United States - Illinois
Admired Chicago boutique Brinks Gilson & Lione has a phenomenal sphere of influence: “You would be remiss not to say good things about Brinks. It is one of the few firms with a defined trademark department, rather than a small group which rides on the coattails of a commercial division.” It is sought after worldwide by a stellar clientele and the sheer depth of its talented bench ensures that it can effortlessly handle the most complex multi-jurisdictional actions. Chair of the international trademark group Mary Squyres “indisputably belongs in the gold tier”. Jeffrey Handelman had a red-letter year in 2014, when his was the name on everybody’s lips: “He’s got a standout practice before the Trademark Trial and Appeal Board [TTAB] and everyone respects him as a person and a lawyer.” John Gabrielides is a firm favourite with clients and peers alike: “I hired him when I was in-house because I think the world of him.” The widely acclaimed Scott Slavick “has an excellent command of global prosecution and litigation matters”. Lending their collective sagacity to clients and colleagues alike are elder statesmen David Fleming and IP Hall of Fame member Jerome Gilson.
Home to a deep team of trademark professionals, DLA Piper’s Chicago office is a jewel in the crown of the firm’s IP practice. Its astute, personable lawyers earn immense respect thanks to the redoubtable quality of their output. A favourite of foreign associates, Keith Medansky is tenacious and canny when it comes to protecting rights abroad, with some major successes in China to his name this year. Clients and peers profess themselves proud to collaborate with Christina Martini, the vice chair of the Chicago IP division. Her trademark and copyright practice is all the more impressive given her in-depth knowledge of domain name, internet, social media, advertising and competition matters. Mark Feldman “really understands his clients’ businesses” and in-house counsel award him high marks: “His advice is incredibly easy for non-specialists to understand.”
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson is a mainstay of the national and international trademark scene. There are arguably only two firms nationwide which can match it in stature: Pirkey Barber in Texas and New York’s Fross Zelnick. “It is legendary, particularly in litigation. Just that it still exists as an exclusive trademark boutique says something special about it.” Bradley Cohn joined in 1995 after a federal court clerkship and thrives on the mission-critical disputes that cross his desk. He recently won a case for Robert Bosch after three years of hard-fought litigation, acting alongside WTR 1000 newcomer and rising star Thad Chaloemtiarana. Phillip Barengolts is another esteemed advocate on the squad. Like his colleagues, he is not afraid to take on crucial briefs for marquee clients and has recently secured victories for the likes of PepsiCo, Bayer and Eli Lilly. He frequently acts alongside the more senior Jonathan Jennings, an admired litigation and transactional ace. David Hilliard is the firm’s most experienced conflict resolution sage, whose performances before juries are especially acclaimed. Other seasoned trial attorneys include Robert Sacoff, a “thought leader” whose sheer range of experience inspires confidence. “An expert in every aspect of trademark law”, Joseph Welch II is a hard, but fair fighter who goes the extra mile for clients such as Owens Corning. For non-contentious instructions, there is no better choice than Janet Marvel, a meticulous brand strategy planner.
Awarded an “A+” by clients, the Chicago office of Katten Muchin Rosenman pulls no punches in defence of brand owners. The group’s success can be attributed to the proactive leadership of Floyd Mandell. “He is attentive to blue chips’ needs and understands business objectives - he always puts that first in litigation. He can make any situation advantageous for the client and is just an outstanding resource.” Entering the ranks of the WTR 1000 for the first time, Kristin Achterhof is known for her “astute commercial thinking” and “ability to achieve difficult targets seemingly with ease. She is a phenomenal lawyer and extremely easy to work with”.
Trademark practice is a central pillar at Leydig Voit & Mayer, one of the most esteemed boutiques in Chicago. “It is a life-saver for rights holders”, which appreciate - among many other things - its client support seminars and shrewd transactional advice. The “top-notch” and “utterly reliable” Mark Liss “inspires confidence in our various business units, particularly because of his ability to see legal issues from a commercial perspective”. Tamara Miller is another trusted member of the team. A popular combination, the two attorneys “never lose sight of the fact that an in-house legal team is part of a larger concern - they see the big picture”. Kevin Parks “has unquestionable integrity” and an “uncanny ability to juggle several matters at the same time”. “He never loses his cool, even in the most testing circumstances.” Claudia Stangle “easily converts difficult concepts into understandable English for non-lawyers and always goes the extra mile”. She is an experienced litigator who knows how to deliver at federal court level and in inter partes proceedings before the TTAB. Of counsel Lynn Sullivan is unerringly accurate when it comes to filing and prosecution and clearance work. The sagacious counsellor is also a great choice for infringement opinions.
Founded in 1955, Chicago institution Marshall, Gerstein & Borun is a member of the old guard of Midwestern boutiques. Far from being stuck in the past, it regularly pushes at the boundaries of trademark law to provide some of the most progressive advice around. The team possesses a remarkable depth of experience, and as a result it knows what works - and what doesn’t. It takes an innovative approach to fees and the fixed rates it offers meet clients’ need for cost certainty. “Accomplished trial lawyer” Gregory Chinlund provides strong leadership and direction to the trademark group. Whether acting for multinationals with sprawling portfolios or for start-ups just finding their feet, he provides the protection that companies need to further their businesses. Veteran attorney Richard LaBarge has secured thousands of trademarks in his career and is known for his ability to obtain protection for non-traditional marks. Jill Anderfuren understands trademark matters from a global perspective - her international know-how sets her apart in a crowded market. She builds customised protection programmes primarily for insurers, consumer product manufacturers and medical businesses. Marsha Hoover “is a joy to deal with - her advice is always logical and pragmatic, tailored to fit and delivered with finesse”. Leveraging her previous experience as an examining attorney with the US Patent and Trademark Office (USPTO), Maureen Beacom Gorman knows how to expedite proceedings to get her clients the protection they need, when they need it.
Windy City native Neal Gerber & Eisenberg has come on in leaps and bounds since its formation 13 years ago and is now home to 35 IP specialists. Flexible billing structures and good client service have seen new clients flock to the firm. Companies seeking advice on product configuration and trademarks would do well to consult the team, which has carved out a special niche for itself in this area. Litigation is another forte and many of the attorneys here are capable first-chair trial lawyers. The proficient Antony McShane helms the group together with Michael Kelber; both are outstanding litigators and counsellors. The practical and perceptive Lee Eulgen splits his time between contentious and non-contentious work; licensing is his metier and he puts together complex deals in the hospitality sector with alacrity.
Litigation powerhouse Winston & Strawn represents the crème de la crème of trademark owners from its Chicago base. While dispute resolution is the order of the day, the brands division also does a sterling job on the non-contentious front, effectively tapping the litigation group’s experience to provide advice that anticipates and forestalls possible future conflicts. The firm boasts a robust practice dealing with generic top-level domains, spearheaded by Paul McGrady. “In terms of global domain names, he is the best of the best. There is Paul, then there is a large gap and then there is everyone else.” Trial lawyer Ronald Rothstein is no stranger to first-chair roles on must-win commercial and IP briefs. His experience handling class action false advertising, trademark and copyright suits is particularly notable.
When it comes to global portfolio management, no other firm in the world can compete on the same level as Baker & McKenzie. The Chicago unit “knows how to address the most pressing concerns of in-house counsel” and provides “realistic advice that is sensitive to the commercial realities of conducting business worldwide”. David Davis is the key contact locally: “The speed of his responses is unparalleled - whether on the weekend or during a holiday, he gets back to you immediately.” WTR 1000 neophyte Lisa Parker Gates wins plaudits for her creativity in addressing trademark problems of every stripe.
Banner & Witcoff “combines a big firm’s resources with a boutique’s personal touch and is a great choice for substantively challenging briefs”. Known for its ability to settle cases quickly, cleanly and to the client’s best advantage, the firm is nonetheless no stranger to the inside of a courtroom. The superb Helen Hill Minsker “is a general counsel’s dream. She is a superb communicator who can explain even the most complex trademark issue to a non-specialist”.
With a string of offices across the continental United States, Barnes & Thornburg has a firm foothold on the national trademark scene. Most recently, the Chicago squad defended a brand owner in a six-day jury trial and acted for a premium domain hosting and website service company on an acquisition matter. High-level prosecution mandates and enforcement briefs all fall within Jonathan Froemel’s purview.
The trademark attorneys at general commercial firm Drinker Biddle & Reath routinely draw on the expertise of other practice groups to provide clients with a well-rounded legal service. A persuasive choice on the national stage, the firm excels in Chicago with the cerebral Darren Cahr, “a wonderful trial lawyer with a firm grasp of the law. Smart, funny and a real incisive thinker, he is someone you can always learn something new and useful from”. He is a nationwide thought leader on the interface between social media and intellectual property.
National heavyweight Edwards Wildman Palmer wins the admiration of peers on both sides of the contentious/non-contentious divide. “The team is everything you could possibly want and can mobilise very quickly.” Star attorney Julie Nichols Matthews “is doggedly persistent. She never fails to follow up, but she’s never pushy. She is honest with her opinions and won’t hesitate to recommend a course of action”.
With its prodigious global experience and expertise, Greenberg Traurig is the ideal strategic sounding board for clients with international trademark protection and enforcement issues to address. Substantial investment in its brand management infrastructure has enabled the firm to reel in prestigious companies with large trademark portfolios, including the Kellogg Company and WW Grainger. Co-chair of the IP and technology practice Mark Galis is credited with driving the group to new levels of success. Litigation, portfolio management - he can do it all; as can colleague Jeffrey Dunning, whose experience traverses not just trademarks, but patents, copyright and unfair competition, too.
Kirkland & Ellis has a stronger IP tradition and practice than many other corporate powerhouses on the US market. Its patent litigation practice is the jewel in its crown, though bet-the-company trademark disputes are handled with equal dexterity. Sources call it “unnervingly good in the courtroom”. Robin McCue spearheads the trademark and false advertising litigation practice in Chicago and is endorsed for her “ability to think on her feet at trial”.
International commercial firm Loeb & Loeb can capably handle any number of instructions sent its way and wins warm praise for its well-defined, standalone trademark practice. Its transpacific spread and proliferation of practice areas do nothing to detract from the Chicago office’s laser focus on trademarks. A top choice of sport leagues, individual athletes, advertisers and major corporations, Douglas Masters is an “inspirational lawyer”, with “razor-sharp thinking on brand matters” and a “reasonable approach to negotiation and litigation parties”.
“Worth every penny, McDermott Will & Emery is a superb firm; its Chicago attorneys are smart, fair, thorough, tough when necessary and just first class in all respects.” The firm attracts - and retains - some of the top talent around, thanks to to its open and collegial culture, which also manifests itself in the deep client relationships it sustains. Excelling in the daunting task of leading McDermott’s worldwide trademark prosecution is Jennifer Mikulina. Margaret Duncan is another key contact who maintains a diverse patent and trademark litigation practice; on both sides, “you can’t find anyone smarter”.
“Prompt, professional and excellent all-round”, is the verdict on compact IP boutique Norvell IP, which makes its debut in the WTR 1000 this year. The 11-lawyer set covers all aspects of brand protection and enforcement, but its deep experience in oppositions is one of its chief selling points. The team gets work done quickly, but never sacrifices on quality. Joseph Kucala Jr commands the respect of an impressive list of household names across a variety of sectors. Everything he does is directed towards enhancing clients’ brands not just domestically, but internationally, too. Former Kirkland & Ellis partner Tom Monagan arrived in April 2014 to strengthen the team, bringing with him extensive litigation experience.
Other recommended experts
Mayer Brown’s Michael Adams is widely touted as one of the market’s top up-and-comers. As well as showcasing impressive legal insight - which encompasses everything from obtaining to protecting and enforcing IP rights - he has won awards for his client service. Ascending to the silver tier this year is John Cullis, whose expertise in contested proceedings at the patent and trademark office is hard to beat. He recently joined Reed Smith from Neal Gerber & Eisenberg. Sean Fifield chairs the trademark and copyright division at Locke Lord; he is one of the few practitioners in the Illinois rankings with a dedicated licensing and transactional practice. Kelley Drye & Warren’s Paul Garcia - a former assistant US attorney - has extensive trial and appellate experience, which means he is also in high demand as an arbitrator. Former Edwards Wildman Palmer partner Jami Gekas joined Foley & Lardner in January 2014; she is an effective litigator with a great track record in advertising, marketing, copyright and trademark cases. Michael Graham recently departed Marshall, Gerstein & Borun to form Gnosis IP Law. He is one of the most experienced trademark experts in Chicago and one of the best at tailoring IP strategies to suit the specific needs of different companies. Clients appreciate the close personal attention he pays to their affairs. At K&L Gates, Sana Hakim is a dab hand at managing global portfolios for multinationals. Steptoe & Johnson’s Thomas Holt “has a rare combination of practical legal skills and business acumen. He ably guides and manages his team, pays meticulous attention to detail and has a strategic grasp of critical issues. He always finds proactive and innovative ways to protect portfolios”. Dermot Horgan’s practice is uniquely diverse among the practitioners listed here; the acclaimed trade identity and trade secret expert regularly handles a mix of licensing, anti-counterfeiting and data protection mandates, excelling in all areas. He is the founding partner of IP Horgan. Katz Group founder Julie Katz provides holistic brand-related advice to a diverse client base; from setting up websites to target a particular market to helping small and medium-sized enterprises structure themselves to take full advantage of their intellectual property, she is the woman for the job. Her expertise in the protection of trademarks through the US Customs and Border Protection system is an additional boon to clients. Michele Katz, the founder of Advitam IP, “is an accomplished trial lawyer with an international perspective”. Her practice isn’t limited to enforcement, however; she is an experienced general counsellor with a wealth of strategic planning and prosecution know-how. At Partridge & Garcia, Mark Partridge is a “shining star with an unparalleled knowledge of trademark law”. At her own eponymous firm, Catherine Simmons-Gill offers comprehensive legal and watching services to clients. The extent of her in-house experience sets her apart on the market; she knows what clients want to achieve through the exploitation of their IP portfolios and how best to do so. Brett Tolpin, a former USPTO examiner and the founder of Tolpin & Partners, is a brand management sage with top-tier transactional smarts and a wealth of expertise tackling online piracy and counterfeiting. Personable attorney Thomas Williams “has a more than solid knowledge of the law, but what marks him out among the best is that he takes the time to understand the business objectives of the rights holder”. He plies his trade at Ulmer & Berne.
Individuals: enforcement and litigation
Individuals: prosecution and strategy
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