Find Lawyers in Chicago, Illinois for Trademark Law
Practice Area Overview
A mark is deemed protectable if it is distinctive, meaning that it is capable of identifying the source of a particular good. In determining whether a mark is distinctive, trademark law uses four separate classifications based on the relationship between the mark and the associated product: (1) arbitrary or fanciful (marks such as KODAK® and APPLE® that bear no inherent relationship to their associated products); (2) suggestive (marks such as COPPERTONE® that evoke a characteristic of the associated products); (3) descriptive (marks such as HOLIDAY INN® that directly describe a characteristic or feature of the associated products); or (4) generic (terms that describe the general category of the associated products, e.g., “phone,” “keyboard,” etc.). The first two categories of marks are protectable without proof that they have acquired distinctiveness in the minds of consumers, while descriptive marks require evidence that the consuming public has come to associate the term with its specific source. Generic terms are never protectable as trademarks, as they are necessary for general identification of a particular product category.
Once a trademark owner has acquired protectable rights in a mark, it may enforce its rights by preventing the use and/or registration of all subsequent infringing marks. The standard for infringement in the United States is “likelihood of confusion,” which means that consumers viewing the respective marks on their associated products are likely to be confused as to the source of those products or as to the sponsorship or approval of such products. In other words, determining infringement is not as simple as merely comparing the marks to see if they are identical; rather, courts will employ a multifactor test. While the precise factors vary slightly by jurisdiction, courts generally consider the following elements: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of care exercised by the typical purchaser; (7) the defendant’s intent; and (8) the likelihood of expansion of the product lines.
Protecting and enforcing trademarks is critical to the success of any company. Trademarks allow consumers to distinguish a company’s products and services from those of its competitors, and also serve as indicators of the quality of such products and services. Indeed, many companies’ trademark portfolios constitute the majority of the value of their businesses. Please consult with an experienced trademark lawyer to explore how to best to protect your company’s trademarks.
Household names in the technology and entertainment sectors and famous brands in all areas of consumer products and services rely on Kristin as an advocate and trusted advisor on IP, general advertising and competition issues. She has counseled multinational clients in multiple high-profile disputes involving novel ecommerce issues. She also gives strategic advice to clients on exploiting their copyrights and trademarks over social media, and on how to best protect their IP rights in software...
Mr. Anderson is a nationally recognized trial lawyer with 37 years of experience at Winston & Strawn LLP. He is a Fellow of the American College of Trial Lawyers who has tried many cases to verdict before federal and state courts and who has has argued many times before federal and state courts of appeal, including two arguments before the United States Supreme Court. Mr. Anderson served for many years as the General Counsel and Member of the Executive Committee of Winston & Strawn LLP.
Olivia is an intellectual property litigator who represents individuals and corporations across the country in complex technological matters. She helps clients protect, enforce, and defend intellectual property rights, including patents, trade secrets, copyrights and trademarks. An experienced trial lawyer, Olivia has litigated and tried significant cases before the U.S. District Court for the Northern District of Illinois and other federal courts around the country, and has also briefed and ...
Dan Burnham has a comprehensive intellectual property practice that encompasses a diverse range of sophisticated technologies and legal issues. He is a registered patent attorney who represents clients in federal courts and at the United States Patent and Trademark Office. What do you focus on? I utilize my engineering experience to work closely with clients in the product development process, helping to avoid competitive patents and ensure commercial exploitation of new products through effe...
Tom represents clients in patent and trademark prosecution, intellectual property litigation, and post-grant patent challenges before the Patent Trial and Appeal Board (PTAB). Tom has a broad base of experience in various technological and business areas, particularly in pharmaceutical, biotechnology, chemical and medical device inventions. He drafts invalidity opinions, investigates freedom to operate, counsels on strategic portfolio management, and conducts due diligence investigations prio...
Christopher V. Carani is a Shareholder at McAndrews and has been at the firm since 1995. He practices in all areas of intellectual property law with a particular emphasis on design law. Chris has extensive experience litigating design patent cases, including representations before U.S. district courts, the Federal Circuit, the U.S. Supreme Court and the International Trade Commission. In 2019, Chris was named to the IAM Strategy 300: The World’s Leading IP Strategists list, with IAM mag...
Michael Carrillo advises individuals and businesses on patent, trademark, copyright and trade secret matters, as well as on foreign and domestic patent and trademark protection. Michael navigates clients through and beyond developing, managing and policing small and large IP portfolios, creating practical strategies that leverage his clients’ assets while safeguarding their bottom line. A member of the firm’s Management Committee, Michael is listed among The Best Lawyers in Americ...
Michael P. Chu focuses his practice on all aspects of patent law, including complex litigation, opinions and prosecution. He serves as the Local IP Litigation Practice Group Leader in McDermott’s Chicago office. Mike is also the Chair of the Firm’s Racial & Ethnic Diversity Committee. Read full biography: https://www.mwe.com/people/chu-michael-p/
John Cullis focuses his practice on intellectual property litigation, counseling and procurement. Over the course of his career, John has been recognized among his peers as a preeminent litigator in the field of intellectual property. John is an accomplished trial lawyer who has first-chaired trademark, trade dress, trade secret, copyright and unfair competition matters before judges and juries in numerous U.S. federal courts and the U.S. Patent and Trademark Office’s (USPTO) Trademark ...
R. David Donoghue is a trial attorney and the deputy practice group leader of Holland & Knight's Intellectual Property Group, focusing his almost 15 years of experience upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue's most recent trial experience includes a jury verdict finding of willfulness, a full trebling of damages and a full award of attorney's fees in the Northern District of Illinois. Mr. Donoghue has also been chosen as lead trial counse...
Tom Donovan advises on patent and trademark litigation and prosecution, unfair competition and trade secret litigation, as well as a variety of licensing-related matters. Regardless of the client or the complexity of the matter at hand, Tom provides his clients with the guidance they need, in a way they can understand and apply to their daily business operations. Tom also has significant negotiation and drafting experience with software licensing, as well as patent, trademark and copyright li...
Lee is an intellectual property litigator and advisor who manages sophisticated portfolios for clients with worldwide operations. His practice includes the full range of intellectual property dispute and transactional matters, with an emphasis on trademark, copyright, trade secret, trade dress, privacy and litigation. Lee serves as lead counsel before state and federal courts and administrative agencies throughout the country, and he also coordinates efforts to resolve similar international d...
Steve Feldman is the head of Hahn Loeser’s Intellectual Property Practice Area, the Partner-in-Charge of the firm’s Chicago office and a member of the firm’s Board of Directors. His practice encompasses complex intellectual property litigation, prosecution, licensing, and counseling involving patents, trade secrets, trademarks and unfair competition, copyrights, data privacy and security, and NIL (Name, Image, and Likeness) compliance, policies, and rights. Steve also regula...
Jonathan P. Froemel, a partner in the Chicago office of Barnes & Thornburg, is a member of the firm's Intellectual Property and Litigation Departments. Jonathan's intellectual property practice focuses on trademark prosecution and trademark, copyright and patent litigation, trademark prosecution and licensing. His litigation practice includes general commercial, construction, environmental, and real estate disputes. Jonathan represents clients in actions across the United States and has l...
Daniel Frohling is a leading legal strategist on marketing and corporate communications mechanisms and content. He combines over 25 years of counseling, transactional and litigation experience with a passion for forging creative, strategic solutions that achieve the enterprise’s on-the-street and online goals within its risk profile. Daniel works with clients in a variety of industries, including retail and consumer brands, real estate, and industrial manufacturing, both domestically an...
With nearly 30 years of experience working with clients that include household brands and, in particular, mid-market businesses, John is able to remain calm and focused when encountering challenging environments. He helps clients to reduce stress in service of negotiating their desired resolution. Because copyright and trademark litigation is frequently used as a competitive tool, John works to ensure efficiency and preserve client resources throughout the litigation process, including elimin...
Janet Garetto is a partner in the IP group. Her practice spans the firm’s Trademarks & Copyrights, Patents and IP Litigation practice groups. Janet counsels clients on IP issues facing their brands. In addition, she counsels clients on patent protection and litigation prevention issues with a focus on chemical and mechanical technologies. Janet also serves as the Managing Partner of Nixon Peabody’s Chicago office. What do you focus on? I focus my practice on three main areas, ...
John Gatz is a patent attorney who concentrates his practice on patent prosecution, patent counseling and patent litigation. John has extensive experience in the life sciences and manufacturing industries. My focus Patent Prosecution/Counseling I prosecute patents and counsel clients in a number of mechanical- and chemical-related technologies including: biomechanical devices, chemical products and processes, sensor-dispensing instruments, analyte meters, test sensors, non-invasive processes,...
Troy A. Groetken, Shareholder Email. tgroetken@mcandrews-ip.com Tel. (312) 775-8259 Practice Areas: Global Intellectual Property Portfolio Analysis, Counseling & Management; Complex Chemical, Small-molecule Pharmaceutical, and Biotechnological Patent Prosecution; Intellectual Property Acquisition, Divestiture, and Licensing; Clearance, Freedom to Operate & Invalidity Opinions; Trademark Prosecution; Antitrust; Intellectual Property Landscaping Education: Drake University, College of P...
Matthew counsels clients on invention harvesting, patent and trademark portfolio management, intellectual property acquisition, domestic and international patent and trademark prosecution, and intellectual property transactions. He has prepared and prosecuted more than 750 patent applications and appeals on behalf of clients, primarily in the mechanical, electrical, electromechanical and software arts. Additionally, Matthew conducts IP asset management for his clients, having extensive experi...
Mark Hagedorn advises on a wide variety of intellectual property matters, including patent, trademark and copyright solicitation and IP litigation, licensing and counseling. Appreciated for his honesty and practical legal advice, Mark consistently delivers utilitarian solutions that help his clients resolve disputes and litigation efficiently and economically. Mark offers broad experience in virtually all phases of IP counseling and litigation. He understands and has represented clients invol...
Mike is a patent attorney who helps clients protect their complex technologies and innovations through representation on all aspects of patent law, including patent counseling, advice and prosecution, transactions, contested proceedings, and opinion preparation. He manages nationwide patent prosecution efforts for assorted technologies, overseeing similar efforts internationally, and counseling clients on the development and implementation of long-term patent portfolio strategies. He is regis...
Richard D. Harrisis Co-Chair of the Chicago Intellectual Property & Technology Practice and the firm's Global Patent Litigation Group. He focuses his practice on U.S. and foreign patent, trademark, copyright and unfair competition matters, with particular emphasis on litigation. His practice remains actively involved with patent and trademark prosecution and intellectual property-related transactional projects.
Patent owners and challengers alike entrust their important cases to Herb, who pays close attention to the business implications of each one. His deep experience at the PTAB is founded upon his many years of success at its predecessor, the Board of Patent Appeals and Interferences. In fact, IAM Patent 1000 says Herb “cannot be beaten for experience and procedural knowledge, having handled USPTO contested proceedings for many years – not just the past seven, like many.” IAM P...
Michael Hartmann is active in all phases of intellectual property law with an emphasis in intellectual property litigation and technology protection and transfer in the United States and internationally. He has acted as lead trial counsel in jury and bench trials, International Trade Commission investigations, and related pre-trial and appellate proceedings in diverse technical fields. These include software, telecommunications, machine vision and semiconductor manufacturing, oil field drilli...
Michael, chair of the firm’s Intellectual Property practice group, provides strategic counsel to established enterprises and entrepreneurs concerning the development and protection of extensive global intellectual property portfolios. He represents clients from a wide range of industries, including consumer electronics, restaurants, retail housewares, beverage manufacturing, software, entertainment and a variety of technology-focused industries. Michael has served as lead counsel in tri...
Adam Kelly is a nationally acclaimed counselor in intellectual property law with extensive experience in the U.S. and abroad. He is a trusted business advisor to a wide range of clients, including industry leaders in agricultural science, biotechnology, electronic trading, golf equipment, green energy, hospitality, medical devices, pharmaceutical arts and transportation. His practice focuses on counseling clients on how to competitively use intellectual property to increase market share and r...
Mr. Kilyk practices exclusively in the field of intellectual property law, especially patent law. Mr. Kilyk specializes in patent post-grant review proceedings, inter partes reexaminations, interferences, and oppositions, as well as legal opinions, prosecution, and litigation matters, with specific concentration in the areas of biotechnology, chemistry, and pharmaceuticals. Recent technologies with which he has been involved include biosimilars, new chemical compounds, nucleic acid sequences,...
Bill Kramer is an intellectual property attorney, focusing his practice on patent prosecution, patent threat analysis/response and intellectual property transfers. He has broad knowledge of many technical subjects, with particular experience in algorithm-based computer software, video distribution systems, cloud computing, artificial intelligence software, modern currency forms and transfers, and blockchain technologies. Bill leverages his technical aptitude and successful experience to help ...
Bill provides strategic counsel to numerous clients regarding the development, protection and monetization of sophisticated global intellectual property portfolios. His practice includes a wide array of intellectual property matters with a particular emphasis portfolio management and long-term portfolio strategy development, management of defense and enforcement actions, infringement and clearance analyses, technology agreements, licenses and transfers, and strategic guidance on significant c...
Russell is a Partner at Kirkland & Ellis LLP where he has spent his entire 36+ year career. He focuses his trial, appellate and alternative dispute resolution practice on patent infringement matters and disputes involving and related to technology transfer and patent license agreements. His trial practice includes jury trials, arbitrations and Section 337 proceedings before the U.S. International Trade Commission. His appellate practice concentrates on appeals in the Court of Appeals for ...
Mr. Liss is experienced in trademark, copyright, trade secret and unfair competition counseling and litigation. He has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), and has represented numerous clients in federal courts around the U.S. Mr. Liss represents clients in a wide variety of industries including health care, consumer goods and products, insurance and financial services, industrial and commercial products and online reta...
James J. Lukas, Jr. is Co-Chair of the Chicago Intellectual Property & Technology Practice. He focuses his practice on intellectual property litigation with a particular emphasis on patent litigation and related client counseling. He has experience with complex patent litigation cases in federal district courts throughout the country, including both enforcing patent rights and defending against charges of infringement on behalf of clients. He has first-chaired trials and claim constructio...
Floyd Mandell is the national co-chair and founder of the firm's Intellectual Property department. He has represented some of the world’s most recognizable companies in intellectual property litigation. Few other lawyers have handled as many high-profile cases over the past 20 years involving copyrights, trademarks, trade secrets, trade dress, false advertising and defamation. He has been lead counsel in more than 40 published decisions, many involving novel or cutting-edge issues. On m...
As Global Head of McDermott’s Trademark Prosecution and Controversy Practice, Christina (Tina) L. Martini focuses her practice on domestic and international trademark and copyright law, as well as domain name, Internet, social media, advertising, unfair competition and entertainment law. Tina has extensive experience in counseling, prosecution, enforcement, due diligence and licensing matters. She successfully assists clients in protecting their intellectual property rights through liti...
Douglas Masters litigates and counsels clients primarily in the areas of intellectual property, advertising and unfair competition. He helps brand owners, sports leagues, athletes and advertisers protect and leverage their branding, marketing and other IP assets. Notably, he has worked with the National Collegiate Athletic Association for nearly 20 years on brand protection strategy, helping strengthen the organization’s ability to support college athletics. Doug has counseled major cor...
Peter J. McAndrews is a Shareholder at McAndrews and practices in all areas of intellectual property and complex technology law. He has been involved in all aspects of patent litigation, acquisition and counseling, involving a broad spectrum of electrical, biomedical and mechanical technologies. Peter is a US Patent and Trademark Office-to-Appeals Court patent attorney and litigator who helps his clients secure intellectual property rights, make smart decisions with those rights and litigate,...
Tom is a registered patent attorney who develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licenses, patent and trademark licenses and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical intellectual property components. He also regularly performs thoro...
Tony develops and implements global strategies for creating, protecting and enforcing the full range of traditional and digital intellectual property assets, including trademarks, copyrights, trade secrets, patents, domain names and social media portfolios. He enforces intellectual property rights in federal and state courts throughout the country and before the Trademark Trial and Appeal Board. He coordinates similar enforcement efforts all over the world. He manages the daily intellectual p...
Tom is a Shareholder and Chairs the Patents and Intellectual Property Sections. An experienced attorney most active in patent prosecution, portfolio management and providing opinions of counsel, Tom drafts and prosecutes U.S. and foreign patent applications; renders non-infringement, validity, patentability and inventorship opinions; drafts and interprets license, indemnification, employment and non-complete agreements; prepares and prosecutes trademark and copyright registrations; and counse...
Jim is a member in McDonald Hopkins Intellectual Property Department and a strategic intellectual property advisor who helps clients develop and protect the value of their global intellectual property portfolios. His practice encompasses all components of intellectual property – domestic and foreign patents, trademarks, copyrights and trade secrets – with a primary focus on businesses seeking market penetration and growth in the use of computer software, hardware, electronics, aut...
Kevin represents his clients in all aspects of patent law, including due diligence investigations for mergers and acquisitions, patent counseling and prosecution, strategic management of patent portfolios, and opinion preparation, focusing his practice primarily on the biotechnological, pharmaceutical, and medical device industries. Kevin’s work encompasses a broad spectrum of technologies, including therapeutics such as cellular therapies, gene therapies, vaccines, large molecules (bio...
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