Jarvis

Joshua S. Jarvis

Partner
Co-Chair, Intellectual Property Department
Boston

I work with companies to develop and execute complex, worldwide brand development, protection, and enforcement strategies.

Josh Jarvis specializes in intellectual property matters, with an emphasis on high-level trademark and copyright strategy, including prosecution, policing, and transactions, as well as related matters including social media and new technology strategies. He represents clients in trademark and copyright registration matters before the United States Patent and Trademark Office and the United States Copyright Office, and oversees the protection of clients’ intellectual property worldwide.

Josh is the senior member of the trademark prosecution practice at Foley Hoag, and specializes in complex domestic and worldwide brand protection strategies for U.S. and international companies. He manages a portfolio of thousands of trademark filings across the globe, and handles U.S. and international trademark clearance and registration. Joshua’s trademark expertise spans industries and verticals, including pharmaceuticals, high-tech, software, consumer electronics, energy, foods, luxury brands, fabrics and textiles, cosmetics, medical devices, and cannabis. He is adept at crafting custom-tailored brand protection strategies for every client and every product or service, at all phases of development. Josh also represents clients in trademark policing, enforcement and defense actions around the globe, and works with U.S. Customs and Border Protection and the customs offices of other countries to curb the flow of counterfeits and other infringing goods.

Josh advises clients in connection with intellectual property rights in the context of corporate transactions, including transfer and licensing of trademarks and copyrighted works such as books, sculptures, audiovisual works, musical recordings, and software. He assists clients in securing copyright and likeness rights, licenses, and permissions for their own works. Josh also conducts and coordinates due diligence for clients acquiring and selling intellectual property assets.

In addition to traditional trademark and copyright matters, Josh focuses on various issues specific to social media and the internet, including assisting clients with the following:

  • Acquiring, developing, and maintaining domain name portfolios
  • Domain name disputes, including substantial experience with Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings, representing clients before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center and the ADR Forum 
  • Social media complaints related to trademark, copyright, and username impersonation
  • Online copyright enforcement, including Digital Millennium Copyright Act (DMCA) take-down letters
  • Offensive and defensive strategy related to advertising keywords 

Josh also provides guidance for clients in connection with their own online assets, including preparation of website terms of use, development of media guidelines, and review of social media activities for intellectual property, right of publicity, privacy, and false advertising issues. He helps clients to comply with relevant laws such as the DMCA and Communications Decency Act (CDA), and advises clients with respect to best practices in these areas.

As an active committee member in the International Trademark Association (INTA) and the Vice Chair of Intellectual Property Owners Association's (IPO) U.S. Trademark Law Committee, Josh drafts comments and advises INTA and IPO leadership regarding various trademark, Internet, social media, and domain name issues.

Education

  • University of Pennsylvania Law School, J.D., 2005
  • Tufts University, B.A., cum laude, 2000

Bar and Court Admissions

BAR ADMISSIONS
  • Massachusetts
COURT ADMISSIONS
  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Appeals for the First Circuit

Experience

  • Counseled clients in connection with various matters related to trademark prosecution, enforcement, defense and licensing, including development and deployment of global trademark registration, licensing, and enforcement strategies.
  • Developed a trademark licensing and certification program for a fitness company.
  • Conducted due diligence reviews of target companies with extensive intellectual property assets in various industries including pharmaceuticals, fashion, food service, and medical devices.
  • Conducted extensive pharmaceutical name clearance and prosecution for life sciences companies.
  • Successfully registered product configuration trademarks consisting of computer hardware designs.
  • Counseled clients with respect to Internet domain names, including development of comprehensive domain name acquisition and policing strategies and obtaining transfer of domain names via domain name dispute resolution processes.
  • Advised clients in connection with brand protection and strategy for social networking websites such as Facebook, Twitter, and Pinterest.
  • Counseled clients with respect to copyright protection for works including computer software, films, fine art, Internet websites, and sculptures. Successfully argued appeals of the U.S. Copyright Office’s refusal to register sculptural works.

PROFESSIONAL EXPERIENCE
  • Arthur Littleton & H. Clayton Louderback Legal Writing Instructor, University of Pennsylvania Law School, 2004-2005 
  • Teaching Assistant, Department of Electrical Engineering and Computer Science, Tufts University, 1998-2000 

Publications

  • "New and Upcoming Domain Names Present New Risks," IPO Law Journal (March 2014)
  • "New Trademark Law in China Promises Efficiency and Enhanced Enforcement Capabilities for U.S. Brand Owners," The Licensing Journal (January 2014)
  • "Police Your Marks in a Wiki World," Managing IP (May 2008)
  • "Keywords and Trademark 'Use': A Study in Recent Case Law," American Bar Association Section of Intellectual Property Law Newsletter, Vol. 25, No. 3
IN THE MEDIA
  • "Embed Copyright Cases Could Multiply as Server Test Faces Siege," Bloomberg Law (August 17, 2021)

Honors & Involvement

HONORS
  • Listed in World Trademark Review (WTR) 1000 – The World's Leading Trademark Professionals, Silver category in prosecution and strategy (2021-2022, Bronze 2016-2020)
  • Ranked by CHAMBERS USA: AMERICA'S LEADING LAWYERS FOR BUSINESS as one of Massachusetts' leading Intellectual Property attorneys (2015, 2016)
INVOLVEMENT
  • Intellectual Property Owners Association (IPO); U.S. Trademark Law Committee, Vice-Chair
  • International Trademark Association (INTA), Internet Committee, Member
  • American Bar Association, Committee on Trademarks and the Internet, Member     
  • Boston Bar Association, Member

Speaking Engagements

  • “High Maintenance: The Complexities of Brand Protection and Enforcement in the Cannabis Space,” Intellectual Property Owners Association (IPO) Annual Meeting (September 2022)
  • “Trademark and Advertising Basics for Cannabis Companies,” Foley Hoag Webinar (April 2022)
  • “Copyright Basics for the Generalist In-House Counsel,” Foley Hoag Webinar (November 2021)
  • “Let’s Go For A Spin! Tips and Tricks for Avoiding Trademark Genericide,” Boston Bar Association Webinar (October 2021)
  • "13 Social Media Pitfalls to Avoid for the Generalist In-House Counsel," Foley Hoag Webinar (August 2021)
  • “When It Isn’t What It Is: Maintaining Brand Distinctiveness and Avoiding ‘Genericide,’” Alt Legal Connect (October 2020)
  • “Global Trademark Clearance Strategies: Best Practices and Challenges,” Intellectual Property Owners Association (IPO) Annual Meeting (September 2020)
  • “The Original Sin of Trademark Law: Failure to Function,” Boston Patent Law Association/Northeastern University (November 2019)
  • “Issues in Pop Culture: Ripped from the Headlines,” Intellectual Property Owners Association (IPO) Annual Meeting (September 2019)
  • "IP Licensing Pitfalls for the Generalist In-House Counsel," Foley Hoag Webinar (March 2019)
  • “Trademark, Copyright, and Rights of Publicity in the Digital Age,” Intellectual Property Owners Association (IPO) Annual Meeting (September 2017)
  • “Social Media Basics For Your Practice and Your Clients,” Vermont Bar Association (VBA) Mid-Year Meeting (March 2017)
  • “Protecting Intellectual Property in the Food Business,” Enterprise Center at Salem State University (October 2016)