The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise
Bronze - Individuals: prosecution and strategy
The trademark squad at Neal Gerber serves patrons around the world through any IP challenge. In 2021, the group registered 327 marks in the United States and manages thousands more across the world. In Chicago, the top-notch ensemble is led by co-chairs Michael Kelber and Thomas McDonough, alongside practice co-founders Lee Eulgen and Antony McShane. All-rounder Kelber leads litigation, counsels on transactional agreements and has personally prosecuted thousands of US and foreign trademarks in the course of his career. One case saw Kelber move from UDRP proceedings to district court and finally to the US Court of Appeal defending McDonald’s against cyber-squatters seeking to capitalise on the company’s domain name suffixes. McDonough has significant expertise negotiating and drafting software licences, and is a smooth operator in any difficult IP transaction. One happy client writes: “Tom is extremely professional, knowledgeable, and efficient in his work and communication. He always responds in a timely and detailed manner. I thoroughly enjoy working with Tom and would highly recommend his services.” McShane is a talented and highly experienced portfolio manager appreciated by patrons for his “responsiveness, thoughtfulness, creativity and advocacy. Tony and his team are always available and respond very quickly. His analysis, recommendations and advice are always well thought out in relation to the specific circumstances. He thinks outside the box and applies creative solutions to the issues. Overall, Tony’s approach is strategic and conservative, but very firm. He thinks everything out clearly and responds aggressively if the need arises. He is communicative and we appreciate our goal-oriented discussions. We have great confidence in Tony and his team.” Eulgen is an accomplished litigator with significant first chair experience in the whole range of Lanham Act related disputes. “Lee and his team are extremely well versed in the law and can apply it to business needs. They are very practical and solution oriented. They understand that the law cannot be applied in a vacuum, and that many times you have to strike a balance between risk and reward, balancing business needs with legal requirements. Lee is a top TM practitioner, one that I go to when I have complex, sticky issues that need a true expert. Lee and his squad are an incredible asset to our trademark practice.” Ian Block is another skilled partner in the trademark group. Block brings his creative and pragmatic approach to major players, such as the online dating app Bumble.
Thomas McDonough is co-chair of the firm’s IP practice group and a registered patent attorney. He develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licences, patent and trademark licences and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical IP components. He also regularly performs thorough product clearance searches on behalf of clients. Mr McDonough represents clients in all aspects of IP disputes, with an emphasis on patent, trademark, trade dress and copyright infringement litigation.
Mr McDonough has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications with a particular focus on hydraulic drive systems, transaxles, pumps, motors and related control systems, differentials and gearing systems, vehicle engines, rail transportation equipment, automotive components and systems, snow throwers, agricultural equipment and kitchen and household products.
Clients appreciate his aptitude for understanding their businesses and goals and for finding efficient, cost-effective strategies for developing and protecting their intellectual property. His experience in all aspects of IP law enables him to provide a comprehensive understanding of the issues involved in each project.
He is a member of the firm's Diversity and Inclusion Committee and Associate Review Committee. He is an active volunteer and serves as a member of the Board of Directors for Lawyers for the Creative Arts, an organisation that provides pro bono legal services to low-income artists and arts organisations.
Neal Gerber Eisenberg was founded in 1986 by a group of lawyers of widely diverse backgrounds and personalities. Entrepreneurial and independent-minded as individuals, these lawyers were committed to a firm culture and style of practice that encouraged collaboration among colleagues at all levels. Each of the founders brought to the enterprise years of experience in and deep substantive knowledge of specialised areas of law, yet each favoured practising in ways that were broadly interdisciplinary, recognising the fresh perspectives that approach could bring to every client matter.
The firm has grown and thrived in large part because so many of our clients have been strongly entrepreneurial and individualistic and have seen their own values and outlooks mirrored in us. Our clients appreciate that:
- we do not view their businesses generically, but understand the uniqueness of who they are, what they do, and the legal and practical challenges they may face;
- we recognise that a particular strategy or solution for one client may not be suitable for another, even if they operate in similar spheres; and
- we listen, above all.
Our goal is to know the client and the client’s business as thoroughly as possible and bring creative insight to every matter. Knowing what makes each client special is what makes us special.
Neal Gerber Eisenberg is one of the largest single-office law firms in the nation. The scope of our practice is both international and domestic and covers a full range of legal services, including transactions of all kinds, litigation and intellectual property. Our clients include:
- Fortune 100 companies as well as small and medium-sized businesses;
- public companies as well as private equity firms;
- established institutions; and
Personalised service to entrepreneurs and high net worth individuals and families is a keystone of our practice. We also are dedicated to improving the life of our community by working with public service organisations and by making legal services available, pro bono, to those who might otherwise lack access to justice.
For more than 35 years, we’ve succeeded – and helped our clients succeed – by deploying the best legal talent as efficiently as possible, by thinking collaboratively and ‘outside the box’, and by partnering with our clients to achieve the results they desire. At a time when many law firms see themselves as institutions, Neal Gerber Eisenberg continues to hold that rendering legal services is a person-to-person endeavour.
Neal Gerber Eisenberg’s IP team is an integrated litigation and portfolio management group. The practice combines experience in litigation with the management of large, international trademark and patent portfolios into a one-stop shop. Each side of the work informs the other and provides the lawyers insight that allows them to best serve all their client’s IP needs.
The group is also recognised for:
- managing and policing well-known brands, including Euromarket Designs Inc (Crate & Barrel and CB2 retailers), Lettuce Entertain You, Blue Cross Blue Shield, Dine Brands Global (IHOP and Applebee’s Restaurants), CareerBuilder, Viceroy Hotel Group, Montage Hotels & Resorts, GI Sportz and Polaroid;
- trial success enforcing IP rights in collaboration with clients in federal and state courts throughout the country, and before the TTAB and the US International Trade Commission;
- sophisticated patent prosecution and counselling, particularly in the areas of electronic and electro-mechanical devices, computer software, pharmaceuticals, biologics, biotechnology, industrial chemistry, medical devices and gaming systems for well-known clients;
- large IP portfolio management, domestically and worldwide;
- complex technology transactions, including detailed due diligence and opinions regarding portfolio strength and freedom to operate; and
- sophisticated privacy and information governance and security counselling and breach response.