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"When I started Build-A-Bear Workshop, Alan Nemes guided me in protecting our brand globally as well as on the internet. Our landmark heart registration allowed us to protect this unique and memorable brand feature worldwide. Alan knows what it takes to support clients with heart and soul to build a great brand."

Maxine Clark, Founder, Build-A-Bear Workshop, and CEO, The Clark-Fox Family Foundation

Overview

Alan helps consumer products and services companies, including those in the food, beverage, and fashion industries, gain and maintain their competitive edge through solid intellectual property strategies.

Early in his legal career, Alan served as Intellectual Property Counsel for the former Edison Brothers Stores Inc., then one of the country’s largest footwear and fashion brands. He oversaw enforcement and prosecution of  a large global trademark portfolio and worked with attorneys around the world to enforce and protect the company’s intellectual property. However, the crux of Alan’s role was conferring with business colleagues to determine which marks mattered most for revenue generation and business priorities and developing a corresponding registration and enforcement strategy. The experience Alan obtained early on afforded him direct insight into the challenges and pressures that in-house counsel, marketing executives, and business development clients face in their fast-paced businesses—and taught Alan how business needs and goals inherently drive IP strategy.

Alan draws on his practical, in-house business experience today, strategizing with clients to ensure efficient and effective use and protection of their trademarks, copyrights, trade dress, registered designs, rights of publicity, configurations, domain names, social media names, and other intellectual property. He brings that experience to clients, be they small start-ups, mid-size businesses, or publicly traded, multi-national companies, to enforce and enhance their trademarks and other IP.

Alan represents clients in domestic and worldwide IP disputes. He protects thousands of trademark applications and registrations globally and directs hundreds of enforcement actions in a multitude of countries. He has won numerous orders and judgments from the U.S. Trial and Appeal Board, civil courts, and foreign trademark tribunals.

Alan provides real-world, bottom-line advice regarding where clients should concentrate enforcement resources and plans for IP expansion. He partners closely with clients, executive officers, and in-house teams, asking the right questions to uncover the business concerns and motivations that should drive IP strategy.

"When I started Build-A-Bear Workshop, Alan Nemes guided me in protecting our brand globally as well as on the internet. Our landmark heart registration allowed us to protect this unique and memorable brand feature worldwide. Alan knows what it takes to support clients with heart and soul to build a great brand."

Maxine Clark, Founder, Build-A-Bear Workshop, and CEO, The Clark-Fox Family Foundation

Industries

Services

Recognition

  • The Best Lawyers in America®, Copyright Law, Litigation-Intellectual Property, Trademark Law, 2005-2024; Advertising Law, 2024; Best Lawyers® Trademark Law "Lawyer of the Year," St. Louis, 2014, 2020; Best Lawyers® Copyright Law "Lawyer of the Year," St. Louis, 2019
  • World Trademark Review 1000: The World’s Leading Trademark Professionals, 2021-2022, 2022-2024
  • Chambers USA, Intellectual Property Law, 2012-2018
  • Martindale-Hubbell AV Preeminent

Education

  • J.D., Washington University in St. Louis School of Law
      • Order of the Coif
      • Washington University Law Review
  • East Asian Legal Studies, Harvard University
  • B.A., Indiana University

Admissions

  • Missouri
  • U.S. District Court, Eastern District of Missouri
  • U.S. Court of Appeals, Fifth Circuit
  • U.S. Court of Appeals, Eighth Circuit

Professional Memberships and Certifications

  • American Bar Association
  • The Bar Association of Metropolitan St. Louis
  • International Trademark Association
  • The Missouri Bar
2023 Pro Bono Contributor
Featured Experience

Heart Concealed in Stuffed Animals Wins Trademark Registration

Alan sought trademark registration for a three-dimensional heart that is sewn inside a stuffed animal. Even though the mark cannot be seen after placement, Alan argued in the U.S. Patent and Trademark Office (USPTO) that the heart served as a distinct and unique trademark. He succeeded in obtaining registration for the mark in the United States and several other countries around the world.


Additional Experience
  • Manages intellectual property assets for specialty food and beverage companies.
  • Enforces trademark and copyright rights for international fashion brands.
  • Advises consumer products clients in acquisition and divestiture of national and international trademarks.
  • Negotiated multimillion-dollar trademark acquisition agreement for national beverage client.
  • Identifies and obtains nontraditional trademarks for clients.
  • U.S. Trademark Office refused to register client's trademark for food product based upon existing cited registration for restaurant services; appealed to the U.S. Trademark Trial and Appeal Board (TTAB) arguing that the marks were distinguishable; obtained reversal from TTAB and registration of mark for client.
  • Obtained multiple decisions before the U.S. Trademark Trial and Appeal Board (TTAB) refusing registration of marks infringing upon client's existing registrations, including those in the food, beverage and fashion industries.
Outside the Office

Alan serves on the National Council of the American Israel Public Affairs Committee (AIPAC), a bipartisan organization working to promote strong bipartisan U.S.-Israeli relations, and serves as the St. Louis AIPAC political chair. Additionally, he is past president of Bais Abraham Congregation in St. Louis, where he also served as a board member for over 20 years. He is also an avid singer, songwriter, and performer.

An avid commuter biker, Alan has always enjoyed cycling to work and finds the ride home a great way to end the day.

IP Author and Fashion & Apparel

Given his extensive knowledge and experience in product intellectual property, Alan is valued as a speaker and writer.

For the 2012 and 2023 Oxford University Press editions of Overlapping Intellectual Property Rights, Alan co-authored the chapter Overlapping Rights in Designs, Trademarks, and Trade Dress. Recent speaking engagements on similar topics can be found here.

Alan has developed a niche practice advising fashion and apparel designers, manufacturers, importers, distributors, and retailers. Alan also advises companies in the food and beverage industries, representing both local and international clients in protecting and enforcing their IP assets.