance.
- Trained new employees on company policies and legal standards.
- Supervised three to four paralegals focused on trademark, copyright, and domain name law.
Senior Paralegal
Red Hat, Inc.
2002.12 - 2003.07
- Enforced Red Hat’s trademarks from unauthorized/infringing users
- Educated infringers on Red Hat’s trademark usage guidelines and options for trademark licensing
- Negotiated (at a substantial discount), procured, implemented, customized, and trained internal end-users on new docketing system.
- Docketed enforcement cases in trademark docketing system to track matters, build in follow up reminders, and followed up with the attorney to discuss possible paths of escalation to resolve the more egregious infringements.
- Assisted with Corporate document filings such as Qualifications for Foreign Entities, filings with Secretaries of State.
Senior Legal Assistant
Finnegan, Henderson, Farabow, Garrett & Dunner
2001.03 - 2002.11
- Conducted knock-out and more in-depth preliminary trademark clearance searches, analyzing the searches so that I was prepared to give the assigning attorney my risk analysis
- I was also responsible for managing an exceptionally large docket of several trademark prosecution portfolios
- With respect to mergers & acquisitions or other divestitures, conducted due diligence of the intellectual properties owned by the target company to ensure that the IP disclosed in the documentation was clear in its chain of title
- Supported the attorney with oppositions and other court actions by evaluating the merits of the allegations, managing conflict records, gathering evidence, researching opposing parties, confirm how the third-party trademark was being used and drafting consent agreements.
- Coordinated with court personnel and attorneys to determine scheduling of hearings and filing documents.
- Organized documents to manage paper and electronic filing systems of clients.
- Prepared and drafted correspondence and legal forms to maintain smooth communications.
Trademark Administrator
American Management Systems, Inc.
1998.11 - 2001.02
- Managed global trademark and copyright portfolio in-house
- Provided leadership/catalyst for improvements in engineering processes and measures
- Directed cross-functional teams with focus on product application and advanced engineering system projects
- Served as the Trademark representative for AMS’s IP Council (made up of business unit leaders who were the decision makers or otherwise had a vested interest in Intellectual Property Issues).
- Screened and transferred incoming calls, took down messages, and transmitted information and documents to internal personnel.
- Maintained personnel records and updated internal databases to support document management.
- Collected, validated, and distributed information to employees.
- Entered and maintained departmental records in company database.
Trademark Analyst
Hogan & Hartson
1998.05 - 1998.11
- Domestic and foreign trademark prosecution and litigation, conducted due diligence investigations into the intellectual properties owned by target merger and acquisition companies, investigated third party use of potentially infringing trademarks.
- Conducted preliminary trademark clearance searches for new marks and drafted advice to the client for the attorney’s review.
- Drafted domain name transfer of ownership agreements.
Trademark Paralegal
Morgan, Lewis & Bockius
1997.05 - 1998.05
- Domestic and foreign trademark prosecution and litigation, conducted due diligence investigations into the intellectual properties owned by target merger and acquisition companies, investigated third party use of potentially infringing trademarks.
- Conducted preliminary trademark clearance searches for new marks and drafted advice to the client for the attorney’s review.
- Evaluated new DMCA enactment and drafted a memorandum for my team's education.
- Managed domain names.
Trademark Paralegal
Gadsby & Hannah
1995.07 - 1997.05
- Domestic and foreign trademark prosecution and litigation, conducted due diligence investigations into the intellectual properties owned by target merger and acquisition companies, investigated third party use of potentially infringing trademarks.
Education
Certificate Program - Contracts Management And Procurement
San Diego State University
Online08.2024
Bachelor of Science - Psychology
Virginia Polytechnic Institute & State University
Blacksburg, VA12.1993
Skills
- Database Searching
- Document Management
- Calendar Management
- Critical Thinking
- Correspondence and Legal Forms
- Conflict Resolution
- Legal Research
- Filing System Organization
- Report Writing
- Trial Preparation Assistance
- Relationship Building
- Legal Terminology
- Legal Correspondence
Timeline
SENIOR IP PARALEGAL
Perkins Coie LLP
2021.11 - 2023.03
Senior IP Paralegal (Contract)
Perkins Coie LLP
2021.08 - 2021.11
Senior IP Paralegal (Contract)
K & L Gates
2021.05 - 2021.06
Senior IP Paralegal (Contract)
Coates IP
2020.06 - 2020.12
Senior Paralegal
Expedia, Inc.
2013.02 - 2020.05
Senior Paralegal
Nintendo Of America
2012.04 - 2012.12
Senior Paralegal
Microsoft Corporation
2003.12 - 2012.04
Senior Paralegal
Red Hat, Inc.
2002.12 - 2003.07
Senior Legal Assistant
Finnegan, Henderson, Farabow, Garrett & Dunner
2001.03 - 2002.11
Trademark Administrator
American Management Systems, Inc.
1998.11 - 2001.02
Trademark Analyst
Hogan & Hartson
1998.05 - 1998.11
Trademark Paralegal
Morgan, Lewis & Bockius
1997.05 - 1998.05
Trademark Paralegal
Gadsby & Hannah
1995.07 - 1997.05
Certificate Program - Contracts Management And Procurement
San Diego State University
Bachelor of Science - Psychology
Virginia Polytechnic Institute & State University
Accomplishments
World Trademark Review – WTR300: World's Leading Top 300 Corporate Trademark Professionals - 2017, 2018, 2019 & 2020
Awards
World Trademark Review – WTR300: World's Leading Top 300 Corporate Trademark Professionals - 2017, 2018, 2019 & 2020
Awards
World Trademark Review – WTR300: World's Leading Top 300 Corporate Trademark Professionals - 2017, 2018, 2019 & 2020
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