hot topics in hot topics in intellectual property law

Transcription

HOT TOPICS IN
INTELLECTUAL PROPERTY LAW
SPEAKERS
CASEY MANGAN
PHILIP A. JONES
SCOTT J. SLAVICK
HOT TOPICS IN INTELLECTUAL PROPERTY LAW
Thursday, July 15, 2010
TABLE OF CONTENTS
AGENDA
TAB 1
FIRM OVERVIEW
TAB 2
TRADEMARK GROUP OVERVIEW
TAB 3
EFFECTIVE STEPS FOR IN-HOUSE COUNSEL TO ENFORCE AND
DEFEND THEIR TRADEMARKS
TAB 4
JUST THE FAQ’S: THE TOP 10 MOST FREQUENTLY ASKED
TRADEMARK QUESTIONS
TAB 5
SPEAKER BIOGRAPHIES
TAB 6
Casey Mangan, Allstate Insurance Company
Philip A. Jones, Brinks Hofer Gilson & Lione
Scott J. Slavick, Brinks Hofer Gilson & Lione
TAB 1
HOT TOPICS IN INTELLECTUAL PROPERTY LAW
Thursday, July 15, 2010
AGENDA
5:00 p.m.
COCKTAILS
6:00 p.m.
WELCOME AND DINNER
6:15 p.m.
EFFECTIVE STEPS FOR IN-HOUSE COUNSEL TO ENFORCE AND
DEFEND THEIR TRADEMARKS
Casey Mangan, Allstate Insurance Company
Philip A. Jones, Brinks Hofer Gilson & Lione
6:45 p.m.
JUST THE FAQ’S: THE TOP 10 MOST FREQUENTLY ASKED
TRADEMARK QUESTIONS
Scott J. Slavick, Brinks Hofer Gilson & Lione
7:00 p.m.
Q&A
7:15 p.m.
ADJOURNMENT
TAB 2
FIRM OVERVIEW
Few law firms are able to provide comprehensive intellectual property legal
services as effectively and efficiently as Brinks Hofer Gilson & Lione. The
practice of our law firm is now—and always has been—devoted to intellectual
property law.
With approximately 170 attorneys, Brinks is one of the largest firms in the
United States specializing in intellectual property law. The majority of the
firm’s lawyers are centrally located in Chicago, with additional lawyers in Ann
Arbor, Michigan; Indianapolis, Indiana; Research Triangle Park, North
Carolina; and Salt Lake City, Utah. In addition, we recently opened a new
office in Washington D.C., in close proximity to the Patent and Trademark
Office.
For more than 90 years, Brinks has provided a full range of patent,
trademark, trade secret, copyright and unfair competition services, including
litigation, prosecution, licensing and counseling.
Brinks:
litigates on behalf of U.S. and international clients in all fields of
intellectual property law in state and federal courts
recommends and conducts alternative dispute resolution proceedings,
including arbitration proceedings, to reduce the burden and expense of
litigation
manages patent, trademark and copyright portfolios to maximize
worldwide protection
prosecutes patent, trademark and copyright applications in the United
States and worldwide through a network of trusted international
associates developed over many decades
provides counsel on the most effective ways of protecting and exploiting
each type of intellectual property asset and of avoiding intellectual
property rights of others
conducts technology searches to evaluate the patentability of inventions,
the validity of existing patents, and the state of the art
renders opinions of patent, trademark and copyright validity and
infringement
negotiates and prepares licenses and other technology-transfer
agreements in the U.S. and throughout the world
counsels on a wide range of Internet matters, including IP rights online,
Web site terms and conditions, domain name usage and cyber-security
issues
provides a trademark watch service to identify confusing trademarks of
competitors as they are published
Our depth of experience, our size and our reputation offer many advantages
not found in other firms. Our depth allows us to serve you quickly, effectively
and with attention to detail. Our size permits us to staff and handle a large
number of the most complicated matters. Our reputation often helps us to
resolve disputes more quickly than could be accomplished by firms with a
lesser reputation.
We believe that working as a team is often the best approach to managing a
client’s work. This allows us to include lawyers with varying technical and
legal experience levels, which is cost-efficient and allows you access to more
than one lawyer who is familiar with you and your concerns. At the same
time, we control the size of the team so that you know the individuals who will
work on your matters.
While some aspects of our service, such as responsiveness and efficiency,
are the same for all clients, we have learned that one size does not fit all.
Thus, we look for ways to optimize the relationship with each client.
Particularly in litigation matters, we try to understand the client’s business and
legal objectives, and prepare cost estimates for each phase of the litigation
that are based on those objectives. We communicate with the clients on how
we are meeting those estimates and whether there is any need for change.
In short, we offer a high quality product at a good value.
Our Clients
Law firms are known by their clients, and you and your colleagues should be
aware of the nature and quality of our patent and trademark client base. We
are very proud of it and believe it is second to none. Representative clients
of the firm include:
Aero Products International, Inc.
Alpine Electronics of America, Inc.
Alps Electric Company, Ltd.
Alticor Inc.
American Airlines
Amway Corporation
Brunswick Corporation
Cardinal Health, Inc.
ChemoCentryx
Chicago Board of Options Exchange
Continental Teves, Inc.
Cook Incorporated
Diamond Power International, Inc.
DKB Household USA Corporation
Esco Technologies, Inc.
Exatec LLC
Fellowes, Inc.
Flexsys
Freescale Semiconductor, Inc.
Herman Miller, Inc.
Interactive Data Corporation
Internet2
John Deere & Company
Kimberly-Clark Worldwide, Inc.
LG Display Company, Ltd.
Manitowoc Foodservice Companies, Inc.
Maui Jim, Inc.
Mectron Engineering Company
Medcor, Inc.
Motorola, Inc.
NuStep, Inc.
Optivus Technology, Inc.
Osmic, Inc.
Perceptron, Inc.
Picometrix, Inc.
Purdue Research Foundation
Quixtar Inc.
R.J. Reynolds Tobacco Company
Siemens AG
The Northern Trust Company
The University of Chicago
United Air Lines, Inc.
Visteon Global Technologies, Inc.
Wayne State University
William Beaumont Hospitals
Wisconsin Alumni Research Foundation
Wm. Wrigley Jr. Company
Yahoo!
ZF Friedrichshafen AG
Attorneys and Staff
Though most of our attorneys have chosen to concentrate their practices in
either litigation, on the one hand, or prosecution, counseling and licensing on
the other, all of our attorneys have had some experience in both litigation and
non-litigation matters. This broad experience brings to each matter a unique
perspective that permits our clients to obtain comprehensive intellectual
property protection that will withstand the rigors of scrutiny by adversaries or
the courts.
Many of our attorneys are nationally recognized authorities and several have
authored major treatises on intellectual property. Jerome Gilson has been
ranked as the top trademark lawyer in the world according to a survey
conducted by Managing Intellectual Property magazine. Jerome is also the
author of the ten-volume treatise Trademark Protection and Practice
(Matthew Bender), and has worked with Congress on several amendments to
the Lanham Act. Jeffrey Handelman, former Trademark Group Chair,
recently authored Guide to TTAB Practice (Aspen Publishers) which provides
an in-depth analysis of cases before the Trademark Trial and Appeal Board.
Mary Squyres has written a treatise entitled Trademark Practice Throughout
the World (West). Cynthia Homan and Charles McMahon have co-authored
the 2010 Supplement for Patents and the Federal Circuit. Cynthia and
Charles will continue to maintain this well-known treatise, with plans to
publish the 10th Edition in 2011. Richard Kaplan, Cynthia Homan, William
Frankel and Christopher Dolan are co-authors of the book in West Group’s
Corporate Compliance Series entitled “Designing an Effective Intellectual
Property Compliance Program.” William Frankel, Glen Belvis, Laura Beth
Miller and Marc Richards are contributing authors to the 2005 and 2008
editions of the Intellectual Property Handbook published by the Illinois
Institute of Continuing Legal Education. Members of the firm also have written
articles, and chapters in multi-volume treatises, and have spoken frequently
at professional and other meetings.
Our lawyers also are active in professional organizations that provide
worldwide contacts and up-to-date information on intellectual property
developments. Jerold Jacover is the past president of the Intellectual
Property Law Association of Chicago and William Frankel is the
organization’s past Chairman to the Copyright Committee, as well as the past
president of the Lawyers for the Creative Arts, a provider of pro bono legal
services to the arts community. Roy Hofer is a past president of the Federal
Circuit Bar Association and the Chicago Bar Association, and Jerome Gilson
was Counsel to the International Trademark Association. Michael Chu is the
past president of the National Asian Pacific American Bar Association, James
Sobieraj is the past president for the Intellectual Property Law Association of
Chicago and both Sobieraj and Allen Baum are past presidents of the
Licensing Executives Society.
Firm Capabilities
Brinks possesses full capabilities in international patent and trademark
practice and works with a network of qualified associates around the world.
Our international practice serves as a full-service resource for small, midsized and large companies by establishing, protecting and enforcing patent
and trademark portfolios around the world. Our International Patent Group,
headed by Michael Milz, has 13 full-time administrative assistants and
paralegals. More than 7,000 international patent files are housed and
managed under John’s direction. As head of the firm’s International
Trademark Group, Mary Squyres runs one of the largest in-house
international trademark practices in the country with more than 12,000 active
files and 8 staff assistants. She is one of a small number of lawyers in the
country who specializes in the field of international trademark law.
The contacts made through professional organizations and past client
matters over the last half-century have permitted us to establish personal
relationships with the preeminent intellectual property practitioners throughout
the world. We know from experience that the foreign associates with whom
we work are competent, dedicated and effective. Our attorneys and
paraprofessionals correspond daily on trademark matters with our network of
foreign associates worldwide.
Our combined use of attorneys and
paraprofessionals allows us to manage our international filings and
maintenance in the most cost efficient manner possible.
Litigation encompasses a major part of our practice. Many members of the
firm have had significant jury trial experience, which is not common in the
intellectual property field. We also have a large number of skilled patent,
trademark and copyright practitioners who procure and maintain intellectual
property rights for our clients.
Diversity in the Workplace
Brinks believes in fair and equitable treatment of all of its employees and has
an Equal Employment Opportunity policy in place. Our lawyers are a diverse,
well-rounded group of individuals. We are proud to have a number of women
and minority attorneys in our firm and among our partnership ranks,
particularly given our legal specialty, where the majority of our hiring is limited
to a smaller pool of qualified lawyers having technical degrees. We
aggressively strive to hire minorities seeking positions in intellectual property
law, and we encourage and support their advancement in our field of
practice. Many of our attorneys are also involved in diversity focused
organizations. Michael Chu is the past president of the National Pacific Asian
American Bar Association. Lawrence Almeda is the past president of the
Michigan Asian Pacific American Bar Association, and he is currently on the
State Advisory Committee for the United States Commission on Civil Rights
and is the secretary and a council member for the Governor’s Advisory
Council on Asian Pacific American Affairs. Manish Mehta has recently been
elected as President of the Indian-American Bar Association of Chicago, and
Michael Chu received the Filipino Community Service Award from the AsianAmerican Coalition of Chicago.
Pro Bono Work
Brinks has a very active pro bono program, with many of our attorneys
currently volunteering their time and efforts on behalf of pro bono clients.
Jerome Gilson is on the board of directors for the Public Interest Law Initiative
and William Frankel is the immediate past president of Lawyers for the
Creative Arts. Several of our attorneys work with the Legal Assistance
Foundation of Metropolitan Chicago, Lawyers for the Creative Arts, National
Immigrant Justice Center, Cabrini Green Legal Aid Clinic, Legal Services of
South Central Michigan and other organizations. Our lawyers also have
handled Veteran appeals before the Federal Circuit.
TAB 3
TRADEMARKS
Brinks Trademark Group performs the full range of trademark-related
services in the United States and abroad. Jerome Gilson, named partner and
senior member of the Trademark Group is the author of Gilson on
Trademarks, the leading treatise in this field. Firm lawyers also hold positions
of responsibility in the International Trademark Association.
United States Trademark Prosecution and Registration
Registration can be a crucial step in protecting a trademark. In the United
States, federal registration creates a presumption that the registrant has the
exclusive right to use the trademark.
Because of its involvement in drafting and enacting the Trademark Law
Revision Act of 1988, the firm is uniquely qualified to provide advice on the
intent-to-use procedures that were initiated by this act. The firm also represents
registrants in opposition, cancellation, and other contested proceedings.
International Trademark Prosecution Registration and Litigation
For more than 80 years, Brinks has represented its clients through longstanding relationships with its associates in countries outside the United
States. Not only does the firm prosecute trademarks in non-U.S. countries,
but it also actively represents its clients in oppositions, cancellations and
litigation.
Risk Analysis
The firm provides opinions on the legal risks involved in adopting particular
trademarks.
Alternative Dispute Resolution
Brinks attorneys frequently have served as arbitrators of trademark disputes.
The firm was instrumental in the addition of an ADR provision for trademark
cases to the Rules of the U.S. District Court for the Northern District of Illinois.
The firm is a signatory to the ADR Pledge of the Center for Public Resources,
and firmly believes in settling trademark disputes without litigation.
Protective Monitoring
Through its trademark-monitoring program, Brinks reviews various
publications including the Patent and Trademark Office Official Gazette, to
identify marks that could conflict with trademarks of the firm's clients. The
firm's trademark-monitoring efforts frequently lead to the resolution of a
conflict before it reaches the stage where litigation becomes necessary.
Licensing
Brinks advises clients on the most effective ways of licensing trademark
rights in domestic and foreign markets. The firm also negotiates license
agreements on behalf of its clients.
Portfolio Management
Brinks provides efficient, reliable, computerized management of trademarks.
The firm monitors license agreements. It also ensures that clients' trademark
portfolios meet requirements of registration both in the United States and
throughout the world.
Litigation
Brinks lawyers have extensive trademark litigation experience in federal
courts, before the International Trade Commission and before the Trademark
Trial and Appeal Board of the U.S. Patent and Trademark Office. The firm
also helps its clients to resolve trademark disputes outside the United States.
Some of our recent notable cases include:
National Association of Realtors®
The U.S. Trademark Trial and Appeal Board ruled in favor of Brinks’ client,
the National Association of Realtors® (NAR), holding that the terms “Realtor®”
and “Realtors®” function as valid collective service marks belonging to NAR.
The Trademark Board found that the “Realtor®” marks, coined in 1916, are
not generic terms referring to all real estate agents, but rather refer only to
real estate agents who are members of NAR and one of its local or state
associations.
Garcia v. City of Chicago
Brinks defended our long-standing client City of Chicago’s use of GRAFFITTI
BLASTERS in connection with its graffiti removal services. The U.S. District
Court for the Northern District of Illinois granted the City’s motion for
summary judgment on laches grounds finding the City’s evidence and
argument demonstrated a “poster child for a laches defense.”
R. J. Reynolds Tobacco Co. v. Premium Tobacco Stores Inc.
Brinks represented R. J. Reynolds Tobacco Co. in a gray market cigarette
case brought against a nationwide cigarette retailer who sold foreign CAMEL,
WINSTON, and SALEM cigarettes in the U.S. The case was tried before a
jury in the U.S. District Court for the Northern District of Illinois. The jury
verdict was for R. J. Reynolds, awarding over $3.5 million in damages. The
jury verdict and awards of damages and interest were affirmed on appeal.
Playboy Enterprises International, Inc. v. Bennett
The U.S. Trademark Trial and Appeal Board ruled in favor of Brinks’ client,
Playboy, in an opposition against a trademark application for PLAYERS AND
BUNNIES and Design for various entertainment services.
The U.S.
Trademark Trial and Appeal Board found the trademark was confusingly
similar to Playboy’s well-known PLAYBOY and Rabbit Head Design marks,
and ruled in favor of Playboy.
AfterHours Formalwear, Inc. v. Tuxedos, Inc.
Brinks successfully defended a local retailer sued in the U.S. District Court for
the Northern District of Illinois over its use of the mark FORMALLY MODERN
TUXEDO in retail formalwear business. The plaintiff asserted rights in the
trademark, MODERN TUXEDO, and sought a preliminary injunction. The
Court denied the motion because the plaintiff did not meet its burden of
showing its mark was protectable, particularly failing to overcome evidence
the term was generic.
Apollo Colors, Inc.
The U.S. Trademark Trial and Appeal Board ruled in favor of Brinks’ client
Apollo Colors, Inc. On appeal from the trademark examiner's final refusal to
register our client's house mark, APOLLO, the Trademark Trial and Appeal
Board ruled in favor of our client and reversed the examiner's refusal. The
Board concluded that APOLLO for "color pigments for use in the graphic arts
industry" is not likely to cause confusion with the identical mark APOLLO for
dye stuffs and their intermediates, pigments and mordants for use in the
manufacture of textile, leather and paper.
Aero Products International, Inc.
Brinks obtained a jury verdict of patent and trademark infringement for the
firm's client, Aero Products International, Inc., in an action filed and tried in
the U.S. District Court for the Northern District of Illinois. As a result of the
jury's verdict and post-trial activity, Aero Products has been awarded
injunctive relief, patent damages for willful infringement of $5.9 million,
trademark damages of $1 million, prejudgment interest and attorneys' fees.
Swanson Tool Company, Inc.
At the request of Brinks attorneys, the U.S. District Court in Chicago ordered
the seizure of counterfeit tools from a number of importers and retailers.
Three days later, U.S. Marshals and Brinks attorneys were at the defendants’
premises conducting simultaneous seizure raids in Chicago and Houston.
The raids netted over 1,500 counterfeit tools. On March 17th and 19th, the
Chicago Court confirmed that the seizures were proper and issued
preliminary injunctions against the defendants. Additionally, the Court
entered judgment against one of the defendants, Frankwell Trading
Company, Inc., for $600,000 in statutory damages, along with attorneys’ fees
and costs.
Rubik’s Cube®
Brinks filed a complaint on behalf of Seven Towns Ltd., the owner of the
Rubik’s Cube® puzzle, against a defendant who was selling unauthorized
cube puzzles. The case, filed the U.S. District Court for the Northern District
of Illinois, was resolved when the defendant agreed to entry of a Consent
Judgment that enjoined it from offering the accused product or any other
cube puzzle that gives rise to a likelihood of confusion. The defendant also
agreed to pay damages to Seven Towns.
Herman Miller
Brinks trademark prosecutors obtained a Federal Trademark Registration for
the configuration of Herman Miller’s popular and iconic AERON chair. When
a Canadian company introduced its competing chair in the United States,
Brinks attorneys brought suit in the U.S. District Court in Chicago on behalf of
Herman Miller for trademark, trade dress and patent infringement. As a result
of the lawsuit, the Canadian company agreed to make distinguishing
alterations to the shape of its chairs.
TAB 4
Effective Steps
p for In-House
Counsel to Enforce and Defend
Their
e Trademarks
ade a s
PHILIP A
A. JONES
CASEY MANGAN
July 15, 2010
2
Effective Steps for In-House
Counsel to Enforce and Defend
Their Trademarks
Enforcement – Someone is
infringing your company’s
company s mark
Defense – Your company
receives a cease and desist letter
Enforcement – It appears that someone is
infringing your mark

4
Pre-contact due diligence –
Make sure your company’s
company s mark is in use,
and the use is proper

Gather evidence of use extending as far back
as possible and look for good trademark use

Identify persons who could testify about
hi t
history
off use
Enforcement – Look before you leap

5
Pre-contact due diligence
g
((cont)) –

Register your company’s mark

If appropriate, file Section 15 declaration

If your company’s mark is registered, review the
prosecution file history

Check to see if the mark is in use on all the
goods/services identified in the registration

If your company’s mark is not registered, confirm the
geographic extent of the mark’s
mark s use
Enforcement – Look before you leap

6
Pre-contact due diligence
g
((cont)) –

Conduct a search – look for third party use which may
weaken your company’s mark

Consider non
non-trademark
trademark counterclaims – Make sure
there are no other issues between your companies
that could come to a head because of the cease and
desist letter
Enforcement – Pre-C&D Checklist
Assessment
Priority – the critical threshold question
Your
Y
company’s
’ priority
i it
7

First use

Filing date of application if earlier than first use

Gaps in use/abandonment
Enforcement –Pre C&D Checklist
Priority (cont)
Infringer’s Priority
Trademark application
Launch date of website
Internet Wayback Machine
Industry information
Secretary of State records
D&B report
Trademark investigator
8
Enforcement – Pre C&D Checklist
Priority (cont)
Very difficult to be positive about priority
Tacking
Assignment from prior user
Never assume you have priority.
9
Enforcement –Pre-contact investigation

Private Investigators
Valuable resource to collect information about infringer
“Pretexting
Pretexting” can raise ethical issues; admonitions
against:
10

contacting opponent directly and circumventing
counsel

making false statements of material facts to third
parties

violating the professional rules through another
person; and

dishonest or deceptive conduct
Enforcement –Pre-contact investigation

Private Investigators (cont)
Guidelines from relevant court decisions:
11

Limit contacts to lower level employees of the
infringer

Pose as a consumer seeking information

Only record what is said in standard sales context

Do not engage in elaborate deceptions

Be especially careful if litigation has commenced
Enforcement – Pre-contact self-assessment
Assessment (cont)

12
How strong is your company’s mark?

Place on trademark continuum

Prior enforcement efforts

party
y independent
p
recognition
g
of yyour company’s
p y
Third p
mark (e.g., surveys, awards)?

Marketing and advertising expenditures
Enforcement – Pre-contact investigation – size
up the opponent
Assessment (cont)

13
Likelihood of confusion

Similarity of marks; goods/services

Presence of house mark

Is the Infringer after your company’s customers?

Does the Infringer have a registration or a pending
application?

Extent of use of Infringer’s
Infringer s mark

Geographic scope

Has Infringer begun using the mark?
Enforcement –– Pre-contact investigation

14
Who is the unauthorized user?

Competitor

Critic

Small player in the unauthorized distribution of
goods

Fan or loyal
lo al customer
c stomer

Business partner or licensee
Enforcement –– Pre-contact investigation –
Size up your potential adversary
What other characteristics of the
unauthorized user are germane?
15

Is it a large
g business entity?
y

Is it solvent?

Where is it located?

Is it historically aggressive or quick to settle?

What is the personality/reputation of its law firm?

Is it likely to file a lawsuit for a declaratory
judgment?
Enforcement –Pre-contact investigation -- risks
v. rewards
What other factors should I consider?
16

What is the potential cost of litigation?

g damages?
g
What is the likelihood of recovering

If you initiate a dispute and then not pursue, what
effect will this have on future enforcement efforts?

Can I suggest
s ggest a non
non-infringing
infringing alternati
alternative
e or a
disclaimer to help resolve the dispute?

Am I comfortable with this dispute potentially being
made public?
Enforcement – Cease and Desist Letters

Helpful Tips

If you are not positive of seniority,
g y
tread lightly
raise issue of potential confusion, and
present the concept of the ability to coexist
without
itho t stating that there is necessarily
necessaril a conflict
17

Helpful Tips
Assume your letter
will be public
18

Gus Lopez – toy
collector
(www.toysrgus)

Chilling Effects
Clearinghouse

“More cowbell!”
July 18, 2005
Sender Information:
NBC Universal, Inc.
Sent by: [Private]
Senior Counsel, Intellectual Property
Recipient Information:
[Private]
CafePress
Sent via: email
Re: SNL: "MORE COWBELL"

Helpful Tips

19
It’s hard to know all of the facts

Owners of Gumby
y and Pokey
y sent a cease and desist
letter to the registrant of the pokey.org URL
demanding transfer of the domain

Later, discovered registrant (nicknamed Pokey) was a
12-year old boy who received the URL as a birthday
present from his parents; company founder withdrew
C&D once the facts were known

Helpful Tips

Include in your cease and desist letters an explanation
that the law obligates trademark owners to police their
marks
k or risk
i k weakening
k i th
their
i rights
i ht

In certain cases, pick up the phone

Vendors

Fan Sites

Agents
If our agents
t misuse
i
our company marks,
k field
fi ld sales
l
personnel will contact the agent by phone or in person
.
20

21
Helpful Tips

Use common sense

Sometimes the facts don’t
Sometimes,
don t seem to add up:
22
23

24
MOUNTAIN VIEW, California,
June 21, 2010 — Geeknet, Inc.
… announces its public apology
to the National Pork Board for
unintended confusion
surrounding unicorn meat
versus pork.
“… never our intention to …
misguide American citizens
regarding the differences
between the pig and the
unicorn"
unicorn
“[S]pecial
[ ]p
discount to
everyone offended by the
portrayal of Unicorn Meat as
the new white meat."
For a limited time, visitors to
ThinkGeek.com can take
$10 off any order of $40 or
more by using the code
PORKBOARD at checkout.

25
Declaratory Judgment Risk

Previous test – “reasonable
reasonable apprehension of imminent suit”
suit

More recently, courts have applied Supreme Court’s
Medimmune decision (patent case) to trademark disputes

Express Scripts Inc. v. Intel Corp., 2010 U.S. Dist. LEXIS 18933
(E.D. Mo. Mar. 3, 2010). Court denies Intel’s motion to dismiss
DJ action triggered by demand letter.

Lesson: Even tepid demand letters can trigger a DJ action if the
i fi
infringer
iis liti
litigious;
i
size
i up your opponentt as b
bestt you can, ask
k
for more facts and qualify your statements (“may create a
likelihood of confusion) as means to reduce the DJ risk

Helpful Tips

Demands –

Be reasonable

B creative
Be
ti iin settlement
ttl
t demands.
d
d
License

Long Phase-Out
Tone –

26

Professional, avoid hostile and accusatory language

State preference for settlement, but reserve all rights

Mark correspondence “for settlement purposes” –
FRE 408

27
Maybe you don’t need a cease and desist
letter – informal business contacts

If competitor’s agent registers domain containing
our mark,
mark we contact in-house
in house counsel to raise our
concerns

Typically, issue is resolved without more

Similarly, we assist other insurers through their inhouse counsel if our agents adopt domains that are
problematic

Informal communication is far more efficient and
effective than formal cease and desist letters
28

Resolution – do we need a formal settlement
agreement?

Yes, if disputes are complicated, of longer
d ti
duration,
if liti
litigation
ti was pending,
di
or if you
are trying to build a track record of
enforcement.

Allows parties to address multiple facets of dispute

Provides a basis for breach of contract action for
noncompliance

Settlement agreement incorporated into court’s
dismissal order retains court’s enforcement powers
f noncompliance
for

Resolution – do we need a formal settlement
agreement? (cont)

No, if party (e.g., pay per click advertising
site)
it ) accedes
d tto your demands
d
d

29
Monitor periodically to confirm compliance
Tailor the resolution to the magnitude of the
dispute
Defense – receive cease and desist letter
Investigation

Priority

Is Accuser’s mark in use?

30
Has use been continuous?

Is Accuser’s registration still valid?

Review file history for Accuser’s
Accuser s registration

Review usage of Accuser’s mark

g the Accuser’s mark
Look for cases addressing
Assessment

Likelihood of confusion factors

Is Accuser’s mark famous or distinctive?

Third party usage of same/similar term

Conduct trademark search
Consider possible defenses

31
y of marks, goods/services
g
Similarity
Fair use,
se laches
laches, acq
acquiescence,
iescence abandonment
Other Considerations
32

Is this a test of wills?

Your company’s business goals with the accused
mark

Do you have an existing relationship with opposing
counsel that you can use to your advantage?

33
Look for leverage
g

Other marks you can assert against the Accuser

Foreign registrations

Business leverage

Other potential claims

P
Patent

Misappropriation/trade secret

Copyright

Antitrust

False advertising

Counterproposals
p p
–

34

Co-existence agreement

Carving
g out g
goods or services

Adding elements or designs

Geographic limitations

Disclaimer of affiliation

Be aware that consenting to another’s use of
same/similar mark may limit your opportunity to
object later to a third party’s use of
same/similar mark on the basis of a likelihood
of confusion
License

Counterproposals
p p
–

Offer to pay reasonable costs of adopting another
mark

Modifications
f
to registration/application
/

35
Willingness to limit description of
goods/services in application/registration may
obviate likelihood of confusion concern
CONCLUSION
36
TAB 5
Just The FAQ’s:
Th T
The
Top 10 M
Mostt F
Frequently
tl
Asked Trademark Questions
Scott JJ. Slavick
July 15, 2010
37
No. 10: Do I Need To Register
g
These Domain
Names Or Pay This Company?
• Trademark Filing Scam
No 10: Do I Need To Register These Domain
No.
Names Or Pay This Company (cont.)?
• Domain Name Scam
Dear CEO,
We are the department of Asian Domain registration service in China, have something need to confirm with you. we formally received an
application
li ti on June
J
23,2010.
23 2010 one company which
hi h called
ll d "B
"Brazil
il Kirkois
Ki k i Investment
I
t
t S.A"
S A" are applying
l i to
t register
i t "usebrinks"
" b i k " as Brand
B dN
Name
and Domains.
usebrinks.asia
usebrinks.cn
usebrinks.com.cn
usebrinks.net.cn
usebrinks.org.cn
usebrinks.tw
But we found that "Brazil Konkos Investment S.A" is not the original owner of the brand and trademark in the checking period,which belong
to your company .I need confirm with you whether your company authorized that company to register these domain name.If you have done
that ,We will finish the registration for them and link to their website.
If not ,please let me know ASAP.
In addition, we hereby affirm that our time limit for dissent application is 7 workdays. If your company files no dissent within the time limit,
we will unconditionally approve the application.
Best Regards,
Jack Liu(Mr)
Auditing Consultant
Tel: +0086-566-2629-555 Fax: +0086-566-2629-666
Add
Address:Room205,
No.D4 Qingxi
Q
SSouth
hG
Garden,
d SSouth-ChangJiang
h Ch
Road,Guichi
d G h Sh
Shi District,Chizhou,China
Ch h Ch
No. 9: What Is The Supplemental Register?
• Secondary Meaning
• 5 years off use
• Types of Marks
• Descriptive
D
i ti
• Surnames
• Geographic
G
hi T
Terms
• Trade Dress
• Rights Provided by Supplemental Register
• ®
• Blocks later filed applications
No 9: What Is The Supplemental Register (cont.)?
No.
(cont )?
• How They Differ
• No presumption of validity, ownership and exclusive
right to use
• Cannot block import of counterfeits
• Cannot become incontestable
• Mark Must be in Use to be on Supplemental
Register
• Cannot Oppose A Supplemental Register
Application (because it is not published)
• Conversion − Not Possible
No. 8: What Constitutes “Use
Use In Commerce
Commerce”?
?
• What constitutes bona fide intent to use?
• Amount
• Nature or quality
• Industry standards
• “Commerce”
• Interpreted broadly
• Foreign
• Internet
• Can I send something to my Mom?
• No
• Ordinary course of trade
No. 7: What Is The Difference Between State And
Federal Trademark Registrations?
• How
o Obta
Obtained
ed
• Use Requirements For
Registration
• Presumption Of Validity
• Basis Of Other Filings
• Recorded by Customs
• Geographic Area of Registration
y
• ® Symbol
No 7: What Is The Difference Between State And
No.
Federal Trademark Registrations (cont.)?
Why file a state trademark application?
• Faster, less expensive
• You may only use mark in one state
• May be blocked federally
• I registered my trade name with the state, so I can use
that trade name in my state, right?
• No
• No
N search
h conducted
d t d
• States register any name
• Still need trademark search
No. 6: Can I Use The ® Or Do I Have To Use The
TM Or SM?
• Trademark Marking
• Purpose Of Marking
• Provide notice
• Distinguish
Di ti
i h mark
k ffrom ttextt and
d other
th marks
k
• Reinforcement
• Monetary remedies
• What Initials Mean
• ® = federally registered
• TM = goods
• SM = services
No 6: Can I Use The ® Or Do I Have To Use The
No.
TM Or SM (cont.)?
• Repeated Markings
• At least once
• First time
• Capitalization, typeface, color or size
• Foreign Countries
• Local language
• Possibly ®
No. 5: What Are The Paris Convention And The
Madrid Protocol?
• Priority vs. Convenience
• Paris Convention
• Can go back in time 6 months
• Has a deadline
• Has additional costs
• Madrid Protocol
• Allows International Trademark
P t ti
Protection
• Has No Deadline
• Can
C save costs
t
• They Can Be Used Together
No. 4: What Is A Disclaimer?
•
•
•
•
Definition
Remains part of Mark
Generic Matter
Pictorial Representation Of
p
Matter
Descriptive
• Entity Designations
No. 3: Does My
y Company
p y Need A Social Media
Policy?
• Yes
• New FTC Guidelines On Endorsements
• Three Keys
• Be honest
• Tell people who you are
• Maintain Policy
No. 2: Can I Refer To My
y Competitor
p
Or Its
Products In My Advertising?
• Comparative Advertising
• Guidelines
• Be
B accurate/non-deceptive
t /
d
ti
• No endorsement
• No
N alteration
lt ti
• Other leading brands
• Not a monopoly
No. 1: Can I Stop
p Someone From Re-Selling
g My
y
Product?
• First Sale Doctrine
• When It Can Turn Into A Problem
• Material alteration
• Differences consumers care about
Conclusion
• Any Additional Questions?
TAB 6
CASEY MANGAN
Mr. Mangan is corporate counsel for Allstate Insurance Company in
Northbrook, Illinois. In that capacity, he represents Allstate and its
affiliates in matters involving all forms of intellectual property.
Mr. Mangan joined Allstate in 1986 as Assistant Counsel, and was
promoted to Associate Counsel and to his current position during his
tenure at Allstate. In 1990, he was a recipient of the Best of the Best
award, given to employees who provide extraordinary service to their
clients and customers. He is also the recipient of the Allstate Distinctive
Service Award.
Prior to joining Allstate, Mr. Mangan served as a law clerk to the
Honorable George W. Lindberg of the Illinois Appellate Court, and worked
for several Chicago law firms.
Mr. Mangan received his B.A. magna cum laude from the University of
Southern California in 1976 where he was named a member of Phi Beta
Kappa. He received his law degree from Northwestern University School
of Law and his Masters in Management degree from Northwestern
University’s Kellogg Graduate School of Management in 1981. While in
law school, he served as Managing and Case Note Editor of the Journal
of Criminal Law & Criminology.
Mr. Mangan is the coauthor of the Trademarks Chapter of the Thomson
West treatise Successful Partnering Between Inside and Outside Counsel
and of the article Beating Vendor Lockdown: Negotiating Software
Licenses For Your Organization, ACC Docket February, 2006.
As a member of the International Trademark Association, Mr. Mangan
serves as a member of INTA’s Board of Directors and as a member of the
In-House Practitioners Committee, and served during the 2008-2009 term
as the Subcommittee Chair of the Leadership Development
Subcommittee. Mr. Mangan is also the recipient in 2007 of the INTA
Volunteer Service Award for the advancement of committee objectives.
PHILIP A. JONES
312.321.4727
312.321.4299 (fax)
pjones@usebrinks.com
www.usebrinks.com
NBC Tower, Suite 3600
455 North Cityfront Plaza Drive
Chicago, IL 60611-5599
STATE BAR ADMISSIONS
Illinois
PRACTICE SUMMARY
Mr. Jones, chair of the firm’s U.S. Trademark Prosecution group,
practices in the fields of trademark and unfair competition law and
copyright law. His experience includes litigation in federal courts and
before the Trademark Trial and Appeal Board, analyzing clearance
opinions, client counseling, trademark and copyright prosecution, false
advertising issues and licensing. He has represented clients in the fields
of air transportation, Internet search engines, financial services, toys,
consumer products, restaurant and retail services, telecommunications,
and alternative newspapers. Mr. Jones has also handled domain name
arbitration proceedings.
ADMISSIONS
Illinois Supreme Court
U.S. Court of Appeals, 7th Circuit
U.S. Court of Appeals, Fed. Circuit
U.S. Dist. Court, N.D. Illinois
Supreme Court of the United States
Mr. Jones has given speeches on trademark topics in various venues
including the Association of Corporate Counsel Annual Meeting, the
Chicago chapter of the Association of Corporate Counsel, and
Practising Law Institute.
PRACTICE/INDUSTRY GROUPS
Anti-Counterfeiting
Trademarks & Unfair Competition
Copyright
Litigation
EDUCATION
J.D., cum laude, Boston University
School of Law, 1993
B.A., magna cum laude, History,
Princeton University, 1988
REPRESENTATIVE MATTERS
Jellyvision, Inc. v. AFLAC Inc., Civil Action No. 10 CV 0426 (N.D. Ill.
2010). Second chair for preliminary injunction plaintiff in trademark
suit challenging AFLAC’s use of YOU DON’T KNOW JACK mark.
Case pending.
United Air Lines, Inc. v. United Airways, Ltd., et al., Civil Action No.
09 CV 4743 (E.D.N.Y. 2009). Lead counsel for United Air Lines, Inc.
in trademark infringement suit. Case pending.
Garcia v. City of Chicago, Civil Action No. 07 C 5828 (N.D. Ill. 2009).
Lead attorney defending the City's use of GRAFFITTI BLASTERS in
connection with its graffiti removal services. Court granted City's
motion for summary judgment on laches grounds finding the 10 year
delay, combined with the City's evidence of prejudice, to be a "poster
child for a laches defense."
R. J. Reynolds Tobacco Co. v. Premium Tobacco Stores Inc., 79
USPQ2d 1843 (7th Cir. 2006); 58 USPQ2d 1532 (N.D. Ill. 2001).
Second chair for R.J. Reynolds Tobacco Co. in gray market
cigarettes case against seller of foreign CAMEL, WINSTON and
SALEM cigarettes in the U.S. Jury verdict for R.J. Reynolds,
awarding over $3.5 million in damages. Jury verdict and awards of
damages and interest affirmed on appeal.
Playboy Enterprises International, Inc. v. Bennett, Opposition No.
91173441 (T.T.A.B.). Lead attorney representing Playboy in
opposition against application for PLAYERS AND BUNNIES and
Design for various entertainment services. Board found marks were

confusingly similar and ruled in favor of Playboy.
Hilti, Inc. v. White Cap Construction Supply, Inc., Civil Action No. 08
CV 1840 (N.D. Ill.). Lead attorney representing Hilti in false
advertising action challenging statements made in comparative
advertising appearing in defendant's circular. Case settled.
Defendant issued retraction.
T7 Group, LLC v. Sutton, Civil Action No. 07 CV 1956 (N. D. Ill.).
Representing plaintiff in trademark infringement case asserting rights
in the mark BALL'N for apparel. Case pending.
AfterHours Formalwear, Inc. v. Tuxedos, Inc., Civil Action No. 06 CV
2460 (N.D. Ill.). Representing trademark infringement defendant and
antitrust counterclaimant in retail formalwear business, issues
include abandonment and genericness; plaintiff's motion for
preliminary injunction denied. Case pending.
Wizard Publications, Inc. v. Kimberly-Clark Corp., et al., Civil Action
No. 06-11-BU (D. Mont.). Representing defendant in copyright
infringement claim against images on pull up pants. Case pending.
The National Spiritual Assembly of the Baha'is of the United States
of America Under The Hereditary Guardianship, Inc. v. National
Spiritual Assembly of the Baha'is of the United States of America,
Inc., Civil Action No. 64 CV 1878 (N.D. Ill.). Representing trademark
owner in efforts to enforce 1964 prior judgment. Enforcement
proceeding pending.
800-JR Cigar, Inc. v. GoTo.com, Inc., et al., Civil Action No. 2:00 CV
3179 (D. N.J.). Defending Internet search engine in trademark
infringement case involving advertiser bids on Internet search terms.
Case settled.
United Parcel Service of America, Inc. v. United Air Lines, Inc.,
Opposition No. 125,726 (T.T.A.B.). Representing United Air Lines,
Inc. in opposition to mark UNITED SERVICES. Opposition pending.
Siskel Productions, Ltd. and Ebert Co., Ltd. v. Tivo, Inc., Opposition
No. 91154867 (T.T.A.B.). Represented opposers in action involving
THUMBS UP mark. Motion to dismiss denied. Opposition pending.
Endoplus, Inc. v. Schneiter, et al., Civil Action No. 05 C 7074 (N.D.
Ill. 2006). Declaratory judgment action involving copyright
infringement and trademark claims. Represented declaratory
judgment defendants/copyright infringement counterclaimants. Case
settled.
Government Employees Insurance Co. v. Google, Inc. and Overture
Services, Inc., 330 F.Supp. 2d 700 (E.D. Va. 2005). Defended
Internet search engine Overture Services, Inc. in trademark
infringement litigation involving advertiser bids on Internet search
terms incorporating plaintiff's trademark. Case settled.
PlasmaNet, Inc. v. Overture Services, Inc., Civil Action No. 02 CV
3075 (S.D. N.Y. 2002). Defended Internet search engine in
trademark infringement case involving advertiser bids on Internet
search terms. Case settled.
Novak v. Overture Services, Inc., Civil Action No. 02 CV 5164 (E.D.
N.Y. 2002). Defended Internet search engine in trademark
infringement case involving advertiser bids on Internet search terms.
Case settled.
NEXGEN Solutions, inc. v. NexGen Solutions Corp., Civil Action No.

02 CV 736 (W.D. Md. 2002). Lead counsel representing trademark
infringement defendant. Case dismissed for lack of personal
jurisdiction.
Nebo Systems, Inc. v. Telefonaktiebolaget LM Ericsson, et al., Civil
Action No. 02 C 4909 (N.D. Ill. 2002). Lead counsel representing
trademark infringement defendant/cancellation counterclaimant,
issues included distinctiveness and likelihood of confusion. Case
settled.
Star Alliance v. United Air Lines, Inc., Opposition No. 120,963
(T.T.A.B. 2002). Defended United Air Lines, Inc. in opposition to
STAR ALLIANCE mark based on likelihood of confusion. Opposition
dismissed.
Archer Daniels Midland Co. v. Narula, 2001 WL 804025 (N.D. Ill.
2001). Lead counsel for defendant/counterclaimant in trademark
infringement case involving dispute over priority and relatedness of
goods. Client's summary judgment motion granted in part and denied
in part. Case settled.
Hershy the Tin Man v. Avon Products, Inc., 59 U.S.P.Q.2d 1520 (D.
Mont. 2001). Represented defendant in trade dress case involving
jewelry. Summary judgment for defendant granted.
Chicago Reader, Inc. v. Current News, Inc., et al., (E.D. Mo. 2000).
Lead counsel representing plaintiff in copyright/trademark
infringement case involving the copying of client's THE STRAIGHT
DOPE column. Case settled after issuance of temporary restraining
order.
Perry v. City of Chicago, Civil Action No. 00 C 3827 (N.D. Ill. 2000).
Lead counsel representing defendant in trademark infringement
claim. Case settled.
Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q. 2d
1385 (T.T.A.B. 1999). Represented United Air Lines, Inc. in
opposition challenging the E-TICKET mark based on genericness.
Summary judgment for plaintiff granted.
Sloppy Joe's International, Inc. v. Kentucky Textiles, Inc., Civil Action
No. 96-10043 (S.D. Fla. 1996). Represented declaratory judgment
defendant/trademark infringement counterclaimant in case involving
the SLOPPY JOES mark for clothing. Case settled.
Tisket-A-Tasket Group Inc. v. H.S. Craft Mfg. Co., 53 USPQ2d 1284
(S.D. Ind. 1999), and 53 USPQ2d 1380 (S.D. Ind. 1999). Lead
counsel representing the manufacturer of popular LIGHT CICLES
holiday decorative lights against manufacturer of competing lights
under LIGHTSICLES mark. Obtained Temporary Restraining Order,
Preliminary Injunction and Contempt orders.
Ty Inc. v. Trading Cards Intl., Civil Action No. 98-7001 (C.D. Cal.
1998). Lead counsel representing Ty Inc., manufacturer of BEANIE
BABIES® plush toys. Obtained Temporary Restraining Order and
subsequent Consent Judgment against marketer of trading cards
featuring images of Ty's BEANIE BABIES® plush toys.
Ty Inc. v. Treasure Yesterday, Civil Action No. 4:99 CV 25, (D. Mo.
1999). Lead counsel representing Ty Inc. in action against marketer
of calendars, mugs and other accessories featuring images of Ty's
BEANIE BABIES® plush toys. Obtained Temporary Restraining
Order and subsequent Consent Judgment.
Northern Trust Corp. v. Northern Trust Services, Civil Action No. 97-
CV-04550, (N.D. Ill. 1997). Represented Northern Trust Corp. in
action against Northern Trust Services, owner of domain name
NORTHERN-TRUST.COM. Obtained Consent Judgment.
Hardee's Food Systems, Inc. v. Hardie's Nut Kettle, Inc., Opposition
Nos. 101,551 and 101,621 (T.T.A.B. 1997). Represented Hardee's
Food Systems, Inc. in successful opposition against Hardie's Nut
Kettle's applications to register HARDIE'S NUT KETTLE & Design
and HARDIE'S KORN KETTLE & Design.
Recreation Services, Inc. v. Odyssey Fun World Inc., 41 USPQ2d
1856 (N.D. Ill. 1997). Represented Recreation Services, Inc. in
trademark infringement litigation against Odyssey Fun World Inc.
PRESENTATIONS
“Hot Topics in Intellectual Property Law,” Association of Corporate
Counsel, Chicago Chapter, Chicago, Illinois, July 1, 2010
MEMBERSHIPS & AFFILIATIONS
International Trademark Association
SCOTT J. SLAVICK
312.321.4245
312.321.4299 (fax)
sslavick@usebrinks.com
www.usebrinks.com
NBC Tower, Suite 3600
455 North Cityfront Plaza Drive
Chicago, IL 60611-5599
PRACTICE/INDUSTRY GROUPS
Trademarks & Unfair Competition
Litigation
International Trademark
Copyright
Licensing
Anti-Counterfeiting
Green Technology
Trade Secrets
EDUCATION
J.D., Georgetown University Law
Center, 1998
B.A., History, Northwestern
University, 1995
STATE BAR ADMISSIONS
Illinois
PRACTICE SUMMARY
Mr. Slavick’s practice focuses primarily on trademark prosecution and
trademark litigation. In connection with this, he maintains all aspects of
his large corporate clients’ trademark portfolios. His relevant experience
includes litigation in numerous federal courts and before the Trademark
Trial and Appeal Board. In addition, he analyzes trademark searches,
drafts trademark clearance opinions and provides a great deal of client
counseling.
In the last several years, Mr. Slavick has expanded his practice to
include a growing expertise in trade secret law with a focus on its use in
the employment arena in connection with non-compete agreements,
confidentiality agreements and restrictive covenants. He has written
several articles on the subject, conducted numerous trade secret audits
and prepared several best practices manuals for his varied clients.
Because of its many applications, Mr. Slavick continues to grow this
area of his practice.
Mr. Slavick also possesses a great deal of experience in handling
international trademark matters. His practice includes international
trademark litigation, licensing and prosecution, including determination
of international filing strategies, negotiating worldwide co-existence
agreements and effective enforcement strategies to defend trademarks
and prevent infringements. In connection with this area of his practice,
Mr. Slavick often works with foreign associates around the world.
Depending on the issue at hand, Mr. Slavick has the personal
experience to decide who is best to work with anywhere in the world.
He has represented clients in the fields of air transportation, Internet
search engines, financial services, toys, consumer products, restaurant
and retail services, telecommunications, banking and health and fitness
clubs. Mr. Slavick has also handled domain name dispute proceedings,
counterfeit seizures, conducted many intellectual property audits,
handled worldwide trademark licensing projects, filed numerous
copyright applications and prepared several corporate intellectual
property compliance manuals.
During his career at Brinks, Mr. Slavick has consistently sought out
leadership positions. In doing so, he chaired the firm’s U.S. Trademark
Prosecution Committee, Co-Chaired the firm’s U.S. Prosecution Division
and currently serves as the youngest member of the firm’s Conflicts and
New Business Intake Committee. In addition, he has served on the
firm’s hiring, recruiting and docketing committees. He has also enjoyed
his numerous opportunities to serve as a mentor to several of the firm’s
associates.
HONORS/DISTINCTIONS
Leading Intellectual Property Lawyer, Leading Lawyers Network,
Law Bulletin Publishing Company, 2009
Illinois Super Lawyers, Rising Stars, 2009
REPRESENTATIVE MATTERS
Federal Court Cases
Bally Total Fitness Holding Corp. v. Kim2Bfit, LLC and Kim J. Garcia,
Civil Action No. 8:10-cv-01108-SDM-TBM (M. D. Fla. 2010).
Representing plaintiff in dispute over use of and application to
register KIM2BFIT for fitness services. Case pending.
Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp.,
Case No. 09 CV 0371 (Dist. N.D. Ga. 2009). Representing
defendant in dispute over embossing of toilet paper. Case pending.
T7 Group, LLC v. Robert Sutton, Case No. 07 CV 1956 (N.D. Ill.
2007). Represented footwear manufacturer in dispute over use of
BALL'N trademark. Conducted court-aided mediation in an effort to
resolve matter. Case successfully resolved with finding of
infringement and award of monetary damages, injunctive relief,
abandonment of defendant's trademark application and transfer of
infringing domain name to plaintiff.
Native Am. Arts, Inc. v. Jewel Food Stores, Inc. a/k/a Jewel-Osco; E.
Davis Int'l., Inc., Case No. 04 C 0277 (N.D. Ill 2005). Represented
defendants in dispute involving the Indian Arts and Crafts Act of
1990 and the Indian Arts and Crafts Enforcement Act of 2000
involving the sale of alleged Native American products. Case
resolved.
Fix-A-Dent, Inc. v. Qwikway Dent Tech., Inc., Progressive Casual
Ins. Co., Case No. 04 CV 7490 (N.D. Ill. 2004). Represented
defendant in trademark infringement dispute over use of plaintiff's
FIX-A-DENT trademark. Case resolved.
Safe-T Products, Inc., Classroom Products, Inc., and Extra
Measures, Inc. v. Learning Resources, Inc. and A. Daigger & Co.,
Inc., Case No. 01 C 9498 (N.D. Ill. 2004). Represented defendant in
trade dress dispute over use of various educational toy designs.
Case resolved.
The Edlong Corp. v. Cumberland Packing Corp., and Ronald F.
Schifsky, Case No. 02 CH 13349 (Circuit Court of Cook County,
Illinois County Department - Chancery Division 2003). Represented
plaintiff in enforcing a restrictive covenant and possible theft of trade
secrets when former employee left to join competitor. Case resolved.
PlasmaNet, Inc. v. Overture Serv., Inc., Case No. 02 CV 3075 (S.D.
N.Y. 2002). Represented Internet search engine in trademark
infringement dispute over advertiser bids on Internet search terms.
Case resolved.
Mark Nutritionals, Inc. v. AltaVista Co., Case No. SA-02-CA-0087 EP
(W.D. Tex. 2002). Represented Internet search engine in trademark
Case resolved.
1-800 Contacts, Inc. v. JSJ Enter., Inc. d/b/a Contact Lens

Connection, Case No. 02 CV 0705 (D. Utah 2002). Represented
plaintiff contact lense retailer in unfair competition and trademark
dilution dispute over use of client's house mark as a meta tag in
defendant's web site. Case resolved.
Ameritech Corp. v. Quaterra Commc'n Corp., 60 U.S.P.Q.2d 1603
(E.D. Wis. 2001). Represented plaintiff in trademark infringement
dispute over defendant's use of infringing domain name. Summary
judgment for plaintiff granted and plaintiff awarded attorneys' fees.
Northern Trust Corp. v. Cascade Tech., Inc., Case No. 01 CV 4181
(N.D. Ill. 2001). Represented plaintiff in trademark infringement
dispute over use of plaintiff's mark. Case resolved.
Thomas & Betts Corp. v. Panduit Corp., 55 U.S.P.Q.2d 1698 (N.D.
Ill. 2000). Represented defendant in trade dress infringement dispute
over the trade dress of cable tie products. Case resolved.
800-JR Cigar, Inc. v. GoTo.com, Inc., et al., Case No. 00 CV 03179
(D. N.J.). Represented Internet search engine in trademark
Case resolved.
United Air Lines, Inc. v. Imex Model Co., Inc. d/b/a Phoenix Model
Co. (N.D. Ill. 2000). Represented commercial airline company in
trademark infringement dispute over use of plaintiff's house mark on
unauthorized model planes. Case resolved.
Fellowes Mfg. Co. v. Bankers Box Storage, et al., Case No. 00 CV
8093 (N.D. Ill. 2000). Represented office supply company in
trademark infringement dispute over use of plaintiff's trademark.
Case resolved.
Signature Financial/Marketing, Inc. v Jason Wiseman, Case No. 99
CV 2449 (N.D. Ill. 1999). Represented plaintiff in trade secret
misappropriation dispute against former employee. Case resolved.
Ty Inc. v. Treasure Yesterday, Case No. 99 CV 25 (D. Mo. 1999).
Represented plaintiff in trademark infringement dispute over use of
plaintiff's trademark. Obtained Temporary Restraining Order and
subsequent Consent Judgment.
Swanson Tool Co., Inc. v. Midwest Tool Dist., Case No. 98 CV 8239
(U.S. N.D. Ill. 1998). Represented plaintiff in counterfeiting dispute
over sale of counterfeit construction products. Resolved with seizure
and destruction of counterfeit products.
Trademark Trial and Appeal Board Case Oppositions
Showa Glove Co. v. JODA Enters., Inc., Opp. No. 91193939.
Representing applicant in dispute over application to register BLACK
KNIGHT for tools. Case pending.
Super Bakery Inc. v. Livelong-Gastro Gmbh, Opp. No. 91192851.
Representing applicatn in dispute over application to register
SUPERGOOD for food products. Case successfully resolved.
T7 Group LLC v. Sutton, Opp. No. 91173272. Represented opposer
in dispute over application to register BALL'N for athletic apparel.
Case successfully resolved when applicant was denied registration.
Bally Total Fitness Holding Corp. v. Garcia, Opp. No. 91192301.
Representing opposer in dispute over application to register

KIM2BFIT for fitness services. Case currently pending.
Bally Total Fitness Holding Corp. v. Kovacs, Opp. No. 91190286.
Representing opposer in dispute over application to register BFIT
and Design for fitness services. Case successfully resolved when
applicant was denied registration.
Alacer Corp. v. Livelong-Gastro Gmbh, Opp. No. 91188620.
Representing applicant in dispute over application to register JUST
FEELIN' GOOD for food products. Case pending.
The Coca-Cola Co. v. Bruno Van Gaver, Opp. No. 91186774.
Representing applicant in dispute over application to register
MELLOW YELLOW for fashion items. Case resolved.
Kimberly-Clark Worldwide, Inc. v. Scott W. Jacobs, Opp. No.
91182499. Representing opposer in dispute over application to
register HUGGYBALL for clothing. Case successfully resolved when
Bally Total Fitness Holding Corp. v. BeFit Enters., Inc. Opp. No.
91184000. Representing opposer in dispute over application to
register BEFIT for fitness products. Case successfully resolved when
American Airlines, Inc. v. Am. Apparel, Inc., Opp. Nos. 91184480
and 91184941. Representing opposer in dispute over application to
register AA and Design for sale of clothing. Case pending.
HBI Branded Apparel Enters., LLC v. Bally Total Fitness Holding
Corporation, Opp. No. 91183527. Representing applicant in dispute
over application to register BALLY TOTAL FITNESS for clothing.
Case pending.
JODA Enters., Inc. v. Harbin Measuring & Cutting Tool Group Co.
Ltd., Opp. No. 91183018. Representing registrant in dispute over
application to register LINKS for tools. Case successfully resolved
when applicant revised its identification of goods.
J. Kinderman & Sons, Inc. v. Intermatic Inc., Opp. No. 91160366.
Represented applicant in dispute over application to register
YARDSCAPES for outdoor products. Case successfully resolved
when applicant received registration.
Schrader Bridgeport Int'l, Inc. v. Greenball Corp., Opp No.
91153015. Represented opposer in dispute over application to
register SCHREDDER for tires. Case successfully resolved when
Montgomery Ward & Co., Inc. v. Kingkraft, Inc., Opp. No. 9113818.
Represented opposer in dispute over application to register SHIP N
SHORE for hand bag. Case successfully resolved when applicant
was denied registration.
Bally Total Fitness Holding Corp. v. Vectra Fitness, Inc., Opp. No.
register PINNACLE for health club services. Case successfully
resolved when applicant was denied registration.
QSC II, Inc. v. AIG Wine & Spirits Import Co., Inc., Opp. No.
register LONG JOHN SILVER for alcohol. Case successfully
resolved when applicant was denied registration.
General Mills, Inc. v. Bally Total Fitness Holding Corp., Opp. No.
91107638. Represented applicant in dispute over application to
register BALLY TOTAL FITNESS NUTRITIONALS for energy bars.
Case successfully resolved when applicant received registration.
Hardee's Food Sys., Inc. v. Joanne Stathoulia d/b/a Frisco's Car Hop
Drive-In, Opp No. 91096552. Represented opposer in dispute over
application to register FRISCO's for restaurant services. Case
successfully resolved when applicant was denied registration.
Cancellation Actions
Data Connection Ltd. v. Metafile Info. Sys., Inc., Cancellation No.
92049983. Representing respondent in cancellation action to cancel
METAFILE for computer software. Case currently pending.
Paulie's Pizza, Inc. v. Deb Paul Corp., Cancellation No. 92048784.
Representing movant in cancellation action to cancel PAULIE'S HOT
DOG marks for restaurant services. Case successfully resolved
when registrant's registrations were cancelled.
Paulie's Pizza, Inc. v. Sala Gruppi, Inc., Cancellation No. 92048760.
Representing movant in cancellation action to cancel PAULY'S
marks for restaurant services. Case successfully resolved when
registrant's registrations were cancelled.
Northern Trust Corp. v. Apertus Tech., Inc., Opp. No. 92040820.
Represented movant in cancellation action to cancel PASSPORT for
financial services. Case successfully resolved when registrant's
registration was cancelled.
AnsMar Publishers, Inc. v. The Excel Program, Inc., Cancellation No.
92040299. Represented movant in cancellation action to cancel THE
EXCEL PROGRAM for educational services. Case successfully
resolved when registrant's registration was cancelled.
DST Sys., Inc. v. Innovus Multimedia, Inc., Cancellation No.
92031905. Represented movant in cancellation action to cancel
INNOVUS for consulting services. Case successfully resolved when
registrant's registration was cancelled.
Concurrent Use Proceedings
CP Acquisition Corp., LLC v. Madison Restaurant Acquisition
Corp., Concurrent Use No. 94002130. Represented applicant in
successfully securing a concurrent use registration for COCO
PAZZO.
International Disputes
Ternium Int’l, Inc. v. Quixote Trans. Safety, Inc., Opposition No.
B1576134. Representing applicant in European Union in dispute
over application to register TERMINUS. Case pending.
American Airlines, Inc. v. Affinion Publ'g, LLC. Representing opposer
in multijurisdictional dispute, including oppositions in CTM,
Switzerland, Norway and Australia, over applications to register
TRAVELER'S ADVANTAGE,
BUYERS ADVANTAGE,
and
SHOPPERS ADVANTAGE for customer loyalty programs. Cases
pending.
Turbochef Technologies, Inc. v. Klimatek Elektrikli ve Mekanik
Chiazlar. Represented opposer in Turkish dispute over application to
register TURBOCHEF for ovens. Case successfully resolved when
application was assigned to opposer and matured into registration in

opposer's name.
American Airlines, Inc. v. America Air Táxi Aéreo LTDA.
Representing opposer in Brazil in civil action to annul trademark
registration for the mark AMERICA AIR with a request for a
preliminary injunction to suspend the effects of the registration and
stop use of the mark. Case pending.
Brooks Automation, Inc. v. Fellowes, Inc. Representing applicant in
European Union invalidation action over application to register
FUSION. Case pending.
DST Sys., Inc. v. DST Asia Pte. Ltd., Opposition No. T06/26701A.
Representing opposer in Singapore dispute over application to
register DST and two bar logo. Case pending.
American Airlines, Inc. v. Am. Apparel Deutschland GmbH., Opp.
No. 003935335. Representing opposer in the European Union in
dispute over application to register AMERICAN APPAREL AA. Case
pending.
American Airlines, Inc. v. S.A. Spa Monopole. Defending applicant in
France and Germany in dispute over application to register SPAA.
Case pending.
BASF Agro v. Intermatic Inc., Opp. No. B761330. Representing
applicant in the European Union in dispute over application to
register MALIBU. Case pending.
Alberto Culver Co. v. Technical Concepts, Opp. No. 199,179.
Representing applicant in India in dispute over application to register
TC. Case pending.
DTS, Inc. v. DST Int'l Ltd. Representing applicant in European Union
dispute over application to register DST for billing software. Case
successfully resolved when applicant obtained registration.
American Airlines, Inc. v. Westpac Banking Corp. Representing
opposer in Australian dispute over application to register
MERCHANT ADVANTAGE. Case successfully resolved when
opposer revised recitation of services.
Arctic Cooling Switzerland AG v. Fellowes, Inc., Opposition No.
B1070798. Representing applicant in European Union dispute over
application to register FUSION. Case successfully resolved when
applicant obtained registration.
Bally Total Fitness Holding Corp. v. Martin Foerster. Represented
opposer in Germany in dispute over application to register BFIT.
Case successfully resolved when applicant was denied registration.
Malibu Health Prod. Ltd. v. Intermatic Inc., Opp. No. B877037.
Represented applicant in European Union in dispute over application
to register MALIBU. Case resolved.
PUBLICATIONS
“What Companies Should Know about the FTC’s Green Guides,”
Executive Counsel, April/May 2010
"Employer Liability Under New FTC Endorsement Rules," Law360,
March 2010
"I Am Not a Spokesperson for My Company: How Instituting a Strong
Social Media Policy Now May Help Your Company Stay on the Right
Side of the FTC's New Endorsement Guidelines," Chicago Lawyer,

March 2010, reprinted in IPO Daily News, July 7, 2010
"What to Do When Considering an Intellectual Property Purchase,"
Willamette Management Associates Insights, Autumn 2009
"What to Consider in an International IP Purchase," Executive
Counsel, July/August 2009
"The Devil is in the Details: Suggestions for a Successful and
Affordable International Branding Campaign," Fenton Report, June
22, 2009
"What to Do When Considering an International Intellectual Property
Purchase," Directors & Boards, March 2009
"Is Issuing IP Bonds a Good Move for Your Company?" Executive
Counsel, November/December 2008
"An Intellectual Property Checklist, Using IP to Make Your Company
an Attractive Acquisition Target," Boardroom Briefing, Autumn 2008
Quoted in "Beauty Industry Faces Up to E-Fencing Issue,"
CostmeticNews, February 2008
"Integration is Key to Stopping Counterfeiting," Brinks Hofer Gilson &
Lione Client Publication, September 2007
"Keeping It Local," The National Law Journal, April 10, 2006
"The Trademark You Save May Be Your Own," www.inta.org, June
2005
"A Groundbreaking Case," The National Law Journal, Vol. 27, No.
30, April 4, 2005
"Ma Bell's Dark Past," The National Law Journal, October 25, 2004
"'Hear No Evil, Speak No Evil' Does Not Apply to New Employees'
Knowledge," BNA's Patent Trademark & Copyright Journal, Vol. 68,
No. 1676, June 18, 2004
"Protecting Sudden Innovative Ideas as Trade Secrets," Patent
Trademark & Copyright Journal, Vol. 67, No. 1668, April 23, 2004
"The McKay Commission and Illinois: A Match Made in Heaven?,"
Georgetown Journal of Legal Ethics, Fall 1997
PRESENTATIONS
“Just the FAQs: The Top 10 Most Frequently Asked Trademark
Questions,” Association of Corporate Counsel, Chicago Chapter,
Chicago, Illinois, July 1, 2010
"Trademark Application Basics: What Every Attorney Needs to Know
about Trademark Applications," Brinks Hofer Gilson & Lione Internal
Education Seminar, Chicago, Illinois, October 2009
"Conflicts of Interest: Common Situations that all New Attorneys
Should Know," Brinks Hofer Gilson & Lione Internal Education
Seminar, Chicago, October 2009
"Professional Responsibility: Words to the Wise," Brinks Hofer Gilson
& Lione Internal Education Seminar, Chicago, Illinois, September
2009
"Trademark Prosecution Guide: What Does Your Client Want?"
Brinks Hofer Gilson & Lione Internal Education Seminar, Chicago,
Illinois, September 2009
"Social Networking And Trademark Issues," Podcast presented on
MITechNews.com, July 20, 2009
"Non-Compete Contracts And Trade Secrets," Podcast presented on

MITechNews.com, July 20, 2009
"Job Change Challenge And Protecting Trade Secrets," Podcast
presented on MITechNews.com, July 20, 2009
"How to Draft and Implement Noncompete Agreements for Maximum
Enforceability," Association of Corporate Counsel, Chicago Chapter,
Chicago, Illinois, June 11, 2009
"Trade Secrets: What is Protected?," American Conference
Institute's Expert Forum, Chicago, Illinois, May 27-28, 2009
"Is Issuing IP Bonds a Good Move for Your Company?," Podcast
presented on MITechNews.com, March 2, 2009
"What Can a Company Do to Strengthen a Historic Brand?," Podcast
presented on MITechNews.com, March 2, 2009
"How to Use IP to Make Your Company an Attractive Acquisition
Target," Podcast presented on MITechNews.com, March 2, 2009
"What Steps Can Businesses Take to Stop Counterfeiting?,"
Podcast presented on MITechNews.com, March 2, 2009
"Common Ethical Issues Confronting IP Firms," Brinks Hofer Gilson
& Lione Internal Education Seminar, Chicago, Illinois, April 2008
"Filing Trademark Applications: A Practitioner's Guide to Getting
What the Client Wants," Brinks Hofer Gilson & Lione Internal
Education Seminar, Chicago, Illinois, April 2008
"Client Conflicts: Firm Procedures & Common Situations," Brinks
Hofer Gilson & Lione Internal Education Seminar, Chicago, Illinois,
February 2008
"Tackling Counterfeit and Gray Market Goods," Association of
Corporate Counsel Annual National Meeting, Chicago, Illinois,
October 2007
“Trademarks and Keyword Advertising: The Ground-Breaking Past,
the Conflicting Present and the Potentially Wide-Open Future,”
Brinks Hofer Gilson & Lione Client Seminar, Chicago, Illinois, August
2007
“Trademark Application Basics,” Brinks Hofer Gilson & Lione Client
Seminar, Chicago, Illinois, March 2007
“Challenges Due to Increased Globalization,” Northwestern
University School of Law, Chicago, Illinois, January 2007
“Effective Strategies for Interacting with Foreign Associates,” Brinks
Hofer Gilson & Lione Client Seminar, Chicago, Illinois, September
2006
“What’s the Big Deal with Trademarks and Copyrights: What is
Intellectual Property and Why You Should Care,” Wilbert Funeral
Services, Inc.’s Internal Education Series, Chicago, Illinois, April
2006
“Innovative Ideas are Entitled to Trade Secret Protection,” Brinks
Hofer Gilson & Lione Client Seminar, Chicago, Illinois, June 2005
“INTA Roundtable Program – Madrid Protocol and the CTM: A
Comparison of CTM and Madrid Protocol Trademark Applications,”
Brinks Hofer Gilson & Lione Client Seminar, Chicago, Illinois,
January 2004
"Madrid Protocol: Changes for Firms," Brinks Hofer Gilson & Lione
Client Seminar, Chicago, Illinois, October 2003
“Madrid Protocol: New Strategies for Filing,” Brinks Hofer Gilson &
Lione Client Seminar, Chicago, Illinois, September 2003
“He Said, She Said – A Dialogue Regarding Intellectual Property
Issues,” Wilbert Funeral Services, Inc.’s National Licensees’
Meeting, Charlotte, North Carolina, December 2002
“Important Amendments to the Lanham Act,” Brinks Hofer Gilson &
Lione Client Seminar, Chicago, Illinois, June 2002
“Legal Technology and Cyberlaw,” Illinois State Bar Association's
Standing Committee on Minority and Women Participation's
Cyberlaw Seminar, May 2001
MEMBERSHIPS & AFFILIATIONS
International Trademark Association
Marques - The Association of European Trade Mark Owners
Illinois State Bar Association
Chicago Bar Association
American Bar Association
LEGAL EXPERIENCE
Brinks Hofer Gilson & Lione, Chicago, Illinois
Shareholder, 2006-Present
Associate, 1998-2005