Jeffrey L. Costellia
Partner / Chair, Global Strategies Committee / Co-Lead, International & Foreign Associate Network IP Team
Introduction
Jeffrey Costellia chairs the firm's Global Strategies Committee. He represents both U.S. and foreign companies to develop overall, global intellectual property protection strategies involving all phases of patent and trademark prosecution and enforcement.
My focus
I focus my practice in three main areas, capitalizing on over 30 years of experience, to provide practical IP protection strategies that help clients meet or exceed their business objectives.
Tailored Patent Protection
I represent clients ranging from startups to Fortune 500 companies, helping them successfully navigate the ever-changing Patent Laws before the U.S. Patent and Trademark Office. I work closely with inventors and business managers to ensure that the patents I secure align with my client's business plans. I regularly review competitor patent validity and infringement issues and have helped clients obtain valuable patent rights covering electronic circuits, semiconductors, secondary batteries and nuclear reactor control systems, LCD and electroluminescent displays, chemical composites and polymers, locomotive and other transportation monitoring, photonics and sensing technologies and large scale product conveying equipment.
In-Depth Brand Protection
I work with clients to develop and protect their brand from initial product development through launch. I assist with mark selection, clearance, registration, online business, financial and sales platforms, and enforcement against third-party infringers. I tailor trademark protection strategies to fit my client's industry and global scope, whether it be for travel and entertainment services, cosmetics, transportation monitoring and sensing technologies, large scale product conveying equipment or sporting goods products and services.
IP Enforcement in the Federal Courts and Trademark Trial and Appeal Board
I have considerable experience in patent and trademark litigation in the United States federal courts and trademark cancellation and opposition proceedings before the Trademark Trial and Appeal Board. I develop comprehensive, broad-based intellectual property plans that give clients a greater return on investment.
Looking ahead
Companies remain committed to protecting their valuable IP. They should be laser focused not only on traditional IP protection strategies, but also on monetization in order to provide much deserved economic returns on the investment.
/Insights
- Moderator, “Roundtables - Impact of metaverse on life sciences industry: Fiction or Future Reality?”, 9th Annual World Life Sciences Conference, International Bar Association, Washington, DC, June 1-2, 2023
- Panelist, "What does the metaverse mean for e-commerce: the use of blockchain for general contracts and dispute resolution”, 2023 International Bar Association Annual Conference, Paris, France, November 1, 2023
- “Space … the Final Frontier! Lawless ‘Wild West’ or United Worldwide Joint Prosperity,” 2022 International Bar Association Annual Conference, Miami Beach, FL, October 30, 2022
- “Google v Oracle,” 2021 International Bar Association Annual Conference, Washington, DC, November 4, 2021
- “Is There Anybody Out There? – You Will Need More Than Major Tom to Protect Your Valuable IP,” 2020 International Bar Association Annual Virtual Conference, November 11, 2020
- “Man versus Machine,” 2019 International Bar Association Annual Conference, Seoul, South Korea, September 26, 2019
- “Reactor, Workshop 1: Did They or Did They Not? The Standards for Proving Patent Infringement,” Asian Patent Attorneys Association, Auckland, New Zealand, November 4–7, 2017
- Coauthor of a chapter in the 2012 edition of The International Comparative Legal Guide to: Trade Marks, published by Global Legal Group Ltd.
In the news
- Rochester Business Journal
Brunetti case attempts to further determine “unprotected speech”
This column by Rochester Corporate partner Jeremy Wolk analyzes a recent Supreme Court decision on whether individuals have a First Amendment right to register federal trademarks of “obscene” words and phrases. The column is based on an NP Alert written by Intellectual Property partners Jeff Costellia, Jason Kravitz and Deanna Kunze, and associate Anthony Duncan.July 26, 2019 - Law360
A To-Do List for New USPTO Director Iancu
Washington DC IP counseling and transactions partner Jeffrey Costellia is quoted in this article about the possibility of reforms at the Patent Trial and Appeal Board. Andrei Iancu was confirmed as the new director of the U.S. Patent and Trademark Office, which oversees the board.Feb 5, 2018 - Rochester Business Journal
Supreme Court decides how far patent laws can reach
Rochester private equity and investment funds partner Jeremy Wolk, Washington DC IP counseling and transactions partner Jeff Costellia and Chicago IP counseling and transactions associate Angelo Christopher co-authored this column about a Supreme Court decision regarding the reach of U.S. patent rights for exported products.April 21, 2017 - Asian Legal Business
A Slow and Steady Approach for Nixon Peabody
China & Asia-Pacific chair David Cheng and Global Strategies Committee chair and IP Counseling & Transactions practice group leader Jeff Costellia are quoted in this article focused on Nixon Peabody’s strategic expansion in Asia.Oct 4, 2016 - Law360
Rainmaker Q&A: Nixon Peabody's Jeffrey Costellia
This profile features Washington, DC, partner, chair of the Global Strategies Committee and lead of IP Counseling & Transactions, Jeff Costellia. The Q&A showcases his focus on client service and he offers advice to new attorneys building their practices.Sep 7, 2016 - Washington Post
End of the Corner Office: DC law firm designs its new space for millennials
This front-page feature article highlights our new office space in Washington, DC, and the vision behind this build-out. Several of our colleagues were quoted throughout the article. These colleagues include Washington, DC, office managing partner Jeff Lesk, leader of our IP Counseling & Transactions practice Jeff Costellia, Syndication practice group leader Greg Doran, and Washington, DC, associates Cody Rogers, Paige Gentry, and Emily Feder. This article has been picked up by a number of publications nationwide including Buffalo News, the Miami Herald and the Kansas City Tribune, just to name a few.June 22, 2015
Admitted to practice
District of Columbia
Virginia
U.S. Patent and Trademark Office
U.S. Court of Appeals, Federal Circuit
U.S. Court of Appeals, Fourth Circuit
U.S. District Court, Eastern District of Virginia
Education
George Washington University, J.D., with honors
University of Missouri-Rolla, B.S., Chemical Engineering, magna cum laude
Professional activities
- American Bar Association
- International Trademark Association
- Asian Patent Attorneys Association, Attendee
- International Bar Association (IBA)
- Intellectual Property and Entertainment Committee, Vice-chair
Recognition
- Super Lawyers — Recognized as a top rated Intellectual Property attorney in Washington DC
- World Trademark Review 1000—Recommended as a leading DC lawyer for trademark prosecution and strategy (2014–2025)
- IAM Strategy 300—Ranked as one of the world’s leading IP strategists in the legal and IP management consultancy sectors (2020–2025)
- IAM Patent 1000—Ranked as one of the world’s leading patent practitioners (2014–2024)
- Managing Intellectual Property—Recognized as an “IP Star” (2013–2024)
Insights And Happenings
View AllProfessionals in the Practice Area
View AllSeth D. Levy
Partner / Leader, Intellectual Property Practice- Los Angeles
- Office:+1 213.629.6161
- slevy@nixonpeabody.com
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Daniel J. Schwartz
Partner / Deputy Leader, Intellectual Property Practice- Chicago
- Office:+1 312.977.4432
- djschwartz@nixonpeabody.com
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Erica J. Van Loon
Partner / Team Leader, Copyright, Trademark, and Media Litigation- Los Angeles
- Office:+1 213.629.6031
- evanloon@nixonpeabody.com
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Janet M. Garetto
Partner / Co-Lead, Food, Beverage, & Agribusiness IP Team- Chicago
- Office:+1 312.425.8514
- jgaretto@nixonpeabody.com
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