Brett A. August

Phone: 312-554-7962

Email: baugust@pattishall.com

Bio

Education

  • Yale Law School (J.D. 1977); Associate Editor, Yale Studies in World Public Order; President, Yale Association of International Law
  • University of Rouen, France (awarded 2nd and 3rd degrees of higher education, with honors)
  • University of Illinois in Urbana-Champaign (B.A., 1974, Political Science 1974; B.A., 1974, French Linguistics 1974; magna cum laude)
    Phi Beta Kappa, Bronze Tablet Award

Bar Admissions

Illinois

Court Admissions

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Industry Expertise

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Honors & Awards

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Representative Trials, Appeals & Litigation

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ADR

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Professional Activities

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Representative Publications

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Representative Presentations

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Brett A. August

Companies from coast to coast and in numerous foreign countries have turned to Brett to protect their most valuable assets: their brands. The winner of numerous awards and accolades, Brett has successfully handled close to 200 adversarial proceedings for his clients. While an aggressive litigator, Brett has been able to resolve the majority of those disputes without incurring the expense and inconvenience of a trial. For example, he recently achieved a $6 million settlement for a client on the eve of trial.

Brett's clients include many companies in the technology sector. From Massachusetts to Chicago to Silicon Valley, high-tech clients trust Brett to counsel them in branding strategies and to protect their brands from infringers. Brett is responsible for managing numerous large trademark portfolios, including portfolios of more than a thousand marks each.

For a financial-services company, Brett led a litigation team that stopped a competitor from using advertising that was truthful but misleading. Brett's client was awarded both trebled damages and attorneys' fees. For a manufacturer of consumer durables, Brett successfully argued an appeal to the Seventh Circuit Court of Appeals that brought about a most unusual settlement: payment of millions of dollars to Brett's client who was the defendant in the action.

It says a lot about Brett that for the past two decades most new clients have come to him as the result of word-of-mouth recommendations from existing clients. As one new client said: "We hired you because of your reputation as the Johnny Cochran of trademark law." Hyperbole aside, Brett has established an exceptional reputation for good work.

Brett's excellence has been repeatedly recognized by his peers. A Super Lawyer every year for over a decade and selected as one of the top 100 lawyers in the State of Illinois, Brett has also been honored by both Corporate International Legal Awards and Global Law Experts as Brand Protection Attorney of the Year in Illinois. In 2015, the international publication Lawyer Monthly chose Brett as the Brand Attorney of the Year for the United States.

Part of Brett's success may be due to his having worked for seven years as in-house counsel to a Fortune 500 company. That taught him knowing the law is not enough: you must also know how to use the law to solve the client's problem. Brett has used that approach to build a national and international practice -- with particularly extensive experience in the EU and China -- handling cases for infringement, false advertising, domain names and unfair competition.

Brett is also active in non-profit organizations. The President of France made Brett a French Knight (Chevalier de la Légion d'Honneur) in recognition of his tireless volunteer activities as a grass-roots ambassador between Chicago and France. Brett founded the French-American Chamber of Commerce in Chicago and later served as its president. And as chairman of the Chicago-Paris Sister Cities Committee for over a decade, Brett has worked hard to create educational exchanges that have allowed hundreds of Chicago public-school students to travel to Paris where they learned the important life lesson that there is a big world outside their home town.

Industry Expertise

  • Automobiles & Components
  • Banks
  • Capital Goods
  • Consumer Durables & Apparel
  • Diversified Financials
  • Food & Beverage
  • Health Care Equipment & Services
  • Hotels, Restaurants & Leisure
  • Insurance
  • Media
  • Real Estate
  • Retailing
  • Software & Services
  • Technology Hardware & Equipment
  • Transportation

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Honors & Awards

  • 2017 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2017 World Trademark Review (WTR) 1000 : "...the 'extremely intelligent and exceptionally eloquent' Brett August, a trusted first port of call for high-tech clients; his 'substantial branding knowledge' serves as the foundation of his outstanding client service."
  • 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2017 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2016 Chicago Sister Cities International : Recipient of the "Volunteer of the Year" award
  • 2016 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2016 Leading Lawyers : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law, Advertising & Media Law and Trade Secrets/Unfair Competition Law for the State of Illinois
  • 2016 Corporate INTL Magazine Global Awards : Recognized as the "Brand Protection Attorney of the Year in Illinois" for 2015 and 2016
  • 2016 World Trademark Review (WTR) 1000 : "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."
  • 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2016 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2015 Lawyer Monthly : Selected as "Brand Attorney of the Year - USA"
  • 2015 Global Law Experts : Brand Protection Attorney of the Year in Illinois
  • 2015 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2015 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2015 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property and Intellectual Property Litigation
  • 2014 Leading Lawyers Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law, Advertising & Media Law and Trade Secrets/Unfair Competition Law for the State of Illinois
  • 2014 American Lawyer Media and Martindale-Hubbell : Selected as a 2014 Top Rated Lawyer in Intellectual Property
  • 2014 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2014 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2014 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property and Intellectual Property Litigation
  • 2014 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation for ten consecutive years
  • 2013 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2013 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2013 American Lawyer Media and Martindale-Hubbell : Selected as a 2013 Top Rated Lawyer in Intellectual Property
  • 2013 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2013 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2012 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2012 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2011 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2011 Illinois Super Lawyers Magazine : An Illinois "Super Lawyer"
  • 2010 Leading Lawyers Magazine, Business Edition : Selected as a "Top Business Lawyer in Intellectual Property Law in Illinois"
  • 2010 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2009 Chicago Lawyer Magazine : Selected as a "Top Intellectual Property Lawyer in Illinois" by Leading Lawyers Network
  • 2009 Leading Lawyers Network Magazine : A "Leading Lawyer" in Intellectual Property
  • 2009 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2008 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2008 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2007 Leading Lawyers Network Magazine : Named a "Leading Lawyer" in Intellectual Property Law
  • 2007 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2007 Chicago Lawyers : One of the Top 100 Illinois Lawyers
  • 2006 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2005 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2005 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law
  • 2004 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law

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Representative Trials, Appeals & Litigation

  • ZIH Corp. v. The Outer Sphere LLC, Opposition No. 91223239 (TTAB 2016) (ZEBRA; Settled, obtained withdrawal of application and agreement to phase out all use of offending word) (Trademark)
  • CDVI Americas Ltd. v. Amin Corp., Cancellation No. 92063450 (TTAB 2016) (Petitioned to cancel the registrant's RADIUM trademark, alleging a fraudulent specimen of use; defeated the registrant's motion to dismiss) (Trademark)
  • Navistar International Corporation v. HARIS MAMOUN, NAF Case No. FA1605001673819 (NAF 2016) (Navistar won the UDRP proceeding against HARIS MAMOUN and has been awarded the domain name navistar.international) (Domain Name, UDRP Proceeding)
  • Navistar International Corporation v. EIJI TAKAHASHI, NAF Case No. FA1604001672359 (NAF 2016) (Navistar won the UDRP proceeding against EIJI TAKAHASHI and has been awarded the domain name navistar.xyz) (Domain Name, UDRP Proceeding)
  • Navistar International Corporation v. N Rahmany, Case No. FA1505001620789 (NAF 2015) (Obtained transfer of an infringing domain name from a cybersquatter through efficient UDRP proceedings on behalf of client Navistar International Corp.) (Domain Name, UDRP Proceeding)
  • E. I. du Pont de Nemours and Company v. The Middleby Corporation, et al., Case No. 2:14-cv-07846 (C.D. Cal. 2015) (Judge O'Connell)(voluntary dismissal with prejudice of claims against defendant clients) (Trademark Infringement, Counterfeiting, Unfair Competition)
  • Navistar International Corporation v. VistaPrint Technologies, UDRP Case No. FA1410001586755 (Navistar won the UDRP proceeding against VistaPrint and has been awarded the domain name navisttar.com) (Domain Name, UDRP Proceeding)
  • Navistar, Inc. v. Zhilan Song, Opposition No. 91207197 (TTAB 2013) (Pattishall client Navistar Inc., through its International Truck Intellectual Property subsidiary, owns the PROSTAR trademark for trucks and successfully opposed a USPTO application to register PROSTAR for certain tires. Pattishall attorneys Brett August, Seth Appel and Andrew Hughes represented Navistar in moving for summary judgment. While that motion was pending, the parties entered into a settlement agreement by which the applicant agreed to abandon its application and to limit significantly its use of PROSTAR.) (Trademark)
  • Navistar International Corporation v. Larry Jones, Opposition No. 91210107 (TTAB 2013) (Trademark Opposition)
  • Brett August and Andrew Hughes obtained an award of attorneys fees on behalf of client Navistar, Inc., in civil litigation for trademark infringement and unfair competition in the U.S. District Court for the District of Idaho (Trademark Infringement, Unfair Competition)
  • Lead counsel for Fortune 200 company in lawsuit in US District Court in Boston, which settled June 2012 after one deposition, resulting in change of defendant's company name (Trademark Infringement, Unfair Competition)
  • EMC Corp. v. Technology Transfer, Inc., Case No. 11-CV-10861-WGY (D. Mass. 2011, J. Wm. Young) (lead counsel in defeating motion to dismiss or transfer venue) (Trademark Infringement, Unfair Competition)
  • Cloverhill Pastry-Vend, LLC v. Delegans, Edie, Opposition No. 91204691 (TTAB 2012) (opposition sustained) (Trademark)
  • Navistar, Inc.; Pure Power Technologies, LLC and International Engine Intellectual Property Company LLC v. Pure Power, LLC, C.A. No. 4:12-cv-00013-BLW (D. Idaho, Judge Winmill) (Trademark)
  • Lead counsel against leading international retailer and 11 suppliers in the U.S. District Court for the Central District of California for counterfeiting, trademark infringement and unfair competition that settled on extremely favorable terms on the eve of trial in January 2012 (Counterfeiting, Trademark Infringement, Unfair Competition)
  • EMC Corp. v. Promise Technology, Inc., Opposition No. 91201616 (TTAB 2011) (Trademark)
  • Cloverhill Pastry-Vend, LLC v. 10 Star Enterprises, Inc., Opposition No. 91181131 (TTAB) (Trademark)
  • ACT, Inc. v. ACT Certification, Opposition No. 91198246 (TTAB 2011) (opposition sustained) (Trademark)
  • Decho Corporation v. Mueller, Opposition No. 91183001 (TTAB 2011) (Trademark)
  • Ashley Furniture Inds. v. Laura Ashley, American Arbitration Association (AAA) Case No. 51133Y0105608 (Trademark, Breach of Contract)
  • RSA Security Inc. v. Cryptometrics Canada Inc., Canadian Opposition to Appl. No. 1,245,903 (won trademark Opposition) (Trademark)
  • Jerome Viger-Kohler v. Alexandre Cammas, Opposition No. 91192632 (TTAB 2010) (won Opposition against foreign applicant) (Trademark)
  • EMC Corporation v. EMC Telecom Corporation, Opposition No. 91191905 (TTAB 2009) (won Opposition) (Trademark)
  • VoiceCloud v. VMware, Inc., Opposition No. 91191589 (TTAB 2009) (Trademark)
  • Carnival plc v. Service Online LLC, WIPO Case No. D2009-1142 (WIPO, Panelist Savelieva) (Domain name transferred to client despite attempts by infringer to hide his identity, insist on right to file answer in Russian, and claim domain refers to geographic area and not to complainant's mark) (Internet, E-Commerce and Computer Technology)
  • RSA Security, Inc. v. WorldExtend, LLC, Opposition No. 91187455 (TTAB 2009) (Opposition is sustained and registration to applicant is refused) (Trademark)
  • RSA Security, Inc. v. Trilegiant Corporation, Opposition No. 91180355 (TTAB 2009) (Trademark)
  • EMC Corporation v. The American Society of American Engineers, Opposition No. 91182389 (TTAB 2009) (Opposition sustained) (Trademark)
  • EMC Corporation v. Proview Technology, Inc., Cancellation No. 92050001 (TTAB 2009) (Cancellation granted) (Trademark)
  • EMC Corporation v. Proview Electronics Co., Ltd., Cancellation No. 92050000 (TTAB 2009) (Cancellation granted) (Trademark)
  • Paxar Americas, Inc. v. SPX Corporation, Opposition No. 91173386 (TTAB 2009) (Trademark)
  • Paxar Americas, Inc. v. SPX Corporation, Cancellation No. 92046656 (TTAB 2009) (Trademark)
  • Paxar Corporation v. Kap Graphics, Case No. 1:1993-cv-05082 (N.D. Ill. 2009, Judge Bucklo) (Paxar awarded $2 million in damages plus attorneys' fees) (Patents)
  • Workhorse Custom Chassis, LLC v. Performance Specialists, LLC, Opposition No. 91184804 (TTAB 2009) (Opposition sustained) (Trademark)
  • Navistar International Corporation v. National Life Insurance Company, Opposition No. 91181921 (TTAB 2008) (Trademark)
  • Vulcan Golf, LLC v. Google, Inc. et al. (including Internet REIT), 552 F.Supp.2d 752 and 2008 WL 2959951 (N.D. Ill. 2008, Judge Manning) (Internet, E-Commerce and Computer Technology, Trademark Infringement)
  • EMC Corporation v. Triangle Medical Solutions, Opposition No. 91181803 (TTAB 2008) (Case settled, opposition dismissed without prejudice) (Trademark)
  • Internet REIT, Inc. v. Mighty Net, Inc., Cancellation No. 92048728 (TTAB 2008) (Trademark)
  • The Buona Companies, L.L.C. v. AFC Enterprises, Case No. 1:2008-cv-00757 (N.D. Ill. 2008, Judge Bucklo) (Trademark Infringement)
  • ACT, Inc. v. 9008 Group, Inc., Opposition No. 91181760 (TTAB 2008) (Applicant amended services) (Trademark)
  • Expedia, Inc. v. T W, Case No. FA0712001124315 (NAF 2008) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Santa Margherita v. Vintwood International, Case No. 1:2006-cv-05913 (N.D. Ill. 2007, Judge Gettleman) (Trade Dress)
  • Internet REIT, Inc. v. Gittoes, Cancellation No. 92047556 (TTAB 2007) (Cancellation granted) (Trademark)
  • Vanlines.com LLC v. Movers.com, Case No. 1:2006-cv-14250 (S.D.N.Y. 2007, Judge Chin) (Case dismissed) (Trade Dress)
  • Expedia, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0710001088989, FA0708001059641, FA0708001053504, FA0707001026464, FA0706001021106, FA0705000995669, FA0705000991075, FA0705000990335FA0704000970858, FA0704000954076, FA0702000925402, FA0701000903078, FA0701000904266, FA0701000881130, FA0701000882386, FA0612000873346, FA0612000873343, FA0612000864664 (NAF 2007) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc v. DRS Expired Domain, Case No. D2007-0808 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc (plaintiff in multiple cases for domain name infringement), Case Nos. FA0706000997910, FA0706001015446, FA0706000997970, FA0706000997916, FA0706000997973, FA0706001015100, FA070600097923, FA0706000997914, FA0706000997909 (NAF 2007) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc v. Sebastian Szerer, Case No. D2007-0807 (WIPO 2007) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Paxar Americas Inc. v. eNom Inc., 84 U.S.P.Q.2d 1730 (National Arbitration Forum 2007) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Evalue Technology, Opposition No. 91169415 (TTAB 2007) (Opposition sustained) (Trademark)
  • Cielo e Terr S.p.A. v. Blavod Extreme Spirits, Opposition No. 91172149 (TTAB 2007) (Proceeding dismissed with prejudice) (Trademark)
  • Popular Enterprises, LLC (plaintiff in multiple cases for domain name infringement), Case Nos. FA070100887642, FA070100890762, FA070100892424 (NAF 2007) (Internet, E-Commerce and Computer Technology)
  • Country Creations v. Banwart, Opposition No. 91173418 (TTAB 2007) (Proceeding dismissed with prejudice) (Trademark)
  • ACT, Inc. v. Destra Consulting, Opposition No. 91172433 (TTAB 2007) (Opposition sustained) (Trademark)
  • Expedia, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0611100839813, FA0611000836960, FA0611000831138, FA0610000827672, FA0610000819788, FA0610000823228, FA0610000817308, FA0610000817906, FA0610000817182, FA0608000775183, FA0607000744567, FA0606000728555, FA0606000728482, FA0605000713759, FA0605000713698, FA0605000713702, FA0603000669287, FA0602000638204, FA0602000638211, FA0601000619465, FA0602000637951, FA0512000612060, FA0512000610151, FA0612000612065, FA0512000612052, FA0512000608223(NAF 2006) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Popular Enterprises, LLC v. Sung-A Jang, Case No. FA0610000811921 (NAF 2006) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • The Happy Chef, Inc. v. Chefwear, Inc., Cancellation No. 92044105 (TTAB 2006) (Proceeding dismissed with prejudice) (Trademark)
  • Chefwear, Inc. v. Pierce Sales Co., Inc., Cancellation No. 92045880 (TTAB 2006) (Registration cancelled) (Trademark)
  • Fashion Seal v. Chefwear, Cancellation No. 92044193 (TTAB 2006) (Cancellation dismissed with prejudice) (Trademark)
  • Popular Enterprises, LLC v. Domainsource.com, Case No. FA0608000781931 (NAF 2006) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Paxar Americas, Inc. v. Zebra Technologies Corporation, Case No. 3:2003-cv-00142 (S.D. Ohio 2006, Judge Rice) (Trademark Infringement)
  • Expedia, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0508000538533, FA0507000520654, FA0507000518046, FA0504000465292, FA0505000482611, FA0504000467054, FA0503000442294, FA0502000429084, FA0412000381271 (NAF 2005) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Paxar Americas, Inc. v. Harvard Battery, Inc., Case No. 3:2005-cv-00080 (S.D. Ohio, Judge Rose) (General)
  • Monarch Marking Systems, Inc. v. Independent Machine Service of Minnesota, Inc., Case No. 3:2001-cv-00181 (S.D. Ohio 2001, Judge Rice, 2005) (JURY TRIAL) (Monarch awarded $3.35 million) (Unfair Competition, Patents)
  • Popular Enterprises, LLC v. Webcom Media Group, Case No. 3:2003-cv-00565 (E.D. Tenn. 2005, Judge Phillips) (Judgment for client after creating new 6th Cir. law on service of process) (Internet)
  • Monarch Marking Systems v. Koninklijke Ahold NV, Opposition No. 91123804 (TTAB 2005) (Opposition sustained) (Trademark)
  • Emachines, Inc. v. Samtack Computer, Opposition No. 91162784 (TTAB 2005) (Opposition sustained) (Trademark)
  • Expedia, Inc. v. PMH Capital Limited c/o Paul Hill, Case No. 442294 (National Arbitration Forum 2005) (Internet, E-Commerce and Computer Technology)
  • Expedia, Inc. v. Compaid, Case No. 520654 (National Arbitration Forum 2005) (Internet, E-Commerce and Computer Technology)
  • Ford Motor Co. v. Mill Supply, Inc., Case No. 2:2004-cv-71120 (E.D. Mich. 2005, Judge Cleland) (Keyword Advertising) (Trademark, Copyright, False Advertising)
  • Paxar Americas, Inc. f/k/a Monarch Marking Systems v. Cosco, Inc. d/b/a Garvey Office Products, Case No. 3:2003-cv-00245 (S.D. Ohio 2005, Judge Ovington) (Unfair Competition)
  • Gateway, Inc. v. Electric Power Research, Opposition No. 91162057 (TTAB 2005) (Opposition sustained) (Trademark)
  • Expedia, Inc. v. Leisure Tours Int'l c/o John Sullivan, Case No. 381271 (National Arbitration Forum 2005) (Internet, E-Commerce and Computer Technology)
  • Emachines, Inc. v. Overstock.com, Opposition No. 91163235 (TTAB 2005) (Defendant withdrew trademark application) (Trademark)
  • Baldwin Piano Inc. v. Deutsche Wurlitzer GmbH, 392 F.3d 881 (7th Cir. 2004, Judge Easterbrook) (Licensing)
  • Grand Vehicle Works Holdings Corp. v. Mill Supply, Inc., Case No. 1:2004-cv-01915 (N.D. Ill. 2004, Judge Conlon) (Trademark, Internet, E-Commerce and Computer Technology)
  • Expedia, Inc. v. Huang, Chen, Case No. FA0407000291451 (NAF 2004) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Emma J. Barkuloo Trust, Opposition No. 91115538 (TTAB 2004) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. Entridia Corporation, Opposition No. 91125577 (TTAB 2004) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. SWP Net Inc., Cancellation No. 92040500 (TTAB 2004) (Cancellation granted) (Trademark)
  • Expedia, Inc. v. Schiff, Karen L., Opposition No. 91154173 (TTAB 2004) (Case settled and dismissed without prejudice) (Trademark)
  • Gateway, Inc. v. Group III International Ltd., by assignment from Gateway Luggage Co., Inc., Cancellation No. 92042393 (TTAB 2004) (Registration cancelled) (Trademark)
  • Gateway, Inc. v. The Linksys Group, Inc., Opposition No. 91155818 (TTAB 2004) (Trademark)
  • Expedia, Inc. v. Jackson, Albert, Case No. FA0311000214461 (NAF 2004) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Expedia, Inc. v. Daniel Melnechuk, Cancellation No. 92040211 (TTAB 2003) (Case settled) (Trademark Infringement)
  • Popular Enterprises, LLC v. American Consumers First, Case No. D2003-0742 (WIPO 2003) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Expedia, Inc. v. Commerce Capital Group LLC, Opposition No. 91124292 (TTAB 2003) (Opposition sustained) (Trademark)
  • Expedia, Inc. v. Inceptor, Inc., Opposition No. 91152012 (TTAB 2003) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119728 (TTAB 2003) (Trademark)
  • Reiman Publications, LLC v. Alliant Foodservice, Inc., Opposition No. 91124811 (TTAB 2003) (Proceeding dismissed with prejudice) (Trademark)
  • Alliant Foodservice, Inc. v. Reiman Publications, L.L.C., Opposition No. 91121606 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Wireless Retail, Opposition No. 91156742 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Ishoni Networks, Opposition No. 91125572 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119791 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway Corp., Opposition No. 91121354 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119722 (TTAB 2003) (Trademark)
  • Netgateway Inc. v. Gateway, Inc., Cancellation No. 92031240 (TTAB 2003) (Proceeding dismissed with prejudice) (General)
  • Expedia, Inc. v. Richard Mandanice, Case No. FA0302000146598 (NAF 2003) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Workhorse Custom Chassis, LLC v. F. Barkow Inc., Cancellation No. 92040860 (TTAB 2003) (Trademark)
  • F. Barkow Inc. v. Workhorse Custom Chassis, Opposition No. 91120710 (TTAB 2003) (Proceeding dismissed with prejudice) (Trademark)
  • PepsiCo, Inc. v. National Beverage Corporation, Case No. 0:2002-cv-61074 (S.D. Fla. 2003, Judge Marra) (Trademark Infringement)
  • Gateway, Inc. v. International Data Group, Cancellation No. 92032845 (TTAB 2002) (Registration cancelled) (Trademark)
  • Gateway, Inc. v. New Gateway, Inc., Opposition No. 91151284 (TTAB 2002) (Opposition sustained) (Trademark)
  • Monarch Marking Systems v. Monarch Business Forms, Opposition No. 91108225 (TTAB 2002) (Opposition sustained) (Trademark)
  • Travelscape, Inc. v. Armament Systems and Procedures, Inc., Opposition No. 91124435 (TTAB 2002) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. MacChina LLC, Opposition No. 91123947 (Opposition sustained) (Trademark)
  • Monarch Marking Systems v. Moore North America, Opposition No. 91120982 (TTAB 2002) (Defendant abandoned application) (Trademark)
  • Gateway, Inc. v. Software Technologies, Opposition No. 91117912 (TTAB 2002) (Trademark)
  • Gateway, Inc. v. AFX Technology Group, Opposition No. 91120401 (TTAB 2001) (Opposition sustained) (Trademark)
  • OneTravel.com, Inc. v. Expedia, Inc., Opposition No. 91122036 (TTAB 2001) (Proceeding dismissed) (Trademark)
  • Blake Bookstaff, re Lifestyle Fascination, Inc. v. Innerwise, Inc., John Doe #1 d/b/a Popularcategories.com, and John Does # 2-10, Case No. 3:2001-cv-00646 (D. N.J. 2001 Judge Brown, Jr.) (Trademark)
  • Gateway, Inc. v. Ericsson Inc., Opposition No. 91121060 (TTAB 2001) (Opposition sustained) (Trademark)
  • John Zink Co. v. Zink, 241 F.3d 1256 (10th Cir. 2001, Judge Briscoe) (affirming award of attorneys' fees to John Zink Co.) (Trademark Infringement)
  • Gateway Systems, Inc. v. Gateway 2000, Inc., Opposition No. 91117634 (TTAB 2001) (Proceeding dismissed with prejudice) (Trademark)
  • Gateway, Inc. v. Gateway Systems, Inc., Case No. 1:200-cv-00316 (N.D. Ill. 2000, Judge Hibbler) (Trademark Infringement)
  • Chefwear, Inc. v. Success-Tailored Chefwear, Case No. 1:2000-cv-04607 (N.D. Ill. 2000, Judge Guzman) (Order of default judgment entered in favor of client, awarding injunctive relief, costs, disbursements and attorneys' fees) (General)
  • Abtrax Pharmaceutical Company d/b/a Summitt Hill Laboratories v. Freudenberg & Company, Freudenberg Nonwovens, LP and Ford Motor Company, Case No. 1:1996-cv-01208 (S.D.N.Y. 2000, Judge Batts) (Proceeding dismissed) (Trademark)
  • Case Corp. v. MTD Products, Inc., Case No. 2:2000-cv-01064 (E.D. Wis. 2000, Judge Clevert, Jr.) (General)
  • Gateway 2000, Inc. v. Softbahn, Inc., Opposition No. 91112204 (TTAB 2000) (Opposition sustained) (Trademark)
  • Bretford Mfg. v. Smith System Mfg. Co., 116 F.Supp.2d 951 (N.D. Ill. 2000, Judge Grady) (awarding client summary judgment) (Trade Dress Infringement)
  • Monarch Marking Systems v. GPOA, Cancellation No. 92029910 (TTAB 2000) (Cancellation granted) (Trademark)
  • Monarch Marking Systems v. Monarch Business Forms, Case No. 3:1998-cv-00415 (S.D. Ohio 1999, Judge Merz) (Trademark Infringement)
  • Gateway 2000, Inc. v. Stew Leonard's, Opposition No. 91104890 (TTAB 1999) (Opposition sustained) (Trademark)
  • Monarch Marking Systems v. Saramar Corporation, Opposition No. 91113544 (TTAB 1999) (Opposition sustained) (Trademark)
  • Sara Lee Corporation v. Alliant Foodservice, Inc., Opposition No. 91111615 (TTAB 1999) (Proceeding dismissed without prejudice) (Trademark)
  • Monarch Marking Systems v. Executone Information Systems, Inc., Opposition No. 91109730 (TTAB 1999) (Opposition sustained) (Trademark)
  • Monarch Marking Systems v. Ariel Corporation, Opposition No. 91110523 (TTAB 1999) (Opposition sustained) (Trademark)
  • Baxter International, Inc. v. Labrada Bodybuilding Nutrition, Inc., Opposition No. 91111280 (TTAB 1999) (Opposition sustained) (Trademark)
  • Matthew Klujian & Sons, Inc. v. Peter Klujian, Amie Klujian, Peter Klujian Carpet Company, Inc. and Klujian Carpets & Cleaning, Inc., Case No. 1:1997-cv-08071 (N.D. Ill. 1998, Judge Denlow) (Trademark)
  • Monarch Marking Systems v. Electronic Data Systems, Opposition No. 91108180 (TTAB 1998) (Opposition sustained) (Trademark)
  • Intel Corporation v. Advanced Micro Devices, Inc. and Cyrix Inc., Case No. 1:1997-cv-00118 (D. Del. 1997, Judge Longobardi) (Unfair Competition)
  • FASA Corp. v. Playmates Toys Inc., 108 F.3d 140 (7th Cir. 1997, Judge Wood) (Copyright Infringement)
  • Monarch Marking Systems v. Comtec Information Systems, Inc., Case No. 3:1996-cv-00398 (S.D. Ohio 1997, Judge Dlott) (Trademark Infringement)
  • Monarch Marking Systems v. Comtec Information Systems, Inc., Case No. 3:1996-cv-00405 (S.D. Ohio 1997, Judge Dlott) (Trademark Infringement)
  • H&R Block v. Ray L. Newlin, et al., Case No. 97-3349 (7th Cir. 1997) (Unfair Competition)
  • H&R Block v. Ray L. Newlin, et al., 1996 WL 914126 (N.D. Ind. 1996, Judge Rodovich) (Unfair Competition)
  • Holiday Inns, Inc. v. 800 Reservation, Inc., Earthwinds Travel, Inc. d/b/a Earthwinds Travel Agency, and Call Management Systems, Inc., 86 F.3d 619 (6th Cir. 1996, Judge Daughtrey) (Trademark)
  • Harmony Gold U.S.A. Inc. v. FASA Corp., 40 U.S.P.Q.2d 1057 (N.D. Ill. 1996, Judge Andersen) (Copyright Infringement)
  • Sea World, Inc. v. Mary Ann Brown d/b/a Undersea World, Case No. 3:1996-cv-00391 (N.D. Cal. 1996, Judge Orrick) (General)
  • Monarch Marking Systems Inc. v. Elan Systems Inc., 39 U.S.P.Q.2d 1032 (TTAB 1996, Rice, Seeherman and Hanak) (Trademark)
  • Monarch Marking Systems v. Dynabyte, Opposition No. 91070813 (TTAB 1985) (Opposition sustained) (Trademark)
  • FASA Corp. v. Playmates Toys Inc., 869 F.Supp. 1334 (N.D. Ill. 1994, Judge Castillo) (Trade Dress)
  • Independent Machine v. Monarch Marking Systems, Opposition No. 91090232 (TTAB 1994) (Trademark Infringement)
  • Monarch Marking Systems v. C & D Charter Power Systems, Inc., Opposition No. 91091723 (TTAB 1994) (Opposition sustained) (Trademark)
  • Independent Machine v. Monarch Marking Systems, Opposition No. 91087759 (TTAB 1994) (Trademark Infringement)
  • Independent Machine v. Monarch Marking Systems, Opposition No. 91089994 (TTAB 1994) (Trademark Infringement)
  • Monarch Marking Systems v. Corometrics Medical Systems, Inc., Cancellation No. 92019434 (TTAB 1994) (Defendant consented to amend application) (Trademark)
  • Melvin C. Dill v. Monarch Marking Systems, Opposition No. 91088566 (TTAB 1994) (Proceeding dismissed with prejudice) (Trademark)
  • Monarch Marking Systems v. Melvin C. Dill, Case No. 3:1991-cv-00484 (S.D. Ohio 1993, Judge Rice) (Trademark)
  • Monarch Marking Systems v. Syntellect, Inc., Opposition No. 91085723 (TTAB 1993) (Opposition sustained) (General)
  • Monarch Marking Systems v. Mason Marking Systems Corporation, Opposition No. 91086692 (TTAB 1993) (Defendant amended application) (Trademark)
  • Monarch Marking Systems v. Monarch Software, Inc., Opposition No. 91086526 (TTAB 1992) (Opposition sustained) (Trademark)
  • Encyclopaedia Britannica, Inc. v. CFL Knowledge Systems, Inc., Opposition No. 91086888 (TTAB 1992) (Trademark)
  • Monarch Marking Systems v. Hillary Software, Opposition No. 91079415 (TTAB 1992) (Trademark)
  • Monarch Marking Systems v. Pathfinder Vue-File System, Cancellation No. 92018705 (TTAB 1991) (Cancellation granted) (Trademark)
  • Monarch Marking Systems v. Dialcon, Opposition No. 91080640 (TTAB 1990) (Trademark)
  • Monarch Marking Systems v. Alan D. Zielinski d/b/a Skillmaster, Opposition No. 91081341 (TTAB 1990) (General)
  • John Zink Company v. Zinkco, Case Nos. 88-1560 and 88-1665 (10th Cir. 1990, Judges Anderson, Baldock and Greene) (TrademarkDeceptive Trade)
  • Monarch Marking Systems v. Monarch Press, Inc., Opposition No. 91080749 (TTAB 1989) (Defendant abandoned application) (Trademark)
  • Monarch Marking Systems v. Pathfinder Graphics Associates, Opposition No. 91077018 (TTAB 1989) (Opposition sustained) (Trademark)

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ADR

  • Buntrock v. Terra (Terra Museum), et al. , Case No. 00 CH 13859 (Circuit Court of Cook County, Judge Kinnaird); 151 F.Supp.2d 931 (N.D. Ill. 2003, Judge Bucklo); 348 Ill. App. 3d 875 (2004) (Trustee Mismanagement)

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Professional Activities

  • Chicago-Paris Sister Cities Committee : Chair
  • International Trademark Association : Member Legislation & Regulation Committee
  • AIPLA : Co-Chair of the Decisional Law subcommittee of AIPLA's Anti-Counterfeiting and Anti-Piracy Committee
  • ABA : Member; Former Chair Subcommittee on Foreign Trademark Law
  • L'Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) Trademark Harmonization Committee : U.S. Delegate
  • French-American Chamber of Commerce : Founder, Vice President and Past President
  • Intellectual Property Law Association of Chicago : Member; Former Board Member; Former Chair Internet Committee
  • Yale Law School Executive Committee : Former Vice President
  • Yale Law School Association in Chicago : Chair
  • Chicago Chapter of l'Ordre des Canardiers : Founder
  • DePaul University School of Law : Former Adjunct Professor

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Representative Publications

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Representative Presentations

  • "False Advertising: So Many Ways to Break Bad," IPLAC Law Symposium 2014, Chicago, IL (November 2014)
  • "Proving and Defending Damage Claims in Trademark Litigation," 55th Annual Intellectual Property Law Conference, John Marshall Law School, Chicago, IL (February 2011).
  • "Parallel Imports - the U.S. Perspective." INTA Annual Meeting, Berlin, Germany (May 2008).

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Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Tenth Circuit
  • U.S. Court of Appeals for the Eleventh Circuit
  • U.S. District Court for the Northern District of Illinois

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