Joel T. Beres

With more than 25 years of Intellectual Property experience, Joel actively tries cases in both state and federal courts. A founding member and former co-chair of the firm's Intellectual Property and Technology Service Group, 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.

Capabilities

Practice Areas

Copyrights Entrepreneurial Services Intellectual Property & Technology Intellectual Property Litigation Licensing Media / First Amendment Law Trademarks

Recent News, Articles & Speaking Engagements

The Twelve Days of I.P. Christmas

with Jeffrey A. Haeberlin , James Hayne , Thomas J. Mihill (TJ) , B. Aaron Schulman , Gary N. Stewart (Nick) , and Patrick M. Torre, Stites & Harbison Client Alert, December 14, 2022

Dispute Counseling and Strategies

Eleventh Annual Trademark Boot Camp, September 1, 2021

Amazon Unveils Its Utility Patent Neutral Evaluation Procedure

Stites & Harbison Client Alert, May 13, 2019

Understanding Individual Property Rights and Avoiding Pitfalls in Your Practice

Scaling Up Group Dental Symposium, November 14-16, 2018

One Important Thing To Do Before You Ring In The New Year!

Stites & Harbison Client Alert, December 28, 2017

First Amendment Protects Trademark Owners from Government Censorship

with Alexandra MacKay, Stites & Harbison Client Alert, December 22, 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

The Supreme Court Slants Toward Tam: Disparagement Clause Ruled Unconstitutional

Stites & Harbison Legal Update, 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 Infrin

Stites & Harbison Legal Update, March 31, 2017

The Supreme Court Redefines 'Exceptionality' and Lowers Bar

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

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

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Recent Assignments

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

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Bar Admissions

California

Kentucky

U.S. Court of Appeals for the 6th Circuit

U.S. Court of Appeals for the 9th Circuit

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Central District of California

U.S. District Court for the Eastern District of Kentucky

U.S. District Court for the Northern District of California

U.S. District Court for the Southern District of California

U.S. District Court for the Western District of Kentucky

U.S. Supreme Court

Firm Leadership

Firm Recruiting Committee, Member

Louisville Office Recruiting Committee, Co-Chair

Diversity Committee, former Member

Management Committee (2011-15)

Memberships

American Bar Association

International Trademark Association, Board of Directors (2010-12); Chair, Membership Services Committee (2008-09)

Louisville Bar Association

Federal Circuit Bar Association

Kentucky Bar Association

State Bar of California

Community Involvement

Stanford University Alumni Club in Louisville, Founding Member

International Trademark Association, Board of Directors (2010-12)

Kentucky Council on Economic Education Board of Directors, Former Member

Walden School, former member of Board of Trustees (2008-11)

St. Francis School, Board of Trustees (2010-17)

Education

J.D., 1986

University of California at Los Angeles

A.B., Economics and Public Policy, 1983

Stanford University

• Ralph H. Foss Memorial Scholar

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. 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.

Accolades

Best Lawyers in America^®, Copyright Law, Information Technology Law, Intellectual Property Litigation, Patent Litigation, Trade Secrets Law and Trademark Law (2001-24)

Best Lawyers in America^®, Louisville Area Lawyer of the Year in Copyright Law (2017, 2019, 2024)

Best Lawyers in America^®, Louisville Area Lawyer of the Year in Litigation - Patent (2021)

Best Lawyers in America^®, Louisville Area Lawyer of the Year in Litigation - Intellectual Property (2020)

Best Lawyers in America^®, Louisville Area Lawyer of the Year in Trademark Law (2018)

Kentucky Super Lawyers^® (2007-24)

Kentucky Super Lawyers^®, Top 50 Attorneys in Kentucky (2010-15, 2017)

Chambers USA, "America's Leading Lawyers for Business," Intellectual Property (2013-23)

Louisville Magazine's "Top Lawyers" for Copyright/Trademark Law and Information Technology Law (2013, 2016)

Managing Intellectual Property, IP Stars (2013-23)

WTR 1000 - The World's Leading Trademark Professionals, World Trademark Review (WTR) (2023-24)

Testimonials

“

Joel Beres is "a very good attorney and IP litigator," says an interviewee. He acts for an impressive roster of national clients on the enforcement of IP rights, handling matters such as patent infringement claims, trademark disputes and trade secrets litigation.

- Chambers Commentary (USA), 2020

“

. . . 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.

- Chambers Commentary (USA), 2016

“

An impressive litigator who is thorough and attentive to details.

- Chambers USA, 2010

“

Every case he does, he does extremely well.

- Chambers USA, 2008

“

. . . one of the most responsive, effective legal advisers I have ever worked with.

- Best Lawyers, 2007

Contact Resources

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