David C. Hilliard

Phone: 312-554-7950

Email: dhilliard@pattishall.com

Bio

Education

  • University of Chicago (J.D.)
  • Tufts University (B.S.)

Bar Admissions

Illinois

Court Admissions

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Industry Expertise

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Honors & Awards

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Appeals

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Trials & Litigation

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ADR

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Expert Witness

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Representative Publications

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Representative Presentations

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David C. Hilliard

''Seasoned trial attorney David Hilliard is a font of branding expertise. From quashing trademark infringements to safeguarding designs and handling anti-counterfeiting suits, he has done it all in the courtroom.''

''David Hilliard has been recognized as one of the Top 100 Super Lawyers in Illinois for nine years.''


''David Hilliard is an 'incredibly smart, easy-going guy' according to sources. Clients draw upon his vast trademark and unfair competition knowledge in mediation and arbitration proceedings.''

David's clients come to him looking for a lawyer who can provide sound, cost-effective advice, but who also can orchestrate a month-long trial, provide credibility and insight as an expert witness, or bring stubborn parties to a settlement as a mediator. David's intellectual property cases have resulted in over 100 Federal Appellate and District Court opinions.

Intellectual Property Litigation

A former Managing Partner of the firm, David brings value through his wide experience as a trial lawyer in Intellectual Property matters of every description, from anti-counterfeiting and infringement, copyright, right of publicity, false advertising, design protection and brand plans to the intricacies of malpractice law. He has tried cases throughout the United States and has argued appeals in all but one of the U.S. Courts of Appeal. He protects iconic brands like FORD, PEPSI, GENERAL MOTORS, JAGUAR, NABISCO, BASF, CHRYSLER, H&R BLOCK, NORTHERN TRUST, AMERICAN MEDICAL ASSOCIATION, SUNLIFE OF CANADA and TIGER WOODS.

David is listed in The BEST LAWYERS IN AMERICA, has been recognized by The Legal 500 for his "longstanding track record of trial and appellate level matters" and by WTR 1000 as one of two Illinois "Luminaries." He is a Fellow, American College of Trial Lawyers and past Chair of the College's Courageous Advocacy Committee.

David's litigation highlights include:

  • Establishing the principles of "doctrinal moorings" and "inevitable confusion" in trademark cases for Sun Life of Canada and introducing the first "mystery shopper" survey as an innovative means of assuring survey trustworthiness.

  • For PepsiCo, launching more than sixty gray market goods cases that resulted in Federal Court opinions that helped define the standards for protection against gray market imports, and violations of the Tariff Act.

  • As lead counsel for Ford Motor Company, winning major cases in Asia, South America and the U.S. that shut down over fifty counterfeiters of Ford parts and helped establish many of the legal bases for anti-counterfeiting protection.

  • For Jaguar Motor Cars, closing down seventy-two infringers and stopping the Jacksonville Jaguars football team from using a leaping jaguar logo. See "How David C. Hilliard Got the Jacksonville Jaguars to Change Their Logo," Illinois Super Lawyers Magazine, 2011.

Expert Witness in Intellectual Property Cases

David often serves as an expert witness in major litigation for clients like TRAVELERS, MODERNICA, CHRYSLER, GENERAL MOTORS, HOOVER, BLUE SHIELD OF CALIFORNIA, KIMBERLY-CLARK and 3M. He served successfully as an expert for the Internal Revenue Service in a $425 million case involving evaluation of assets of the Carnation Company.

His credibility and insight as an expert witness benefit from his extensive experience as a writer and teacher in the field of intellectual property law. His publications include a treatise, Hilliard, Welch & Marvel, TRADEMARKS AND UNFAIR COMPETITION (Lexis Nexis, 8th ed. 2017), which has been cited and quoted by federal courts, and has been used by the Federal Judiciary to train federal judges in intellectual property law.

He has also served for many years as an Adjunct Professor at Northwestern Pritzker University School of Law and as a Lecturer on Advanced Trademark and Unfair Competition Law at the University of Chicago Law School. See An Economic Analysis of Brands. His law school text book, Hilliard, Welch & Widmaier, TRADEMARKS AND UNFAIR COMPETITION (Carolina Academic Press 11th edition, 2016), was cited and quoted by the United States Supreme Court (Moseley v. Victoria's Secret), and is used in over fifty law school courses nationally.

As an expert witness, David has often raised constitutional and other dispositive issues that have resulted in settlements resolving multi-million dollar litigation. In recent years alone, David has been an expert witness in six major intellectual property cases:

  • a reverse confusion case in Utah involving priority and abandonment issues;

  • a multi-million dollar insurance defense case in the state of Washington where he discovered that plaintiff's claims violated the public welfare clause of the Utah Code of Ethics for Engineers as well as the First Amendment of the U.S. Constitution pursuant to U.S. v. Alvarez, 132 S.Ct. 2537 and the Utah Supreme Court in Eldridge v. Johndrow, 345 P.3d 553;

  • a New York case where he launched an innovative "market survey" and established that plaintiffs' claims violated Article I of the U.S. Constitution pursuant to Bonito Boats, 489 U.S. 141 and Dastar 539 U.S. 23;

  • a Michigan case where plaintiffs' claims also violated Article I of the U.S. Constitution as well as the doctrine of fair use (in October 2016, $8.4 million was awarded after a nine day jury trial in Los Angeles in a separate parallel case in which defendant failed to raise David's Article 1 Constitutional defense);

  • a genericness case in Minnesota where David demonstrated on partial summary judgment that plaintiffs' claimed trademark was introduced in 2001 as a generic term and used exclusively that way for seven years. Further, David's surveys and historic analysis demonstrated to the court that no initially generic term has ever been "recaptured" as a trademark in the history of U.S. law. The case is ongoing and set for trial in 2017; and

  • trial testimony in a case in the U.S. District Court in Hawaii involving application of the USPTO rules for Supplemental Registrations and the U.S. Constitutional requirements for Use In Commerce.

Mediator and Arbitrator in Intellectual Property Cases

He has handled dozens of mediations and arbitrations, and is a CPR/INTA-certified mediator and arbitrator and a member of the American Academy of Alternative Dispute Resolution (AAADR). Here is how he describes his approach: "An expert decision-maker lets the parties focus on the nuances of their particular dispute, and get a result comparable to an appellate decision that might take years, and cost millions of dollars to reach." His role as an adjunct professor also helps here, but the life-lessons from serving the profession and community (noted below) may be more so.

One of his most challenging mediations was in the $750 million Terra Museum conflict with the State of Illinois. It generated coverage in the New York Times, Wall Street Journal and elsewhere. See The Art of Mediation: The Terra Museum War, ABA Landslide Magazine, July/August 2011.

Service to the Profession and Community

David's civic and professional leadership have strengthened his effectiveness as a lawyer, expert and mediator. In recent years, David received:

  • the Justice John Paul Stevens Award for "extraordinary integrity and service to the community throughout his career";

  • the Lawyers for the Creative Arts "Distinguished Service Award for Outstanding Contribution to the Arts"; and

  • an American College of Trial Lawyers Award for "Representing the College with Honor and Distinction."

He is past President of the Chicago Bar Association, and currently Chair of its Past Presidents Committee. He has served as President of the Lawyers Trust Fund of Illinois, the Legal Club, and the Wayfarers Club, and was a founding member of the Illinois Commission on the Rights of Women. He is a past Chair of the Visiting Committee of the University of Chicago Law School, and served as a Judge Advocate in the United States Navy under Admiral John S. McCain.

David is currently Chair of the Newberry Library of Chicago, a Trustee and former Vice-Chair of the Art Institute of Chicago, Chair of the School of the Art Institute of Chicago, Chair of the Art Institute's Sustaining Fellows, and President of the Auxiliary Board. He is currently Chair of the Art Institute's Ryerson and Burnham Libraries, and founding Chair of the Art Institute's Department of Architecture and Design. He was awarded the Institute's Benefactor of Architecture medal, and The Architecture and Design Society's "Lifetime Achievement Award" in 2014. David is President of the Rettinger Foundation and Director of the Allerton Endowment Fund.

David has served as a Director of the International Trademark Association and Chair of the Trademarks Division and a member of Council of the ABA Intellectual Property Law Section. He also chaired the Northwestern University Law School Annual Symposium on "Intellectual Property Law and the Corporate Client" for 20 years, and served as Editor-In-Chief of the Chicago Bar Record.

He was the founding Chair of the Young Lawyers Section of the Chicago Bar Association for which the Association established the David C. Hilliard Award given annually to the outstanding Section Committee Chair. See "A Cause for Celebration," Chicago Bar Record, May, 2011. David was recently named an "Honorary Young Lawyer in Perpetuity" by the Young Lawyers Section.

In 2014 he was profiled in a four-page article in Chicago Lawyer Magazine, see "Collecting to Give," and was honored last year by The University of Chicago Law School in an article entitled "Big Picture Litigator Takes Pride in Being Civic and Professional Leader.".

Industry Expertise

  • Automobiles & Components
  • Banks
  • Consumer Durables & Apparel
  • Energy
  • Food, Beverage & Tobacco
  • Health Care Equipment & Services
  • Hotels, Restaurants & Leisure
  • Household & Personal Products
  • Insurance
  • Media
  • Petroleum Industry
  • Pharmaceuticals & Biotechnology
  • Retailing
  • Software & Services
  • Technology Hardware & Equipment
  • Transportation

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Honors & Awards

  • 2018 The Best Lawyers in America® : Recognized in the fields of Litigation - Intellectual Property, and Trademark Law
  • 2017 Chambers USA-2017 : Honored as one of four Illinois "Senior Statesmen"
  • 2017 Chambers USA-2017 : "'Top practitioner' David Hilliard brings deep experience across the range of intellectual property proceedings, both acting as a mediator in alternative dispute resolution settlements and defending major international brands in courtroom litigation."
  • 2017 IP Stars, Managing Intellectual Property Magazine : Selected as an "IP Star"
  • 2017 Who's Who Legal: Trademarks 2017 : One of the world's leading Trademark lawyers
  • 2017 World Trademark Review (WTR) 1000 : Honored as one of two Illinois "Luminaries"
  • 2017 World Trademark Review (WTR) 1000 : "Seasoned trial attorney David Hilliard is a font of branding expertise. From quashing trademark infringements to safeguarding designs and handling anti-counterfeiting suits, he has done it all in the courtroom."
  • 2017 CPR-INTA Distinguished Panel of ADR Neutrals : Member since 1992
  • 2017 American College of Trial Lawyers : Fellow
  • 2017 World Intellectual Property Review (WIPR) : Chosen as a WIPR Leader in Illinois
  • 2016 Thomson Reuters : Recognized as one of the Top 100 Super Lawyers in Illinois for nine years, the only Intellectual Property lawyer so honored
  • 2016 Chambers USA-2016 : "David Hilliard is an 'incredibly smart, easy-going guy' according to sources. Clients draw upon his vast trademark and unfair competition knowledge in mediation and arbitration proceedings."
  • 2016 Leading Lawyers : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law and Advertising & Media Law for the State of Illinois
  • 2016 World Trademark Review (WTR) 1000 : "David Hilliard is a safe pair of hands for multi-million dollar trials."
  • 2016 Best Lawyers in America : One of the Best Lawyers in America for 25 years in the practice areas of Litigation-Intellectual Property and Trademark Law
  • 2016 Litigation Counsel of America : Fellow
  • 2016 Marquis Who's Who in the World : Recognized
  • 2015 World Trademark Review (WTR) 1000 : "David Hilliard is the firm's most experienced conflict resolution sage, whose performances before juries are especially acclaimed."
  • 2014 The Legal 500 United States : "David Hilliard has a longstanding track record of trial and appellate level matters."
  • 2014 Chambers USA-2014 : "David Hilliard is everything an IP attorney should be. He is a respected arbitrator, mediator and expert witness."
  • 2013 Best Lawyers : Honored David as the Chicago Intellectual Property Law "Lawyer of the Year"
  • 2013 US News and World Report : Recognized David as a First Tier lawyer for Intellectual Property Litigation and Trademark Law
  • 2012 Chambers USA-The Client's Guide : "David Hilliard is a trial lawyer with extensive experience in matters ranging from anticounterfeiting to false advertising to brand protection."
  • 2012 The Legal 500 United States : Recommended for his experience in anti-counterfeiting and trade dress disputes.
  • 2011 Chambers USA-The Client's Guide : "David Hilliard is a senior partner and hugely experienced figure. He handles all manner of IP matters and recently represented PepsiCo in several trademark infringement cases."
  • 2011 The Legal 500 United States : "David Hilliard is a long standing figure in trademark litigation, with extensive trial and appellate experience, and is notable for representing Ford Motor Company and PepsiCo."
  • 2010 The Legal 500 United States : "David Hilliard represented PepsiCo across a wide range of federal court jurisdictions, having also previously protected iconic brands like Ford, BASF, Encyclopaedia Britannica and the American Medical Association."

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Appeals

  • Robert J. Corr v. PepsiCo, Inc., et al., Case No. 105823 (Il. Sup. Ct. 2008) Case Nos. 06-2251, 07-0004, 07-1277 (Ill Appl. Ct. 1st Dist.) (affirming dismissal of six trademark and fraud claims brought against PepsiCo) (Trademark Infringement)
  • Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002, Judges Flaum, Bauer and Evans) (Trademark Infringement)
  • 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)
  • FASA Corp. v. Playmates Toys Inc., 108 F.3d 140 (7th Cir. 1997, Judge Wood) (Copyright Infringement)
  • H&R Block v. Ray L. Newlin, et al., Case No. 97-3349 (7th Cir. 1997) (Unfair Competition)
  • SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F.3d 1325 (11th Cir. 1996, Judges Carnes), 117 S.Ct. 79 (U.S. Sup. Ct., cert. denied 1996) (Trademark Infringement)
  • Libman Co. v. Vining Industries Inc., 69 F.3d 1360 (7th Cir., Judges Posner, Bauer and Coffee) (cert. denied, 116 S.Ct. 1878 (1996)) (Trade Dress)
  • Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995, Judges Cummings, Rovner and Bauer) (Trade Dress, Patents)
  • Shelby v. Ford Motor Co., Case Nos. 93-56280 and 93-56285 (9th Cir. 1995, Judges Wallace, Hug and Hawkins) (Unfair Competition)
  • Ford Motor Co. v. Cook, 53 F.3d 333 (7th Cir. 1995, Judges Easterbrook, Ripple and Rovner) (Deceptive Trade)
  • Gilbert/Robinson Inc. v. Carrie Beverage-Missouri Inc., 989 F.2d 985 (8th Cir. 1993, Judge Loken) (Unfair Competition)
  • SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 24 U.S.P.Q.2d 1505 (11th Cir. 1992, Judges Hill, Eschbach and Birch) (Trademark Infringement)
  • Galaxy Chemical Co. v. BASF, 968 F.2d 1218 (7th Cir. 1992, Judges Coffee, Kanne and Esbach) (Unfair Competition)
  • The Scotch Whisky Association v. Majestic Distilling Co. Inc., 958 F.2d 594 (4th Cir. 1992, Judge Sprouse) (Unfair Competition)
  • The Scotch Whisky Association v. United States Distilled Products Co., 952 F.2d 1317 (Fed. Cir. 1991, Judge Rich) (Unfair Competition)
  • Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277 (3d Cir. 1991, Judges Cowen, Alito and Garth), 112 S.Ct. 373 (U.S. Sup. Ct., cert. denied 1991) (Copyright Infringement)

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Trials & Litigation

  • Royal Purple, LLC v. David Ward et al, Case No. 4:13-cv-03271 (S.D. Texas, June 2016, Judge Atlas) (Trade Secret, Trademark Infringement, RICO)
  • American Fidelity Assurance Co. v. American Fidelity Financial Services, Inc., Case No. 1:14-cv-07747 (N.D. Ill. 2014, Judge Zagel) (Trademark Infringement)
  • Dyson, Inc. v. Bissell Home Care, Inc., 1:2010-cv-08126 (N.D. Ill. 2013, Judge Der-Yeghiayan) (False Advertising)
  • PepsiCo, Inc. v. Ram Traders, Ltd., 2013 WL 100769 (D. Nev. 2013, Judge Mahan) (Trademark Infringement, Unfair Competition, Trademark Dilution)
  • Shield Technologies Corp. v. Paradigm Positioning, et al., Case No. 1:11-cv-06183 (N.D. Ill. 2013, Judge Grady) (granting joint motion of dismissal pursuant to settlement) (Breach of Contract)
  • PepsiCo, Inc. and Frito-Lay North America, Inc. v. U.S. Global Import, Inc., Case No. 2:12-cv-00119 (C.D. Cal. 2012, Judge King) (Trademark Infringement, Unfair Competition, Trademark Dilution)
  • PepsiCo, Inc. v. GFI Developers, LLC, Case No. 2:11-cv-09987 (C.D. Cal. 2012, Judge Nguyen) (Trademark Infringement, Gray Market Goods)
  • PepsiCo, Inc. v. Castillo, Case No. 1:2011-cv-03717 (S.D.N.Y. 2011, Judge Cote) (Trademark Infringement, Gray Market Goods)
  • Givens v. American College of Trial Lawyers, Case No. 1:2009-cv-00074 (M.D. Ala. 2009, Judge Walker) (Summary Judgment 2010, settlement, 2011) (Internet, E-Commerce and Computer Technology)
  • PepsiCo, Inc. and Frito-Lay North America, Inc. v. Mike's Novelties, Inc., et al., Case No. 4:10-cv-03901 (S.D. Tex 2010, Judge Rosenthal) (Successfully obtained judgment finding trademark infringement and unfair competition, resulting in permanent injunction that stopped defendant wholesaler's infringing sales and distribution of unauthorized "can safe" products manufactured from altered PepsiCo and Frito-Lay product containers) (Trademark)
  • PepsiCo, Inc. v. Outrageous Ventures, Inc. and PrankPlace.com, LLC, Case No. 3:10-cv-01309 (D. Conn. 2010, Judge Underhill) (Litigated case through favorable settlement that stopped all manufacture and sales of beer can wraps bearing trademarks and trade dress confusingly similar to PepsiCo's PEPSI and MOUNTAIN DEW marks and trade dress) (Trademark, Trade Dress)
  • Corr v. Pepsico, Inc., Case No. 05 L 001785 (Cir. Ct. of Cook Cty, Ill., 2009, Judge Goldberg) (Pepsico awarded attorneys fees) (Trademark)
  • Georgia-Pacific Consumer Products, LP v. Nextep, Inc. and Samuel L. Paul, Case No. 1:2008-cv-00567 (S.D. Ohio 2009, Judge Barrett) (Unfair Competition)
  • 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)
  • American College of Trial Lawyers v. Givens, John, Case No. D2008-1813 (WIPO 2009) (Internet, E-Commerce and Computer Technology)
  • Craftsmen Limousine, Inc. v. Ford Motor Co., 2005 WL 2321662 (W.D. Mo. 2008, Judge Whipple) (JURY TRIAL) (Unfair Competition, Trade Dress)
  • Pepsico, Inc. et al v. Irie Motivations, Inc. et al, Case No. 2:2008-cv-02242 (C.D. Cal. 2008, Judge Lew) (Pepsico awarded $168,000 in damages plus attorneys' fees) (Trademark Infringement)
  • Ford Motor Company v. Bhuvaneshwari Foundry, Opposition No. AMD-56686 (Trade Marks Registry, Ahmedabad, India, 2008) (Ford trademark held to be a "well known mark in relation to any goods or services," the leading famous mark case in India) (Trademark)
  • Northern Trust Co. v. J.P. Morgan Chase, Case No. 1:2008-cv-00297 (N.D. Ill. 2008, Judge Hart) (preliminary injunction) (Trademark Infringement)
  • PepsiCo, Inc. v. Los Potros Distribution Center, LLC, 2008 WL 2225752 (D. Ariz. 2008, Judge Campbell) (PepsiCo awarded $95,000 in damages plus attorneys' fees) (Trademark Infringement)
  • PepsiCo, Inc. v. #1 Wholesale, LLC, Lime Lite Fashions Inc. and Sahni Enterprises Inc., 84 U.S.P.Q.2d 1040 (N.D. Ga. 2007, Judge Batten) (PepsiCo awarded temporary restraining order, injunction, recall and damages) (Trademark Infringement)
  • Ford Motor Co. v. Izachak Levy et al., Case No. 1:2004-cv-08356 (N.D. Ill 2007, Judge St. Eve) (Ford awarded injunction and damages) (Anti-counterfeiting, Trademark Infringement)
  • 300 Below v. Benelli USA Corp. (Beretta), Case No. 2:2006-cv-02056 (C.D. Ill. 2006, Judge McCuskey) (Trademark Infringement)
  • 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)
  • Ford Motor Co. v. Money Makers Automotive Surplus, Inc., 2005 WL 2464715 (D. Neb. 2007, Judge Bataillon) (Ford awarded $5 million in damages) (Counterfeiting, Trademark Infringement, Trade Dress Infringement)
  • PepsiCo, Inc. v. California Security Cans, 238 F.Supp.2d 1172 (C.D. Cal. 2002, Judge Manella) (PepsiCo awarded permanent injunction and $250,000 in liquidated damages) (Trademark Infringement, Trade Dress Infringement)
  • General Motors Corp. v. Fishcar Ltd, et al, Case no. 1:2001-cv-08296 (N.D. Ill., Judge Shadur) (Trademark Infringement)
  • American Medical Association v. American Suzuki Motor Corp., Case No. 2:1999-cv-13205 (C.D. Cal. 2000, Judge Manella) (Copyright Infringement)
  • Ford Motor Co. v. Ford Financial Solutions Inc., 55 U.S.P.Q.2d 1217 (N.D. Iowa 2000, Judge McManus) (Trademark Infringement)
  • Encyclopaedia Britannica, Inc. v. Britannica Home Fashions, Inc., Case No. 1:1998-cv-05689 (S.D.N.Y. 1999, Judge Patterson) (Internet, E-Commerce and Computer Technology)
  • PepsiCo, Inc. v. Triunfo-Mex, Inc.,, 189 F.R.D. 431 (C.D. Cal. 1999, Judge Paez) (PepsiCo awarded $60,000 in damages plus attorneys' fees) (Trademark Infringement)
  • S Industries, Inc. v. Diamond Multimedia Systems, Inc., 17 F.Supp.2d 775 (N.D. Ill. 1998, Judge Andersen) (Internet, E-Commerce and Computer Technology)
  • Sun Life Assurance Co. of Canada v. SunAmerica Inc., 45 U.S.P.Q.2d 1621 (N.D. Ga. 1997, Judge Camp) (Trademark Infringement); see also 890 F.Supp. 1559 (N.D. Ga. 1994, Judge Camp) (Summary Judgment, Trademark Infringement)
  • Thomas & Betts Corp. v. Panduit Corp., 172 F.R.D. 379, 940 F.Supp. 1337 and 935 F.Supp. 1399 (N.D. Ill. 1997 and 1996, Judge Denlow) (summary judgment) (Trade Dress, Patents)
  • H&R Block v. Ray L. Newlin, et al., 1996 WL 914126 (N.D. Ind. 1996, Judge Rodovich) (Unfair Competition)
  • Nabisco Inc. v. Wm. Wrigley Jr. Co., 40 U.S.P.Q.2d 1251 (TTAB 1995, Simms, Cissel and Seeherman) (Trademark Infringement)
  • Jaguar Cars Ltd. v. National Football League, 886 F.Supp. 335 (S.D.N.Y. 1995, Judge Sotomayor) (Unfair Competition)
  • FASA Corp. v. Playmates Toys Inc., 869 F.Supp. 1334 (N.D. Ill. 1994, Judge Castillo) (Trade Dress)
  • Ford Motor Co. v. Summit Motor Products, Inc. and Altran, Inc., Case No. 2:1984-cv-01978 (D. N.J. 1993, Judge Politan) (JURY TRIAL) (Copyright Infringement)
  • Dr. Pepper Bottling Co. of Texas v. Del Monte Corp., 26 U.S.P.Q.2d 1141 and 25 U.S.P.Q.2d 1217 (N.D. Tex. 1993 and 1992, Judge Fitzwater) (JURY TRIAL) (Licensing)
  • Ford Motor Co. v. Keystone Automotive Industries, 23 U.S.P.Q.2d 1478 (E.D. Mich. 1992, Judge Kohn) (Ford awarded $1.8 million) (Copyright Infringement, False Advertising)
  • Galaxy Chemical Co. Inc. v. BASF Corp., 20 U.S.P.Q.2d 1555 (N.D. Ill. 1991, Judge Holderman) (JURY TRIAL) (Unfair Competition)
  • Plasticolor Molded Products Inc. v. Ford Motor Co., 767 F.Supp. 1036 (C.D. Cal. 1991, Judge Kozinski) (Trademark Infringement)
  • Gilbert/Robinson Inc. v. Carrie Beverage-Missouri Inc., 758 F.Supp. 512 (E.D. Mo. 1991, Judge Limbaugh) (JURY TRIAL) (Unfair Competition)
  • Ford Motor Company v. GMB Universal Joints, Case No. C578949 (C.D. Cal. 1991, Judge Hauck) (JURY TRIAL) (Ford awarded $1.25 million) (Copyright Infringement)
  • Ford Motor Co. v. Summit Motor Products, Inc. and Altran, Inc., Case No. 2:1984-cv-01978 (D. N.J. 1990, Judge Politan) (JURY TRIAL) (Copyright, Trademark Infringement)
  • Frito-Lay, Inc. v. The Bachman Company, Case No. 83-CIV-4484 (S.D.N.Y. 1990, Judge Cedarbaum) (Copyright Infringement)
  • Ford Motor Co. v. Kuan Tong Industrial Co., Ltd., 697 F.Supp. 1108 (N.D. Cal. 1990, Judge Williams) (preliminary injunction; Ford awarded treble damages and attorneys' fees of $2.964 million) (Trademark)

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ADR

  • Unity Health Plans Ins. Co. v. Iowa Health System d/b/a Unity Point Health, Case No. 13-cv-845-WRC (W.D. Wisc, 2014, Judge Conley) (Trademark Infringement)
  • On Site Energy Company, Inc. v. MTU Onsite Energy Corp., Case No. 2:10-cv-01671 (E.D. N.Y. 2014, Judge Seybert) (Trademark Infringement)
  • Talon International, Inc. v. Adidas America, Inc., Case No. 2:12-cv-02572 (C.D. Cal. 2013, Judge Feess) (Trademark Infringement, Reverse Confusion, Surveys)
  • American National Insurance Company v. American National Investment Advisors, LLC, Case No. 1:2011-cv-04016 (N.D. Ill. 2012, Judge Coleman) (Trademark Infringement)
  • Polymer Group, Inc. et al v. Magla Products LLC et al, Case No. 3:2010-cv-00288 (W.D.N.C. 2012, Judge Cogburn) (Trademark, Trade Dress, Patents)
  • Ugglebo Clogs, LLC v. Deckers Outdoor Corp., Case No. 0:2011-cv-00213 (D. Minn. 2012, Judge Schiltz) (Trademark Infringement)
  • University of Nebraska v. Chase Bank USA, N.A. (National Arbitration Forum, 2011) (Trademark Infringement, Breach of Contract)
  • J. P. Cooke v. Schwabb (Dist. Neb., 2010) (Cybersquatting, Keyword Infringement)
  • Schwabb v. J. P. Cooke (E.D. Wisc., 2010) (Trade Libel, Disparagement)
  • University Healthsystem Consortium v. Northshore University HealthSystem, Case No. 1:2009-cv-05000 (N.D. Ill. 2009, Judge Bucklo) (Trademark Infringement)
  • SPSS, Inc. v. Nie et al., Case No. 1:08-cv-00066 (N.D. Ill. 2009, Judge Darrah) (Contracts, Licensing)
  • Implant Innovations, Inc. v. Debbie, LLC, Bicon, LLC, Bicon International, Inc., Case No. 9:06-cv-80913-DTKH (S.D. Fla., Judge Hurley) (Trademark Infringement)
  • After Hours Formal Wear, Inc. v. Tuxedos, Inc., Case No. 06-cv-2460 (N.D. Ill. 2009, Judge Guzman) (Unfair Competition)
  • The Doctors Company v. Florida Doctors Insurance Company, Case No. 3:06-cv-00481 (M.D. Fla. 2005, Judge Covington) (Trademark Infringement)
  • Payless Shoe Source Worldwide, Inc. v. Target Corporation and Target Brands, Inc., Case No. 5:05-4023-JAR (D. Kan., Judge Robinson) (Unfair Competition)
  • 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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Expert Witness

  • Fundme.com v. Gofundme, Inc., Case No. 2:16-cv-00104-DN (D. Utah, Judge Nuffer) (Priority, Abandonment, Reverse Confusion)
  • Select Comfort Corporation v. BAXTER, et al., Case No. 0:12-cv-02899 (D. Minn., Judge Frank) (a partial summary judgment has been granted and the case is set for trial in 2017) (Genericness)
  • LifeLast, Inc. v. Travelers Indemnity Co., Case No. 2:14-cv-01031 (W.D. Wash. 2015, Judge Robart) (Disparagement, Engineering Standards, First Amendment)
  • Herman Miller, Inc. v. Modernica, Inc., Case No. 1:14-cv-00161 (W.D. Mich. 2015, Judge Ellen Carmody) (Right of Publicity)
  • The George Nelson Foundation v. Modernica, Inc., Case No. 1:13-cv-03427 (S.D. N.Y. 2015, Judge Baylson) (Trademark, Constitutionality)
  • Unitek Solvent Services, Inc. v. Chrysler Group LLC, Case No. 1:12-cv-00704 (D. Hawaii 2013, Judge Watson) (Genericness, Descriptiveness, Federal Question)
  • Spin Master, Ltd., et al., v. Zobmondo Entertainment, LLC v. Howard & Howard, et al., Case No. cv-06-3456 ABC(JTLx) consolidated with CV07-0471 ABC(JTLx) (C.D. Calif. 2013, Judge Collins) (Insurance, Malpractice)
  • Chrysler Group LLC v. Moda Group, LLC, et al., Case No. 2:11-cv-11074 (E.D. Michigan, 2012, Judge Tarnow) (Trademark, Unfair Competition)
  • Douglas Press, Inc. v. Kaplan, 207 Ill. 2d 599 (Circuit Court of Cook County, Illinois 2008) (JURY TRIAL) (Malpractice, Insurance)
  • AcademyOne, Inc. v. CollegeSource, Inc., Case No. 2:2008-cv-05707 (E.D. Penn. 2009, Judge Padova) (Trademark, Domain Name, Surveys)
  • Georgia-Pacific Consumer Products LP v. Kimberly Clark Corporation, et al., Case No. 09-cv-2263 (N.D. Ill. 2009, Judge Kendall) (Trade Dress, Patents)
  • 3M Company v. Vita Zahnfabrik H. Rauter GmbH & Co., KG and Vident, Inc., Case No. 0:2006-cv-04564 (D. Minn. 2008, Judge Doty) (Trademark Infringement, USPTO)
  • California Physician's Service, d/b/a Blue Shield of California v. Blue Cross Blue Shield Association (California Arbitration, 2007) (Advertising)
  • Klein-Becker, USA, LLC v. Allergan, Inc., Case No. 2:2003-cv-00514 (D. Utah 2007, Judge Benson) (Unfair Competition, Genericness)
  • Vital Pharmaceuticals, Inc. (VPX Sports) v. American Body Building Products, LLC, Case No. 0:2006-cv-60633 (S.D. Fla. 2007, Judge Middlebrooks) (Malpractice)
  • Powerhouse Marks, L.L.C. and Powerhouse Licensing, L.L.C. v. Chi Hsin Impex, Inc., Case No. 2:2004-cv-73923 (E.D. Mich. 2006, Judge Duggan) (Unfair Competition)
  • General Motors Corporation v. Avanti Motors, Case No. 5:2003-cv-60034 (E.D. Mich. 2003, Judge Battani) (Trade Dress, Surveys)
  • Breuer Electric Mfg. Co. (d/b/a Breuer/Tornado Corporation) v. The Hoover Company, 1998 U.S. Dist. LEXIS 11613 (N.D. Ill. 2002, Judge Gottschall) (JURY TRIAL) (Trade Dress)
  • Nestlé Holdings, Inc. v. Commissioner of Internal Revenue Service, Docket No. 021562-90 (U.S. Tax Court 2000) (Trademark Valuation)

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Representative Publications

  • Co-Author of a treatise: Hilliard, Welch & Marvel, Trademarks and Unfair Competition (8th edition, 2017, Lexis Nexis); on-line edition (2017, Lexis Nexis).
  • Co-Author of more than a dozen Law School coursebooks, including: Trademarks, Trade Identity and Unfair Trade Practices; and Unfair Competition and Unfair Trade Practices; Trademarks; Hilliard, Welch & Widmaier, Trademarks and Unfair Competition (11th edition (2016, Carolina Academic Press))
  • Co-author of "Trademark Registration and Administrative Proceedings" (2017 Lexis Nexis)
  • Co-Author of "Jurisdiction & Remedies" (2015 Lexis Nexis).
  • Co-Author of "Trade Dress and the Boundaries of Trademark Protection" (102 pages) (2012 Lexis Nexis).
  • "The Art of Mediation: The Terra Museum War," ABA Landslide Magazine (July/August, 2011).
  • Co-Author of "Bose v. Hexawave and the TTAB exceptions to Medinol" (2009 Lexis Nexis).
  • Trials-A First Class Standard of Firstness, Illinois CLE Course on Trial Practice, 2009.
  • "Global Trademarks and Unfair Competition," 157 pages, Ford Global Summit, Detroit, MI, 2006.
  • "Trademark, Copyright and FTC Issues in E-Commerce, " Northwestern University Corporate Counsel Institute, Chicago, IL, 2000, and San Francisco, CA, 2001.
  • "The End of an Era: Trademarks and Unfair Competition," Houston Intellectual Property Association and University of Houston Law Center Institute for Intellectual Property & Information Law, Galveston, TX, 2000.
  • "Trademark and Service Mark Protection: Negotiating and Enforcing Licensing Agreements" ACCA Seminar, Chicago, IL, 1997.
  • "Surveys and Expert Witnesses" in Trademark Law Developments, University of Houston Law Center, New Orleans, LA, 1994.
  • "Franchise Termination Litigation: The Precedence of Trademark Law," in Successful Trademark Licensing and Franchising, International Trademark Association, 1993.
  • "The Effective Use of Surveys and Expert Witnesses in Bench and Jury Trials," Oregon Patent Law Association, Portland, OR, 1991.
  • "Fungible Trademarks-Plasticolor v. Ford," Texas Intellectual Property Law Institute, San Antonio, TX; published 1991.

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Representative Presentations

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Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Fifth Circuit
  • 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 Eighth Circuit
  • U.S. Court of Appeals for the Ninth 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
  • Supreme Court of Illinois

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