United States: Illinois

Firms

Baker McKenzie 

Baker McKenzie has invested in technology and the infrastructure of its trademark practice over a substantial period of time and it never stops innovating or enhancing its offering; the long list of marquee brands that it represents is a clear testament to how well the side functions from efficiency, quality and international coverage perspectives. David Davis is a lawyer who makes superb use of the resources at his disposal: “Dave is extremely well organised and does an excellent job leveraging the Baker McKenzie network. He is someone you can turn to in complete confidence when you need help internationally.” Major rebranding projects are something of a specialty for this deft global portfolio manager. Down the hall in the Chicago office is Shima Roy, who brings extensive experience in litigation – before the federal courts, the International Trade Commission (ITC), the Trademark Trial and Appeal Board (TTAB) and arbitral forums – to the practice.

Banner Witcoff

Leading IP boutique Banner Witcoff manages some 14,000 active trademark applications and registrations in more than 180 countries and has prosecution and portfolio management down to a fine art. One of the stars of the practice is Anna King, who makes her debut in the WTR 1000 this year. She provides wonderful training and mentorship to the ensemble’s paralegal corps and is a master at ensuring that the practice is streamlined and efficient. What is more, she is an excellent team player, working closely with Helen Hill Minsker and Richard Stockton on behalf of the Marmon Group and Schneider Electric, respectively. Minsker shines on the non-contentious side, while also maintaining a dynamic practice at the TTAB. Whatever her instructions, she never loses sight of the business objective. “She is a distinguished and seasoned lawyer who is outstanding substantively and a collegial but tough adversary.” Stockton’s stage is truly global – he manages multiple portfolios with 1,000-plus IP properties across the world. King also links up frequently and effectively with Katie Laatsch Fink, an all-rounder who is in her element counselling clients, overseeing prosecution and leading cases in the courtroom. The firm’s litigation side continues to hum thanks to the sterling efforts of Fink and out-and-out litigator Christopher Renk. A recent highlight for the pair was successfully representing Converse in ITC and federal court trade dress litigation against Wal-Mart and Skechers.

Barack Ferrazzano Kirschbaum & Nagelberg LLP

“Barack Ferrazzano is great to partner with in a number of ways: its lawyers have excellent industry knowledge and demonstrate a thorough understanding of their clients’ businesses; they offer candid advice and creative strategies and maintain open communication throughout the course of each project, addressing any change in scope or budget immediately to ensure that there are no surprises; they have a network of high-calibre foreign associates across the globe.” The full-service commercial firm puts together “lean and consistent teams of attorneys, which make things time and cost-efficient”. Scott Slavick and Wendi Sloane share leadership duties in the trademark and copyright space – Slavick focusing on prosecution and counselling and Sloane on litigation. Slavick is a maestro when it comes to search and clearance for new brands and produces reports that can be easily digested by in-house attorneys and business executives alike. Sloane is an experienced first-chair trial lawyer with a relatable and friendly style that enables her to click with those present in the courtroom. The pair undertake wide-ranging work for LVMH. Pairing closely with Slavick on prosecution and transactional matters, Thomas Gniot is a rising star of the practice.

Barnes & Thornburg LLP

By going the extra mile as a matter of course, Barnes & Thornburg engenders unshakeable trust within the brand-owning community. One source comments: “Overall, we are highly satisfied with its attentiveness to our needs. The team regularly and proactively apprises us of emerging industry trends and legislative and policy changes accompanied by analyses of the possible impact thereof on our organisation, which is extremely helpful.” Attorneys see themselves as champions of their in-house contacts whatever they need in regard to their business; this mindset necessitates an ability to deliver under all conditions and in all circumstances, which the firm’s platform – inclusive of vibrant prosecution, litigation and transactional practices – fully supports. Barnes & Thornburg’s national bench is deep, as is its Chicago bench, which includes Michael Carrillo, Christopher Dolan, Jonathan Froemel and John Gabrielides. Carrillo, who rises into the WTR 1000 gold tier for prosecution and strategy this year, is an “extraordinarily talented lawyer and big-picture thinker with a gift for finding the most practical and commercially beneficial paths forward”. Dolan, who now takes his place on both the prosecution and litigation lists, is also highly rated. “He invests time in learning about his clients’ people, culture, norms and practices and then uses that information with great success to serve their specific needs. He treats everyone with dignity and respect and lives up to the very highest standards of professionalism.” Froemel is one of the set’s top all-rounders; active across the trademark lifecycle, he excels at giving strategic overviews and putting brand owners in competitively advantageous positions. Litigator Gabrielides is “highly skilled, practical and experienced” and “well thought of by everyone in the market”.

Brinks Gilson & Lione 

The most striking thing about Brinks Gilson & Lione’s brands practice is the depth of its collective experience, which encompasses all aspects and phases of trademark selection, procurement, management, enforcement and monetisation. Not only is the large team highly specialised, with 25 dedicated experts on deck, it is also led by lawyers with fine national reputations and decades of trend-setting highlights on their CVs. Co-chairing the practice are Howard Michael and Andrew Avsec, both of whom come in for enthusiastic praise in the market: “Howard immerses himself in your business lines and industries and delivers commercial advice on prosecution and disputes; rather than just proposing the most aggressive options, he thinks carefully about what you are trying to achieve and how to do it in the least time and with the least expense.” Similarly, “Andrew is a true business partner to his clients. He provides outstanding customer service and is superb at coordinating cases requiring the involvement of multiple departments and individuals, as well as international associates”. Other authorities garnering glowing notices are Jeffery Handelman and David Fleming – two anchors of the litigation practice. Handelman is “as well versed as anyone when it comes to TTAB practice and complex litigation”, while “Fleming stands out as an exceptionally smart and remarkably diligent lawyer who is willing to do whatever it takes to get to the right answer and result for his clients”. Then there is Jerome Gilson, who needs no introduction as one of the trademark world’s greatest thinkers and achievers. Brinks has talented future leaders in the practice as well, including Virginia Wolk Marino who frequently links up with Avsec to support prestigious brands. A top expert on pharmaceutical trademarks, Marino has a remarkable faculty for issue spotting and rapid problem solving. Key threads in the firm’s 2019 narrative include significant growth in its China practice, spurred by its presence on the ground in Shenzhen; major technology updates particularly with respect to docketing; and impressive litigation success.

DLA Piper

DLA Piper’s Chicago trademark group may have suffered departures at the senior level but there is a diverse cadre of younger lawyers at the side who are bringing more commercial sophistication, maturity and judgement to the practice than is typical for professionals in their age group. Take a look, for example, at associate Michael Geller – a media whiz who provides well-thought out counsel on internet law, domain names and social media. The team still benefits from strong leadership and mentoring, too, which is supplied in abundance by Keith Medansky, “an incredibly insightful trademark lawyer, practical and talented litigator, and one of the most prominent IP professionals in Chicago”.

Greenberg Traurig LLP

Greenberg Traurig (GT) cuts a dash in trademark practice with an exceptionally well-rounded service offering and ability to cater to local, national and international markets. Zooming in on the group in Chicago brings a top domain name, internet, e-commerce and social media practice into focus. Marc Trachtenberg works miracles putting together coordinated strategies for clients that are seeing an exponential increase in multi-channel, multi-vector fraudulent attacks in the digital realm. Before becoming an attorney, Trachtenberg was a software developer and consultant, so he has a granular technical understanding of web technology. He is also heavily involved in policy development for the administration of the Internet and, through extensive involvement in ICANN, has cultivated a far-reaching network of contacts including internet service providers and intermediaries. GT – a highly entrepreneurial outfit – is increasingly wrapping prosecution, maintenance and enforcement services into a single package, which it offers for a fixed fee; clients love this because they get certainty with respect to costs and do not have to micromanage things, freeing up time for other tasks. An important architect of the firm’s service is co-chair of the global IP and technology group Mark Galis, who shows himself to be an “extremely business-minded lawyer” in the course of his cross-spectrum patent and trademark practice. Focusing on trademarks, but an expert in all facets of clearance, registration, enforcement, litigation and licensing, Jeffrey Dunning is another vital contact for brand owners whatever they are facing. He has a deep knowledge of the trademark laws and common pitfalls in many jurisdictions and is great at tailoring international strategies. “Jeffrey is a very careful and solutions-oriented lawyer, who is experienced, reputable and great to cooperate with long term.”

Greer Burns & Crain Ltd

Adept at prosecution, Greer Burns & Crain is most prized for its enforcement prowess. The firm employs full-time engineers who programme automation tools for deployment by the lawyers to ensure that they are able to manage a voluminous anti-counterfeiting caseload efficiently and with no dips in quality. Amy Ziegler is superb at handling cases that need to move quickly; she is not looking for the easiest way out though, but rather exploring possible resolutions early with a tactical eye. Joining her in the guide this year is Justin Gaudio, an online brand protection specialist with a knack for getting at the funds of counterfeiters.

Katten Muchin Rosenman LLP

Commentators speak of Katten in revered tones because of the leadership shown by Floyd Mandell not only at the firm, but across the whole market. “When you’re with Floyd, it is an honour to be around such greatness. He is so passionate about trademarks and is dedicated and tireless for his clients.” “He is an exceptional and incredibly engaging litigator who is making law all the time. He works exceptionally hard – crazy hours – but keeps ratcheting it up, unlike many of his contemporaries at other places. An excellent mentor who creates opportunities for others, he has built a great team around him.” A top colleague and another leader in the group is Kristin Achterhof, who serves as co-chair of Katten’s national IP litigation practice and of its advertising, marketing and promotions practice, and is the firm’s national hiring partner. Of Achterhof, one source comments: “I adore her – she is just a fantastic litigator with a great presence. She is a tough adversary for sure, but she isn’t trying to steamroll everyone; she has a grace about her that makes her very effective in front of judge and jury.”

Kirkland & Ellis LLP

Juggernaut Kirkland & Ellis is hard to beat when it comes to big-ticket IP litigation. “If two big competitors are going to war, it is easy – and wise – to select Kirkland.” Developing resonant case themes early on is a talent of the side’s lawyers, including Chicago’s Robin McCue, who stands out for both courtroom experience and expertise in obtaining expedited relief, handling trademark and advertising surveys, and in damages-related matters.

Leydig, Voit & Mayer, Ltd

“Leydig Voit is still thriving as a boutique and has an excellent reputation for both its patent and its trademark practice.” Brand owners continue to seek out the venerable side not only for the quality of its work – which is unanimously accepted to be excellent – but for the nimbleness of its service. “Leydig does an outstanding job overall and goes the extra mile; it is a life saver that it is so flexible about administrative aspects of the relationship, such as billing procedures; it also puts on regular educational seminars for us and provides astute advice on all aspects of trademark protection, litigation, enforcement and licensing.” The team has been extremely busy this past year; Tamara Miller, for example, has been knocking the ball out the park in terms of enforcing her clients’ rights in China and otherwise handling major recordal and worldwide filing projects. “Tammy is a consummate professional who provides thorough but practical and cost-effective advice. She is a top subject-matter expert on trade dress and non-traditional marks. In enforcement, she is aggressive when necessary but typically moves forward with a calm and thoughtful demeanour, which is highly effective. Her composure and willingness to find reasonable resolutions and common ground is really impressive.” Meanwhile, Mark Liss has continued to shine both as a business-minded counsellor and problem solver and as a litigation and oppositions ace. “Mark is head and shoulders above most of the market when it comes to trademark knowledge, communication skill and commercial thinking. He is a brilliant negotiator who helps you avoid litigation without any sacrifice in the quality of your portfolio protection.” Another recipient of enthusiastic praise is Kevin Parks – an “entrepreneurial lawyer and excellent teacher with a granular knowledge of how IP law is developing”. Parks, who set up his own music licensing business before entering private practice, is Leydig’s copyright guru, but also knows trademarks like the back of his hand and has served as in-house brand counsel in the past as well. Developing a vibrant cannabis practice at the firm is Claudia Stangle – a partner highly rated for her deftness in TTAB proceedings, federal court litigation and domain name disputes.

Loeb & Loeb LLP

Douglas Masters has always made Loeb & Loeb a destination for well-rounded brand protection support in Chicago, but the firm has become an even more compelling option in recent years thank to improvements in depth; in 2018 it unveiled Brian Heidelberger and Robert Newman as new signings. Both former Winston lawyers have been having a ball since fielding abundant requests for insight into marketing and advertising matters – a bastion of strength for Loeb & Loeb – in particular. The pair are top of the totem pole in terms of understanding how brands communicate with the public and as experts at the intersection of IP and privacy law. Peers comment: “Brian is one of the best advertising lawyers in the country and so, too, Rob, who is incredibly thorough and hands on.” Of course, Masters continues to stand out as a foremost national authority on the law and business of brands and as a go-to for prestigious clients such as USA Track and Field and the Wm Wrigley Jr Company. One reference comments: “Doug understands our position and ensures that his approach aligns perfectly with our business strategies. He is uniquely skilled at getting to the heart of issues and extremely successful in obtaining desired results cost-effectively. He surrounds himself with quality people and has a very bright team.”

Marshall Gerstein & Borun LLP

“Marshall Gerstein & Borun is outstanding in the patent field but has a very competitive trademark team, too.” The eminent boutique’s trademark practice is sweeping in terms of services rendered, geographies covered and industries represented, meaning that there is nothing it cannot do for any brand owner. Such breadth puts the side in the ideal position to provide strategic overviews – something that it does with uncommon perspicacity. Chair of the trademark and copyright group Gregory Chinlund is popular around the globe and endorsed by foreign associates as “the first choice for all US matters”. Indeed, he has cracked the code of brand value creation. Richard LaBarge is a discerning choice for complex prosecution and enforcement mandates due to his track record protecting hard-to-register marks. Emerson Electric relies on him with good reason; he recently successfully registered the colour green as a trademark for the company’s industrial valves. Breaking new ground is something that Maureen Beacom Gorman also does extremely well in the context of her litigation and anti-counterfeiting practice.

Mayer Brown

Ascending to the Illinois silver tier in the WTR 1000 for 2020, “Mayer Brown is just getting it done right now”. A deep international bench and extensive collaboration across a growing global platform are key selling points for the firm, which is seeing a significant increase in demand from blue-chip clients, including a leading multinational professional services company and a top North American bank. An engine of the practice with impressive horsepower is Michael Adams – a “natural leader”, “superb project manager” and “razor sharp lawyer who easily digests large amounts of complex information”. “Michael is laser focused on solving business problems as quickly and cheaply as possible and putting his clients’ interests first, rather than turning every instruction into a gigantic engagement that is as convoluted as possible.” He has an excellent running mate in Chicago in Richard Assmus, another exceptionally smart, hard-working and pragmatic lawyer whose approach is not unnecessarily contentious. There are very few, if any, IP issues that Assmus has not seen; his practice is a broad church and encompasses trademark and patent counselling, litigation and licensing, as well as copyright law. He acts for Big Ten Conference with respect to global trademark clearance, prosecution, enforcement and brand strategy.

McAndrews, Held & Malloy Ltd 

McAndrews can cover the waterfront for IP owners in a way that is seamless; most of the set’s lawyers handle both patents and trademark matters with equal dexterity, which helps to create efficiencies for companies with diverse portfolios. Thanks to a busy patent litigation practice, the litigators here have had ample opportunity to hone their trial skills, which has translated into impressive success in trademark spats. Patrick Arnold, for example, has been working wonders in high-pressure TTAB proceedings representing marquee patrons such as AbbVie Technology. Arnold gets down to business executing on the right strategies cost-effectively. “He is an excellent attorney who is responsive to his clients’ needs and always surpasses expectations.” Ronald DiCerbo is another driving force on the trademark side, handling large and international portfolios with finesse for companies in diverse sectors and fields such as engineering, furniture, medical devices, batteries and dietary supplements. DiCerbo should be noted as an authority on trade dress.

McDermott Will & Emery

In a small, elite group of integrated global full-service commercial players with fully comprehensive trademark and brands practices, McDermott Will & Emery is a magnet for multinationals with valuable brands requiring iron-clad protection and forward-thinking strategic management. As years go, 2019 was a buzzy and successful one for the sterling team in Chicago, which benefited from 2018’s star arrival Christina Martini having the chance to bed in. McDermott’s effective integration of different departments has been a boon to Martini, who has harnessed the life sciences capability of the firm’s corporate, regulatory, litigation and IP divisions in the service of her long-standing biotechnology and pharmaceutical patrons. Unsurprisingly for a gold-rated lawyer, she receives phenomenal feedback: “Christina is always in your corner and looking out for your best commercial interests. More than just an outside lawyer, she is a practical and efficient business partner to her clients and an excellent mentor.” She goes above and beyond, as one company that followed her from previous home DLA Piper attests: “She did a marvellous job transitioning our portfolio and undoubtedly spent a ton of unbilled hours ensuring that the migration took place without causing any trouble for us whatsoever.” Another recipient of effusive praise is global trademark prosecution chair Jennifer Mikulina, who joins Martini in the WTR 1000 gold tier this year. “It is a privilege to work with Jennifer, who is one of the most knowledgeable, humble, compassionate and patient trademark professionals anywhere. She is an excellent listener and problem solver with a unique ability to break down complex IP concepts into bite-sized, manageable pieces.” She is a brilliant team player and collaborates well with lawyers in the corporate, tax and regulatory arenas in the course of her dynamic transactional practice.

Neal & McDevitt, LLC 

Neal & McDevitt’s dedication to trademark, copyright, unfair competition, marketing, advertising and promotions law singles it out in Chicago; the focused and highly specialised boutique fits the bill perfectly for those who want to communicate strong and distinct brand identities to the marketplace. Co-founder and INTA bigwig Kevin McDevitt makes his 30 years of experience count when counselling clients throughout all phases of the trademark lifecycle. Richard Biagi, another authoritative voice at INTA, brings extensive litigation experience to the practice. Newly featured in the WTR 1000 this year, Nicholas de la Torre is both a “skilled litigator and prosecutor” and a “terrific attorney and relationship partner who keeps everyone calm”.

Neal Gerber & Eisenberg LLP

Intellectual property is one of the pillars of Neal Gerber & Eisenberg’s refined commercial practice. The trademark team is clued up on what consumers recognise as a brand and stays on the cutting-edge in terms of what is protectable in order to deliver a strong competitive advantage to clients in domestic and international markets. The outfit’s administrative machine is well oiled thanks to a fully staffed and excellently managed docketing department – which deploys state-of-the-art technical tools – and a mature paralegal corp. With this support package, partners Anthony McShane, Michael Kelber and Lee Eulgen can focus on what they do best – namely, engaging in strategic thinking and counselling on a business level. McShane, who founded the group in 2002, “provides unbeatable advice for the protection of intellectual property in the digital world” and “should be everyone’s first port of call for analysis regarding the impact of new technology on trademarks”. “He is a stellar lawyer on everything from clearance to enforcement.” Co-chair of the practice Kelber also garners glowing notices: “His advice is precise and focused to direct key commercial decision makers on the best courses of action. On a personal level, he is approachable and dependable and is great at connecting with people. He produces the highest-calibre work product, shows impeccable judgement at all times and manages and inspires his team brilliantly.” Eulgen is a master at getting the full weight of the firm pulling in his clients’ – invariably famous brand owners – direction. Often serving as outside general counsel and filling the trusted adviser role perfectly, he is a straightforward operator who rolls up his sleeves and brings about successful resolutions swiftly and efficiently. He continues to be heavily engaged in US and international IP policy discussion.

Norvell IP LLC

Efficiency is a point of emphasis for the Norvell IP team. In this regard, the effective utilisation of technology is important, as well as the approach by which senior and experienced attorneys are the ones doing the work and getting it right the first time. Flexibility is another focus; the group does not look to nickel and dime clients, but rather partners with them to plan suitable billing arrangements, which can take a variety of structures. Most of all, it is the quality that shines through at the end of the day, and this starts at the top with founding partner Joseph Norvell – an experienced federal court and TTAB litigator with an excellent track record. He is surrounded by talent with partners Joseph Kucala and Tom Monagan to his left and right. Brand protection and enforcement pro Kucala has “strong technical skills and is a genuine and reasonable lawyer who is very effective”. Kirkland & Ellis alumnus Monagan is in his element in litigation and transactional settings. He blends extensive advertising expertise into his broad IP litigation practice.

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Sitting at the pinnacle of the trademark profession not just in Chicago or the United States, but across the world, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson boasts a deep bench of top professionals who protect their clients with passion and pride while being “incredibly supportive of the wider legal community” in terms of expertise and time. As managing partner, Bradley Cohn has the firm sailing with a fair wind. Litigating in his own practice, he is “one of the best there is at it”, with great instincts regarding trial strategy and a gift for diagnosing the strengths and weaknesses of a case. Moving up in the enforcement and litigation rankings this year is Thad Chaloemtiarana. Brand owners stay loyal to him for decades, unwilling to pass up on his high-level substantive knowledge coupled with commercial pragmatism. “Thad is always ready with a timely, well-reasoned and thoughtful response to any issue. If he can’t address something himself (which is incredibly rare), he can connect you with people with the relevant expertise. Thad always delivers, no matter how quick the turnaround time required is or what sort of chaos you can throw at him.” Perennial enforcement and litigation gold-tier member Jonathan Jennings continues to shine on high-end cases. “Jonathan is extremely approachable and is hands-on with the work assigned to him and his team. He has profound IP knowledge and can convey complex legal concepts in business language, allowing you to understand the work being done and make well-informed decisions. If you want to be sure about getting a good result, contact Jonathan.” Experienced counsellor and first-chair trial lawyer Phillip Barengolts also garners enthusiastic praise: “Phil gets you where you need to be through his hard work and dedication. He is quick to respond and provides comprehensive yet practical advice while keeping budget concerns in mind.” Brett August is another repository of trust when the chips are down. “He’s very up-front and will tell you when a case is a dog and you need to get out. A scholar who knows how to litigate, Brett is a high-calibre guy who adds heft to Pattishall’s practice.” A senior leader in the group alongside August is Janet Marvel – a “wonderful mentor and superb listener who really tailors her advice to the particular needs of clients”. As an editor of the American Bar Association’s Landslide magazine, she has followed dynamic change in the trademark industry extremely closely and can bring surety to brand owners as they navigate ever more complex terrains. Marvel also authored a treatise on trademark and unfair competition law alongside Joseph Welch II and David Hilliard. Welch loves trademark and advertising law and everything connected with it. He is a zealous advocate for his clients in litigation, while always remaining fair and reasonable. Luminary Hilliard stands out for his thought leadership, unbeatable experience and arbitration expertise. Robert Sacoff is also a prominent author, speaker and bar leader with decades of experience. He is a key contact for prestigious companies such as Tate & Lyle, which he represents in connection with prosecution, clearance and enforcement. Performing flawlessly on both sides of the contentious/non-contentious divide, Belinda Scrimenti can “solve any issue in the most creative and efficient manner”. “She and her team are thorough, highly responsive and extremely knowledge on all topics related to trademarks. Their schedules for all steps of a process are put to calendar on a very timely basis and followed up so no deadlines are missed. All issues are completely researched and reviewed and presented clearly for discussion and decision.” Coming up under all these senior figures in the profession, Ashly Boesche is really making her mark. “Ashly is thoughtful, creative and practical, and someone to call when you have a particularly tough question to work through.” It is no wonder then that she makes her debut in the WTR 1000 this year.

Perkins Coie LLP

A US IP powerhouse, Perkins Coie acquits itself with distinction in patent and trademark practice. Its trademark, copyright, internet and advertising team includes more than 50 attorneys who collectively manage 30,000-plus trademark filings and registrations, in the course of which there are few – if any – problems they have not resolved. Enforcement is another strength of the outfit, which excels in the fight against fakes online and in litigation and anti-counterfeiting efforts in China. Thomas Holt flies the Perkins Coie flag in Chicago and plays an important role in firm-wide life by serving as head of the contentious trademark practice. Many litigators pride themselves on being adversarial but Holt is not just looking to show how aggressive he can be and thereby run up fees; from early in a case he is thoughtful about potential business resolutions and has a talent for bringing them to fruition. In the words of one client: “Tom provides superb trademark counsel, reflecting a profound knowledge of substantive law and his affable personality.” Among his patrons are a top university and a leading sportswear brand.

Reed Smith LLP

Reed Smith is “especially well versed when it comes to handling big-ticket litigations” in and outside the IP space. Firepower in Chicago is supplied by John Cullis, a gifted first-chair trial lawyer who also shows impressive range as a clearance, prosecution and transactions counsellor. Local peers point out that, being dual-licensed to practise in the United States and Canada, “he can cover both so that clients don’t have to engage additional counsel – and incur additional expense – for work north of the US border”. Senior counsel Robert Browne is also on hand for strategic insight; many years in the practice make him a most percipient counsellor.

Taft Stettinius & Hollister LLP 

Taft scored a coup in May 2019 when it brought Paul McGrady into the fold. McGrady is one of the United States’ leading authorities on trademark law generally and one of the world’s most knowledgeable domain names experts. “Paul has an unbelievably high-level understanding of internet and trademark issues as they intersect. He is very involved in policy making in the domain name area and a deeply pragmatic thinker.” Dividing his time between the regional firm’s Chicago and Cleveland offices, he now applies Great Lakes billing rates in his national practice, which will doubtless spur huge growth in demand for his and his firm’s services.

Ulmer & Berne LLP

Nothing is off limits in trademark practice for the experienced crew at Ulmer & Berne: rights are registered without fuss; portfolios are managed efficiently and seamlessly; and contentious cases are despatched swiftly and decisively. The team shows a fine-tuned understanding of clients’ business objectives and maintains open lines of communication, enabling improved alignment of its service and strategies to the tasks at hand. For a contact point when infringement headaches loom, look to Thomas Williams, a top authority on false advertising disputes. “Tom is a terrifically skilled lawyer with excellent litigation instincts.” Scott Rogers, former vice president and general counsel of Ty Inc (of Beanie Babies fame), is the go-to for prosecution. “Scott is bright, attentive and proactive. He genuinely cares about his clients and will check in to see how the business is going or just how your family is doing – it is sincere with Scott, and not just a marketing ploy. He doesn’t overbill and is very transparent on upfront pricing, so you are never surprised by the final invoice.”

Winston & Strawn LLP 

Winston & Strawn is rightly held in the highest regard for its IP litigation chops. The firm is perfectly poised to handle big-dollar cases that are likely to be litigated all the way through trial. Winston lawyers such as Lanham Act false advertising maestro Ronald Rothstein can be bulldogs in the courtroom when necessary but also show a lot of respect for the fact that brand owners have businesses to run and budgets to manage. As such, Rothstein brings the heat but always looks for business resolutions. He is also a contact point for non-contentious matters and manages prosecution workflows with the most appropriate associates and paralegals for cost-efficiency.

Other recommended experts

Jill Anderfuren of Lewis Brisbois Bisgaard & Smith is “nothing short of amazing in terms of securing protection for your most important trademarks”. “She is able to take over intractable cases from other counsel and swiftly bring them to resolution, consistently providing clear, creative and practical advice in a timely manner and works hard while never losing sight of the practical business objectives of her clients. Flexible in accommodating any request, she is absolutely the best!” Dentons partner Carol Anne Been is a new addition to the WTR 1000 this year. Local peers note: “Clients really trust her judgement and look up to her”, while foreign associates call her a “rock-solid on the law but also a commercial and practical lawyer”. She focuses on strategic brand counselling. Angelo Bufalino is a prototypical IP all-rounder. He knows patent, trademark and copyright law inside-out, covering all the bases from prosecution to enforcement as well. The Vedder Price attorney gets right to the heart of business issues quickly and gives sound commercial counsel. Drinker Biddle & Reath’s Darren Cahr demonstrates impressive thought leadership and writes extensively on diverse topics such as privacy and the impact of technology on trademark law. Brand owners love to bring him in on the ground floor to design long-term strategies for effective rights protection; he receives calls from CEOs about how to leverage their brands in rapidly changing and highly competitive markets. Luke DeMarte and Susan Frohling are anchors of Michael Best & Friedrich’s Chicago trademark practice. DeMarte provides “consistently excellent and commercially focused advice” through all phases of trademark protection and enforcement. Frohling is an expert at driving brand values up and to the right. Craig Fochler chairs the Chicago IP department of Foley & Lardner. He is highly experienced in trademark and advertising litigation. So, too, is Jami Gekas, who has successfully tried jury cases to verdict. Gekas is equally experienced when it comes to rights management and serves as outside counsel for one of the country’s top restaurant groups. K&L Gates is building a destination global trademark practice, key contributors to which are Chicagoans Sana Hakim and Kate Starshak. According to one foreign correspondent, Hakim is “the queen of filing and prosecution”; held in similarly high esteem internationally, Starshak is hailed for her “clear advice and quick service”. Chair of Goldberg Kohn’s IP group Marsha K Hoover is at her best serving in a general counsel-type role for clients; for those with global portfolios, she is excellent at directing traffic internationally while solving any problems that arise. Dermot Horgan is the founder of IpHorgan, a boutique dedicated to excellence in search, clearance, registration, maintenance and enforcement. It is a great place to go for a global perspective on brand strategy. “Alice Kelly is practical and gets things done quickly and efficiently and is a good litigator with an excellent results record. She is also a great cheerleader for women in the IP profession.” The Ice Miller lawyer debuts in the WTR 1000 this year. Paula Jill Krasny is “widely respected in IP circles globally for providing fair, effective and cost-efficient trademark protection and strategic advice”. She operates out of Levenfeld Pearlstein. Bart A Lazar does a lot of what many would consider ‘other’ in the trademark area and is a leading light when it comes to data privacy, advertising, sweepstakes and more besides. Factoring in the high-level expertise of lawyers like Lazar and a sophisticated approach to the implementation of technology makes Seyfarth a go-to firm. Mark Partridge has superb advocacy skills, which he flexes at trial and in appellate proceedings. However, the Partridge Partners founder does not consider litigation to be an end in itself, but rather a means to achieve business resolutions. He is also a noted authority and trailblazer in the domain name area. Bryan Cave Leighton Paisner’s Mark Paskar is a transactional IP maven who has had a banner year negotiating and executing licensing, naming rights, co-sponsorship and myriad other agreements. He has an instinctual feel for identifying where value lies for his clients and being an effective business ally to them. He has also shown leadership in terms of alternative fee arrangement flexibility and helping in-house counsel to deal with cost pressure. James Saul is a go-to in Chicago for expertise in anti-counterfeiting, especially in the pharmaceutical space. He is steeped in international legal practice and is rigorous, strategic and organised in taking the fight to fakers at a global level. Catherine Simmons-Gill has unbeatable experience, including multiple general and chief trademark counsel roles in-house and the INTA presidency. She is also well known for her contribution to academia and has taught extensively on trademark and IP law among other subjects. She operates out of her own firm. Tolpin & Partners’ Brett Tolpin provides meaningful support to brand owners in numerous ways; he manages portfolios with a deft touch, polices infringement with vigilance and shepherds IP-driven deals to a successful close as a transactional attorney. Litigation powerhouse Latham & Watkins has Matthew Walch as an anchor of its trademark, advertising and unfair competition practice in Chicago. Experienced throughout all phases of litigation, including trial, Walch is well prepared for any twist and turn that a complex case may take.

Individuals: enforcement and litigation

  • David S Fleming - Brinks Gilson & Lione
  • Jeffery A Handelman - Brinks Gilson & Lione
  • Jonathan S Jennings - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Mark J Liss - Leydig, Voit & Mayer, Ltd
  • Floyd A Mandell - Katten Muchin Rosenman LLP
  • Douglas Masters - Loeb & Loeb LLP
  • Paul McGrady - Taft Stettinius & Hollister LLP
  • Keith W Medansky - DLA Piper
  • Marc Trachtenberg - Greenberg Traurig LLP
  • Kristin J Achterhof - Katten Muchin Rosenman LLP
  • Brett August - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Andrew Avsec - Brinks Gilson & Lione
  • Phillip Barengolts - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Thad Chaloemtiarana - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Gregory J Chinlund - Marshall Gerstein & Borun LLP
  • Bradley L Cohn - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • John Cullis - Reed Smith LLP
  • Christopher Dolan - Barnes & Thornburg LLP
  • Lee J Eulgen - Neal Gerber & Eisenberg LLP
  • John T Gabrielides - Barnes & Thornburg LLP
  • Mark R Galis - Greenberg Traurig LLP
  • Thomas L Holt - Perkins Coie LLP
  • Michael G Kelber - Neal Gerber & Eisenberg LLP
  • Christina L Martini - McDermott Will & Emery
  • Janet A Marvel - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Antony J McShane - Neal Gerber & Eisenberg LLP
  • Howard S Michael - Brinks Gilson & Lione
  • Tamara Miller - Leydig, Voit & Mayer, Ltd
  • Kevin Parks - Leydig, Voit & Mayer, Ltd
  • Mark VB Partridge - Partridge Partners PC
  • Christopher J Renk - Banner Witcoff
  • Robert W Sacoff - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Joseph N Welch II - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Richard M Assmus - Mayer Brown
  • Richard B Biagi - Neal & McDevitt, LLC
  • Ashly Boesche - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Robert E Browne - Reed Smith LLP
  • Angelo Bufalino - Vedder Price PC
  • Darren S Cahr - Drinker Biddle & Reath LLP
  • Craig S Fochler - Foley & Lardner LLP
  • Jonathan P Froemel - Barnes & Thornburg LLP
  • Justin Gaudio - Greer Burns & Crain Ltd
  • Jami A Gekas - Foley & Lardner LLP
  • Robin McCue - Kirkland & Ellis LLP
  • Tom Monagan - Norvell IP LLC
  • Joseph V Norvell - Norvell IP LLC
  • Ronald Rothstein - Winston & Strawn LLP
  • James Saul - Faegre Baker Daniels LLP
  • Catherine Simmons-Gill - Law Offices of Catherine Simmons-Gill LLC
  • Scott J Slavick - Barack Ferrazzano Kirschbaum & Nagelberg LLP
  • Wendi E Sloane - Barack Ferrazzano Kirschbaum & Nagelberg LLP
  • Claudia W Stangle - Leydig, Voit & Mayer, Ltd
  • Brett M Tolpin - Tolpin & Partners PC
  • Matthew W Walch - Latham & Watkins LLP
  • Thomas M Williams - Ulmer & Berne LLP
  • Amy Ziegler - Greer Burns & Crain Ltd

Individuals: prosecution and strategy

  • Michael D Adams - Mayer Brown
  • Michael A Carrillo - Barnes & Thornburg LLP
  • Jonathan S Jennings - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Michael G Kelber - Neal Gerber & Eisenberg LLP
  • Mark J Liss - Leydig, Voit & Mayer, Ltd
  • Christina L Martini - McDermott Will & Emery
  • Janet A Marvel - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Douglas Masters - Loeb & Loeb LLP
  • Paul McGrady - Taft Stettinius & Hollister LLP
  • Keith W Medansky - DLA Piper
  • Jennifer M Mikulina - McDermott Will & Emery
  • Marc Trachtenberg - Greenberg Traurig LLP
  • Andrew Avsec - Brinks Gilson & Lione
  • Gregory J Chinlund - Marshall Gerstein & Borun LLP
  • David J Davis - Baker McKenzie
  • Christopher Dolan - Barnes & Thornburg LLP
  • Lee J Eulgen - Neal Gerber & Eisenberg LLP
  • Susan Frohling - Michael Best & Friedrich LLP
  • Mark R Galis - Greenberg Traurig LLP
  • Maureen Beacom Gorman - Marshall Gerstein & Borun LLP
  • Brian Heidelberger - Loeb & Loeb LLP
  • Thomas L Holt - Perkins Coie LLP
  • Marsha K Hoover - Goldberg Kohn 
  • Anna L King - Banner Witcoff
  • Joseph T Kucala Jr - Norvell IP LLC
  • Richard M LaBarge - Marshall Gerstein & Borun LLP
  • Antony J McShane - Neal Gerber & Eisenberg LLP
  • Howard S Michael - Brinks Gilson & Lione
  • Helen Hill Minsker - Banner Witcoff
  • Mark VB Partridge - Partridge Partners PC
  • Scott Rogers - Ulmer & Berne LLP
  • Belinda Scrimenti - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
  • Scott J Slavick - Barack Ferrazzano Kirschbaum & Nagelberg LLP
  • Jill Anderfuren - Lewis Brisbois Bisgaard & Smith LLP
  • Patrick J Arnold Jr - McAndrews, Held & Malloy Ltd
  • Carol Anne Been - Dentons
  • Darren S Cahr - Drinker Biddle & Reath LLP
  • Nicholas G de la Torre - Neal & McDevitt, LLC
  • Luke W DeMarte - Michael Best & Friedrich LLP
  • Ronald DiCerbo - McAndrews, Held & Malloy Ltd
  • Jeffrey Dunning - Greenberg Traurig LLP
  • Katie Fink - Banner Witcoff
  • Jami A Gekas - Foley & Lardner LLP
  • Thomas Gniot - Barack Ferrazzano Kirschbaum & Nagelberg LLP
  • Sana Hakim - K&L Gates
  • Dermot Horgan - IpHorgan Ltd
  • Alice Kelly - Ice Miller LLP
  • Paula Jill Krasny - Levenfeld Pearlstein LLC
  • Bart A Lazar - Seyfarth Shaw LLP 
  • Virginia Wolk Marino - Brinks Gilson & Lione
  • Kevin J McDevitt - Neal & McDevitt, LLC
  • Robert Newman - Loeb & Loeb LLP
  • Mark A Paskar - Bryan Cave Leighton Paisner LLP
  • Shima S Roy - Baker McKenzie
  • James Saul - Faegre Baker Daniels LLP
  • Catherine Simmons-Gill - Law Offices of Catherine Simmons-Gill LLC
  • Claudia W Stangle - Leydig, Voit & Mayer, Ltd
  • Kate Starshak - K&L Gates
  • Richard Stockton - Banner Witcoff
  • Brett M Tolpin - Tolpin & Partners PC
  • Thomas M Williams - Ulmer & Berne LLP
  • Amy Ziegler - Greer Burns & Crain Ltd

Luminaries

  • Jerome Gilson - Brinks Gilson & Lione
  • David C Hilliard - Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP