United States - Illinois
“Brinks Gilson & Lione has for a long time been the pre-eminent trademark boutique in Chicago.” Its A-to-Z trademark offering is highly prized by big-name enterprises, both domestic and foreign. At the outset of the branding process, they consult prosecution and counselling ace Scott Slavick. Slavick also devises social media policies which have a strong enforcement bottom line, while still leaving room for the innovative use of trademarks in the digital world. On the contentious front, Christopher Dolan makes a splash on enforcement mandates. He has stepped into the limelight following the departure of global chair of trademarks Mary Squyres; his steadfast leadership as the group’s new chief is already strongly in evidence. David Fleming is another source of admiration – one peer refers to him as “my personal hero”, while for others “he is well respected and an industry dean”. “He is incredibly client orientated and able to provide incisive, trademark-specific advice.” In 2014 he justified his reputation as counsel to the International Trademark Association (INTA). This marks the second time that one of the firm’s attorneys has played that role; luminary Jerome Gilson made waves during a three-year stint in the 1990s. The “terrific” attorney is a perennial subject of praise for his seminal two-volume tome Gilson on Trademarks. He is not the only lawyer here with inky fingers; Jeffrey Handelman’s Guide to TTAB Practice “lies dog-eared on the desk of every practitioner worth his salt”. “He is one of – if not the – leading Trademark Trial and Appeal Board (TTAB) expert.” The “phenomenal lawyer” “is a good person and remains client focused”. John Gabrielides completes the picture with a dazzling all-round practice.
DLA Piper wins laurels for its sophisticated global representation and commercially attuned advice. Chicago is a stronghold, playing host to some of the firm’s most celebrated trademark pundits. Capitalising on its standout franchising group, the office runs a highly successful trademark transactional service which has been particularly busy of late. Keith Medansky has shouldered much of the work, leveraging his specialty in the hospitality sector to assist on a number of vertical integration deals linking up restaurants, spas, hotels and other branded enterprises. “Medansky is an extraordinarily knowledgeable, enormously talented, sterling professional.” “Simply one of the finest trademark attorneys in the United States”, he makes “a great strategist and terrific partner to his clients”. “He is one of the few counsel who can get to grips with innovative marketing ideas, even if they involve new issues which are beyond the capabilities of most other attorneys.” In addition to deals, he excels on counselling, litigation and online enforcement. Like Medansky, Christina Martini and Mark Feldman shine across a range of mandates. Martini’s science background serves her well on pharmaceutical and food briefs – as does her familiarity with food and drug regulations. Having been seconded to Fortune 100 companies Monsanto and Kraft, she can put herself in her clients’ shoes and anticipate their aims, whether she is thinking through the next steps of portfolio development or launching a claim against a competitor. Feldman’s dual competencies in prosecution and litigation allow him to identify broad patterns throughout the lifecycle of a mark. “Martini and Feldman are great practitioners whose reputations precede them.”
“The only firm in town with such sharpness of focus on trademarks, Pattishall McAuliffe is unique. In fact, it is a premier firm not only in Chicago or the United States, but globally.” The “truly top-tier” set boasts “a collection of excellent lawyers who genuinely merit the adulation they receive. They are all focused, high-quality practitioners – both the senior generation and the younger people coming up through the ranks. The firm parses practice areas impeccably, maintaining a full-service trademark profile while allowing different experts to focus on different facets of branding. Each and every one of them is experienced enough to have encountered and resolved a multitude of issues across a range of business sectors.” Pharmaceuticals is a stronghold: Bayer, Novartis and Eli Lilly have all recently prevailed upon the outfit for TTAB and district court defences of their marques. Taking the lead for Eli Lilly, Jonathan Jennings has a skill set that is particularly well suited to defending drugs against unfair trade practices: he is an authority on grey-market goods and has chaired INTA’s Parallel Imports Committee. A whirlwind of legislative expertise, he has helped to draft both federal and state laws on trademarks and related issues. His prosecution and counselling skills come highly recommended, as do Janet Marvel’s: “She is a fantastic lawyer who is deeply involved with the IP industry.” While these practitioners excel in their fields, “it is the quality of the firm’s litigation that makes it really stand out; it is a destination for contentious work because everyone there is so stringently trained”. Bradley Cohn, for example, used to clerk in the Federal Court and thus has insider knowledge on how best to present a case to a trial judge; he combines this with a gift for distilling an argument down to a compelling narrative. Court trials are likewise a strength for “fine lawyer of many years’ standing” Brett August, who not only cuts a dash as a private practitioner, but has testified as expert witness in numerous federal litigations and acted as a court-appointed mediator. David Hilliard is another safe pair of hands for multimillion-dollar trials, while Joseph Welch “is well rounded and knowledgeable in all aspects of trademark law”. Phillip Barengolts and Robert Sacoff both pick up impressive volumes of peer recommendations – Barengolts for his “leadership abilities and substantive expertise”, and Sacoff for his “sage advice”, “knowledgeability and cost sensitivity”. “Sacoff is a truly excellent trademark attorney, a go-to guy in the region.” When internet issues crop up, Thad Chaloemtiarana is first port of call; he has an encyclopaedic knowledge of domain name and IT law.
Katten Muchin Rosenman makes it its mission to cultivate long-term relationships with top brands and word of its efficiency and client-friendliness has spread like wildfire among the upper echelons of big business. Microsoft, Kimberley Clark and Bausch & Lomb have all benefited from the wisdom of its practitioners on both the prosecution and litigation fronts. While adept in the former, it is the latter discipline which makes the headlines in Illinois, with the gold-ranked Floyd Mandell and his talented rear-gunner Kristin Achterhof both based in the Chicago bureau. Trademark chief Mandell is a fair but assertive advocate who knows when to push and when to walk away. Achterhof maintains a strong federal court and TTAB practice and is a trusted adviser to many of the firm’s key clients on cutting-edge technology and internet issues.
Doing “an outstanding job” in the trademark sphere, Leydig Voit & Mayer “is a life saver – it is flexible on administration and billing, and takes an active role in educating in-house counsel and executives”. Its soup-to-nuts service begins with impeccable prosecution and counselling from Lynn Sullivan and Mark Liss. Sullivan’s substantive expertise allows her to pull off even the trickiest registrations; she has a real knack for non-traditional marks, for example. “Highly knowledgeable and a great communicator, Liss inspires confidence in businesspeople because he can see legal issues from their standpoint. His comprehensive trademark advice is always highly insightful.” Deal work is a forte for the non-contentious group – “its licensing advice is always astute”. While tipped primarily for litigation, Kevin Parks has invaluable transactional nous from his previous career as a music licensing consultant. When it comes to disputes, look no further than Claudia Stangle and Tamara Miller. “Stangle is a skilful adviser who can easily convert legal concepts into understandable English for non-lawyers. She is always accessible and never fails to go the extra mile.” Miller is “a top-quality and well-respected lawyer” known for her courtroom acumen and effortless case management in multi-jurisdictional spats.
Marshall, Gerstein & Borun has been plying its trade for over 60 years now and boasts exceptional institutional expertise in intellectual property, along with an enviable client base which continually encourages it to raise its game. Chairing the group is Gregory Chinlund, a global strategy maven whose wide-ranging expertise includes a partiality for complex pharmaceutical mandates. He is backed up by Richard LaBarge, whose unprecedented success in non-traditional marks registration bears testament to his ingenuity and substantive know-how. He recently secured registration for the colour blue for firefighting equipment for Task Force Tips, despite the well-known difficulty of getting single-colour marques through the US Patent and Trademark Office (USPTO). Another seasoned practitioner who is intimately familiar with the workings of the USPTO is former examiner Maureen Beacom Gorman. The sheer volume and variety of applications that she has evaluated in her time make her one of the most experienced attorneys on the scene. However, her talents don’t stop at prosecution; she has also carved out a niche for herself in the anti-counterfeiting space. Rounding out the set is Marsha Hoover, who “has an excellent instinct for ascertaining all of the relevant issues and resolving disputes without undue legal costs. She keeps her clients up to speed on all matters, is timely with her responses and provides reasonable cost and timeline estimates”.
“Excellent” full-service squad Neal Gerber & Eisenberg’s sophisticated trademark practice maintains and defends portfolios for innumerable blue-chips. While adept across the board, licensing and branding in the hospitality sector have become key specialisms. Trademark co-chair Antony McShane recently prevailed in an infringement proceeding on behalf of Lettuce Entertain You against rival Talk of the Town over a proposed registration that infringed its WILDFIRE mark. “McShane communicates clearly with other lawyers and non-lawyers alike. He is highly proactive, takes the time out to help educate his clients on trademark usage and registration, and has a great success rate in trademark disputes.” Lee Eulgen likewise excels on service industry mandates, although his counselling and litigation smarts are in high demand among a wide variety of patrons. Quick off the mark in internet matters, he has been masterminding domain name proceedings since the 1990s and remains an authority on the issue. Supporting McShane as a co-chief of the department, Michael Kelber earns glowing praise for his “depth of knowledge” and “expert status”. Proficient in trade dress issues as well as trademarks, he is a hard-line enforcer on anti-counterfeiting initiatives.
Global leviathan Baker & McKenzie benefits from 360-degree competency across the gamut of IP disciplines. It involves itself in all aspects of the management and robust defence of clients’ rights, while never losing sight of their overarching brand strategy. Thanks to the cross-pollination between its tax and trademark divisions, the practitioners here have developed finely tuned commercial awareness. Lisa Parker Gates routinely helps Fortune 100s to navigate the challenges of the modern business environment. She takes a collegial, hands-on approach to trademark adoption and rebranding activities. David Davis is a dexterous performer before the USPTO. Well versed in the vicissitudes of M&A negotiations, he is a savvy dealmaker and a talented writer.
Mighty mid-sized boutique Banner & Witcoff impresses on everything from small-scale prosecution to must-win branding disputes. It can go head to head with much larger opponents in high-stakes cases, as illustrated by its ongoing representation of Converse in a mass campaign to enforce its trade dress rights against a whole swathe of competitors; the team is acting for the shoe maker in an International Trade Commission case against the likes of Skechers. Continuing the athletics apparel theme, it also went up to bat for Nike in a TTAB opposition against the US Naval Academy Foundation, which tried to register the slogan “Don’t just do it, do it right” – lead counsel Helen Hill Minsker comprehensively defeated the application. According to commentators, she “can be recommended without hesitation” and “is a go-to attorney for major trademark issues thanks to her promptness and efficiency”. “She is an excellent communicator who can work directly with businesspeople without the mediation of in-house counsel. Her knowledge of trademarks is comprehensive, so she can address almost any issue with little or no additional research. She is an excellent advocate who does not back down from a fight.”
Full-service, multi-office outfit Barnes & Thornburg profits from immense depth and breadth in intellectual property. While it has prodigious resources to bring to bear on big cases, it always staffs matters according to their specific requirements, resulting in cost efficiencies and intimate working relationships with clients. Leading the charge in Chicago is stalwart all-rounder Jonathan Froemel. His second-in-command is Michael Carrillo: “It would be remiss not to mention Carrillo. He is extremely business focused, understands clients’ needs and has a good rapport with them. In case of difficult negotiations or problems, he has a practical approach and can break down complicated issues to help patrons make informed decisions.”
General commercial outfit Drinker Biddle & Reath boasts a robust, sophisticated trademark team. Catering to a slew of top-dollar clients, it offers the full range of branding services. Dedication to providing comprehensive solutions for everything that a brand owner might need has resulted in strong trade dress, advertising and non-traditional marks know-how that complements the usual prosecution, litigation and licensing capabilities. This versatility is exemplified by chair of advertising and promotions Darren Cahr, a marque and product design maestro who attracts special notice in the contentious arena. Devoted clients include BE Aerospace, for which he manages a large, complex portfolio.
Nationally feted for its trademark practice, Greenberg Traurig “is home to some great talent and has an outstanding network of foreign associates”. The continuity of its client relationships is an indicator of quality: both Kelloggs and WW Grainger have been with the firm for upwards of 20 years – no surprise, given the size of its war chest and the tenor of its practitioners. More recent client wins include Groupon, proving that the firm can adapt to the needs of 21st century start-ups just as adroitly as it meets the demands of established corporations. Jeffrey Dunning and Mark Galis are both key contact points for these entities. Dunning is a man of many talents, ably dispatching trademark, unfair competition and domain name mandates both contentious and non-contentious. “Galis tailors his services to clients’ needs. He promptly provides opinions and risk assessments when needed. His practical judgement is immensely trustworthy – he always has answers as to how to handle matters more cost effectively, which shows he is building relationships for the long term, rather than short-term gain.” Marc Trachtenberg, meanwhile, “is highly experienced in the protection and enforcement of trademarks”.
While the East Coast operations of corporate and IP heavyweight Kirkland & Ellis may make most headlines, it packs a mighty punch in Chicago, too. Its global nous and formidable resources make it a favourite for complex, bet-the-company litigation. Robin McCue takes the lead in these cases, leveraging his abundant courtroom experience to provide game-changing representation. She has a proven track record of securing quick, tough injunctive relief against offenders.
International powerhouse Locke Lord is famed the world over for its legal acumen. It significantly augmented its IP capabilities in 2015 through a pair-up with Edwards Wildman Palmer. The Chicago office profited immensely from the merger, which has combined the two firm’s trademark sets into a super-charged team. Its practitioners have diverse skills sets and are drawn from a wide range of professional backgrounds; they are agile and resourceful allies, whatever the brief. Sean Fifield divides his time – with equal proficiency – between trademark protection and licensing, corporate transactions and enforcement.
Traditionally regarded as an entertainment and banking firm, Loeb & Loeb may excel in those areas, but this is just the tip of the iceberg. It has “great practitioners” who can effortlessly handle any legal brief under the sun, and the synergy between its practice areas equips it ideally for today’s commercial challenges. Since the dawn of the digital age, clients’ problems have become increasingly complex and this firm is perfectly placed to come up with multifaceted solutions. It also puts in an impressive performance on pure trademark mandates, such as its Ninth Circuit appeal on behalf of Pom Wonderful to fight off a preliminary injunction. The “super-smart and good-natured” Douglas Masters played a vital role in the case, once again proving his worth as “a tremendous, ethical and aggressive litigator”. “Practical and business focused”, he is also a font of wisdom on non-contentious matters.
International dynamo McDermott Will & Emery leverages its cross-jurisdictional nous and immense institutional experience to provide some of the most incisive trademark counsel on the market. In line with its full-service platform, transactional matters are a forte, with global head of trademarks Jennifer Mikulina winning applause for her counsel in this and many other areas. “She is a pleasure to work with – she understands business realities and the importance of clear, simple communication.” An “excellent, detail-orientated” practitioner, “she displays great ease with clients, garnering their trust and advising them well”. On the contentious side, Margaret Duncan “provides invaluable support and advice”. “Duncan is highly knowledgeable and fully grasps what needs to be achieved and how to achieve it. Her action-focused approach and persuasiveness lead to speedy resolutions, but she always has the patience to stop and make sure clients understand the arguments and issues. She anticipates concerns and keeps everyone fully informed in a straightforward, bottom-line manner. You are always in good hands with her.”
Compact boutique Norvell IP has an impressive headcount of specialists in its dedicated trademark practice. It punches significantly above its weight, as reflected by its glittering client roster, and has the chops to go the distance in multimillion-dollar lawsuits. Its facility for oppositions is another string to its bow: the set frequently appears on USPTO top filer lists, thanks to its reputation as a go-to outfit for interference proceedings. Joseph Kucala attracts praise for his international reach on enforcement issues; while the “incredibly good” Tom Monagan is tipped for his courtroom acumen.
Right at home on sprawling international mandates, titanic full-service outfit Reed Smith casts a long shadow on the US IP landscape. It continues to gain momentum from coast to coast, with a swathe of IP hires around the country complementing the 2014 acquisitions of John Cullis and Robert Browne in Chicago. Cullis “has a high-quality practice; he specialises in TTAB proceedings and has developed quite a reputation in that area”, although he excels in all manner of contentious proceedings. Browne “is a mentor to many in the trademark scene and one of its most respected lawyers”.
Global player Winston & Strawn is headquartered in the Windy City, where its hybrid trademark, social media, advertising and privacy group is based. Its pre-eminent member is Paul McGrady, global chair of trademarks and primo uomo assoluto of online trademark use. “McGrady does excellent work in the technology and ICANN space.” He is described by peers as “fantastic on IP and internet issues” and “an intelligent straight-shooter” who is “well respected for his work on domain names in particular”. “McGrady establishes detailed protective protocols for the registration and defence of website addresses.” The firm also boasts unrivalled strength in litigation, with the indomitable Ronald Rothstein stepping up to the plate for patrons such as World Diamond Trademarks, which recently sued competitor Blue Nile for trade dress and marque infringement. Rothstein is more than equal to this big-bucks case, which involves a request not only for injunctive relief, but also for treble damages.
Other recommended experts
Michael Adams is the lead trademark partner at Mayer Brown. “Adams is instrumental in the successful management of huge portfolios spanning hundreds of countries.” “His guidance on contested matters is truly expert and he is transparent as to fees and costs.” Satisfied customers include Deutsche Telekom and Lindt. Insurance, medical and consumer products are happy hunting grounds for Jill Anderfuren. Equipped with extensive international expertise, she is a first port of call for tricky cross-jurisdictional enforcement and protection matters. She plies her trade at Lewis Brisbois Bisgaard & Smith. Mayer Brown’s Richard Assmus is tipped for his contentious and transactional skills. His background in science and mathematics plays well on mixed hard and soft-IP portfolio mandates. Luke DeMarte of Michael Best & Friedrich draws praise for his prosecution, enforcement and commercialisation capabilities. “He and his team consistently provide excellent and commercially focused legal advice.” Former US attorney Paul Garcia is a leading light of the commercial litigation scene, thanks to many years spent prosecuting commercial and federal crimes. Transactions are also a forte for this versatile practitioner, who can be found at Partridge Partners PC. Foley & Lardner’s Jami Gekas receives special mention for her digital and social media nous. Focusing on emerging technologies and their effect on trademark protection, Gekas nets a healthy catch of West Coast technology outfits and start-ups from all over the country. At Freeborn & Peters, IP and advertising ace Andrew Goldstein “provides sound, reasonable advice – he is definitely a top attorney and someone clients trust”. Transactional and enforcement doyenne Sana Hakim practises at K&L Gates. Opponents sing her praises: “She remains reasonable even in highly contentious situations.” Thomas Holt recently made the move from Steptoe & Johnson to Perkins Coie, where he continues to thrive. “Holt is a practical, genuine straight-shooter who is nevertheless skilled in analysing complex situations and coming up with sophisticated responses – he is hardworking, likeable and committed to clients.” While active a variety of spheres, he has particular flair for devising and implementing effective anti-counterfeiting programmes. Admitted to practise in the United States and Ireland, IpHorgan’s founder Dermot Horgan is a sound choice for transatlantic mandates. Julie Katz at Katz Group has an enviable reputation in enforcement matters: “Katz is steadfast in her defence of clients, but always reasonable. She is businesslike and develops solid working relationships with opposing counsel.” She also excels at prosecution, transactions and general strategic counselling. Advitam IP founder Michele Katz is a big draw for blue-chips, thanks to the depth and breadth of her practice: she can switch nimbly from copyright mandates to large-scale trademark enforcement projects without missing a beat. Fluent in Spanish, she maintains strong links with Hispanophone business communities around the world. Quarles & Brady is home to Nicole Murray: “She is extraordinarily knowledgeable on the subject of trademark law, enormously talented and personable for clients – a sterling professional.” Partridge Partners' Mark Partridge is counsel of choice to a raft of Fortune 500s. A tenacious litigator, respected arbitrator and domain name panellist and creative problem solver, he is well prepared for whatever comes his clients’ way. Faegre Baker Daniels’ newly minted partner James Saul has rare expertise in anti-counterfeiting, especially in the pharmaceutical trade; internet matters are also dispatched with aplomb. Catherine Simmons-Gill’s CV includes an extensive list of senior in-house positions, affording her unparalleled insight into the corporate context. She is also a revered private practitioner, having served as INTA’s president during the 1990s. Ronald Spuhler of McAndrews, Held & Malloy is “as good an opposing counsel as you could wish for”. He is “great to work with and able to empathise with opposing parties’ positions without conceding anything on his side”. IP, internet and entertainment maven Brett Tolpin – who presides over Tolpin & Partners – draws on his experience as a former USPTO examiner to superb effect. Ulmer & Berne’s Thomas Williams is an expert on both sides of the Lanham Act: trademarks and false advertising. “Extremely knowledgeable, responsive and professional”, he gives “practical advice” and “is mindful of cost, always considering alternatives when litigation looks set to be expensive or uncertain”. In prosecution he is “confident and persistent, even when faced with difficult trademark examiners”.
Individuals: enforcement and litigation
Individuals: prosecution and strategy
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