Joel T. Beres
Location: Louisville, KY
With more than 25 years of Intellectual Property experience, Joel Beres was a natural choice for Regional Counsel to Microsoft Corp. He advises the technology giant on trademark and software copyright infringement issues in Kentucky, Tennessee and southern Ohio. He also provides counsel to other technology-related companies.
A founding member and former co-chair of the firm's Intellectual Property and Technology Service Group, he actively tries cases in both state and federal courts. He manages all aspects of infringement litigation for both federal and state courts, including trial and appellate practice. He has also prepared and prosecuted trademark and copyright applications, prosecuted and defended trademark opposition and cancellation proceedings, negotiated and prepared trademark and copyright assignment and license agreements, and negotiated and prepared software licensing and consulting agreements.
- Successfully obtained judgment as a matter of law for non-infringement of patents in jury trial before the Eastern District of Texas
- Successfully defended software copyright and trademarks in Microsoft v. Eagle Computer Systems, Inc.
- Successfully enforced patent rights in GLW Incorporated v. Euphonix, Inc., intellectual property protection program
- Handled one of the biggest mark transfers ever for ELECTROLUX
What Clients Say
. . . recognized for his trademark and copyright expertise, and is also much in demand for his counsel on prosecution and licensing work. 'He is a very good attorney doing excellent work,' an impressed peer asserts.
An impressive litigator who is thorough and attentive to details.
Every case he does, he does extremely well.
. . . one of the most responsive, effective legal advisers I have ever worked with.
Recent News, Articles & Speaking Engagements
- "The Supreme Court Slants Toward Tam: Disparagement Clause Ruled Unconstitutional," with Mari-Elise Paul, Stites & Harbison Legal Update, June 20, 2017
- "SCOTUS and Patent Infringement: A Discussion of Recent Supreme Court Decisions Impacting Patent Litigation," American Bar Association Section of Intellectual Property, June 20, 2017
- "Dispute Investigations: Private Investigations, Clearance Searches, Extensions of Time to Oppose, Defensive Application Filing, Examining the Potential for Oppositions or Cancellations and Multinational Portfolio Considerations," American Intellectual Property Law Association (AIPLA) Trademark Boot Camp, Arlington, VA, June 8-9, 2017
- "Supreme Court Says "You Buy It, You Own It"," Stites & Harbison Legal Update, June 2, 2017
- "BREAKING: Delay Doesn’t Matter! The Supreme Court Holds Laches Doesn’t Apply To Patent Infringement Cases," Stites & Harbison Legal Update, March 31, 2017
- "Branding 101: It’s Like Cheers: Where Everybody Knows Your Name – But Everybody Pronounces It Differently," Trademarkology blog post, February 16, 2017
- "What Do You Want for Christmas?," Trademarkology blog, December 23, 2016
- "The Supreme Court Redefines 'Exceptionality' and Lowers Bar for Recovery of Attorney Fees in Patent Suits," with Melissa Hunter Smith, Business Law Today, American Bar Association, Vol. 23, Issue 10, June 2014
- "Supreme Court Issues Two Cases Controlling When Attorney’s Fees May Be Awarded in Patent Suits," with Melissa Hunter Smith, Stites & Harbison Client Alert, April 29, 2014
- "Protecting Trade Secrets," Louisville Bar Association Annual Day Long IP Seminar, May 2004
- "Trade Dress Protection," Louisville Bar Association, September 2003
- "A Bicycle Built for 1's and 0's: Telecommunications Convergence, Peer to Peer, and What is a Copy," Louisville Bar Association, May 2001
Before Stites & Harbison
Mr. Beres has over 25 years of intellectual property experience, handling matters throughout the nation. Before moving to Louisville, he was a partner in the Los Angeles-based firm of Woollacott, Jannol & Beres.
More Than Stites & Harbison
Mr. Beres is active in the International Trademark Association leadership and served on its Board of Directors (2010-12) and was the Chair of Membership Services Committee (2008-09). He is a Davidson Fellow for Trademark Law at the Brandeis School of Law at the University of Louisville and is a founding member of the Stanford University Alumni Club in Louisville. He also served on the Board of Trustees of St. Francis High School (2010-14) and served on the Board of Directors of the Kentucky Council on Economic Education.
Besides Stites & Harbison
Always the technophile, Mr. Beres enjoys tech gadgets and playing with the latest computer hardware and software. True to his Montana roots, he also enjoys fencing, but just the barbed wire variety.
Best Lawyers in America®, Copyright Law, Information Technology Law, Intellectual Property Litigation, Patent Litigation and Trademark Law (2001-18)
Best Lawyers in America®, Louisville Area Lawyer of the Year in Trademark Law (2018)
Best Lawyers in America®, Louisville Area Lawyer of the Year in Copyright Law (2017)
Kentucky Super Lawyers® (2007-17)
Kentucky Super Lawyers®, Top 50 Attorneys in Kentucky (2010-15, 2017)
Chambers USA, "America's Leading Lawyers for Business," Intellectual Property (2013-17)
Louisville Magazine's "Top Lawyers" for Copyright/Trademark Law and Information Technology Law (2013, 2016)
Managing Intellectual Property, IP Stars (2013-17)
- Stanford University Alumni Club in Louisville, founding member
- International Trademark Association, Board of Directors (2010-12)
- Kentucky Council on Economic Education, former member of Board of Directors
- Walden School, former member of Board of Trustees (2008-11)
- St. Francis School, Board of Trustees (2010-17)
- Best Lawyers in America honors 79 Stites & Harbison attorneys for 2018
- Best Lawyers names 11 Stites & Harbison attorneys as “Lawyer of the Year” for 2018
- Managing IP honors Stites & Harbison attorneys on “IP Stars” 2017 list
- Chambers USA 2017 honors Stites & Harbison
- Kentucky Super Lawyers honors 55 Stites & Harbison attorneys for 2017
- Best Lawyers in America honors 74 Stites & Harbison attorneys for 2017
- Best Lawyers names 16 Stites & Harbison attorneys as “Lawyer of the Year” for 2017
- Managing IP honors Stites & Harbison attorneys on “IP Stars” 2016 list
- Chambers USA 2016 Honors Stites & Harbison
- Kentucky Super Lawyers honors 64 Stites & Harbison attorneys for 2016
- Best Lawyers honors 72 Stites & Harbison attorneys for 2016
- Chambers USA 2015 honors Stites & Harbison
- Managing IP honors Stites & Harbison attorneys on “IP Stars” 2015 list
- Super Lawyers honor Stites & Harbison’s Kentucky Attorneys
- Best Lawyers honors 89 Stites & Harbison attorneys for 2015
- Chambers USA honors Stites & Harbison attorneys for 2014
- Managing IP names 10 Stites & Harbison attorneys to “IP Stars” list
- Super Lawyers honors Stites & Harbison’s Kentucky attorneys for 2013-14
- Eighty-nine Stites & Harbison attorneys honored by Best Lawyers in America for 2014
- Managing IP names 10 Stites & Harbison attorneys to “IP Stars” list
- Super Lawyers honors Stites & Harbison’s Kentucky attorneys
- Seventy-five Stites & Harbison attorneys honored in Best Lawyers in America
- Thirty-five Stites & Harbison attorneys selected for inclusion on Kentucky Super Lawyers for 2001
- Chambers USA honors 31 Stites & Harbison attorneys with inclusion in the 2011 guide
- Seventy-three Stites & Harbison attorneys honored in “Best Lawyers in America”
- Chambers USA honors 32 Stites & Harbison attorneys with inclusion in the 2010 guide
- Seventy-two Stites & Harbison attorneys honored in “Best Lawyers in America”