Janet A. Marvel

Phone: 312-554-7957

Email: jmarvel@pattishall.com

Bio

Education

  • University of Michigan Law School (J.D., 1989)
  • Indiana University (B.A., 1983, Phi Beta Kappa)

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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Professional Activities

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Representative Publications

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Representative Presentations

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Janet A. Marvel

''Janet Marvel can handle any trademark matter under the sun; she has 'a stellar reputation and is terrific with clients.'''

''She really makes very sound, rational judgments about what we need to do-it's pretty remarkable; she's always correct.''



Pattishall partner Janet Marvel protects brands, copyrighted works and domain names throughout the world. She has been charged with protecting the trademarks of many world-famous brands, such as Ford, Pepsi, Harlequin (romance novels) and Mattel. She even protects the famous CHEESEHEAD hat, on view every Sunday of the NFL season when the Packers play.

As part of her practice, Janet represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country, in state and federal courts and before the United States Patent and Trademark Office. In a notable case, she successfully defended a small company's ownership of the BRAWNY mark for plastic bags against an all-out attack in two federal courts and the TTAB. She also developed expert testimony for the Internal Revenue Service in a $262 million case involving evaluation of assets of the Carnation Company. She handled the acquisition of the famous CURAD mark.

Janet writes the comprehensive treatise Hilliard, Welch & Marvel, Trademarks and Unfair Competition (8th edition, 2017, Lexis Nexis); on-line edition (2017, Lexis Nexis). She has been an adjunct professor at Northwestern School of Law and teaches classes at Chicago Kent College of Law and the University of Chicago Law School. Janet has served for many years alongside federal district court judges as a Judge of the International Trademark Association Saul Lefkowitz Moot Court Competition.

Janet has developed comprehensive five-year brand plans for all of the major divisions of Ford Motor Company and for Mattel. She's handled all the brand needs for Medline Industries, Inc., an over $8 billion a year medical products company. She has developed and runs worldwide anti-counterfeiting programs for large clients. In the U.S. she has worked closely with police to raid defendants' warehouses and obtain felony convictions for sellers of counterfeit Ford parts. She has in-depth knowledge of the use of Chinese copyright law and Chinese Customs enforcement.

When she is not working, you will probably find Janet hiking -- often north of the Arctic Circle. Janet's travel has included backpacking trips to Canada's Ellesmere Island (at 80 degrees north latitude, accessible just 3 weeks a year), Gates of the Arctic National Park and the Arctic National Wildlife Refuge.

Janet also serves on the Textile Committee of the Art Institute of Chicago, which she says has given her fascinating insights into the art world.

After graduating Phi Beta Kappa from Indiana University in 1983, Janet took three years off before entering law school. During that time, she went to work in advertising. She earned her J.D. from the University of Michigan Law School in 1989.

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Food, Beverage & Tobacco
  • Health Care Equipment & Services
  • Technology Hardware & Equipment

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Honors & Awards

  • 2017 World Trademark Review (WTR) 1000 : "Janet Marvel can handle any trademark matter under the sun; she has 'a stellar reputation and is terrific with clients.'"
  • 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2016 Expert Guides : A leading practitioner in Trade Marks
  • 2016 Who's Who Legal: Trademarks 2016 : One of the world's leading Trademark lawyers
  • 2016 World Trademark Review (WTR) 1000 : "She is a fantastic lawyer who is deeply involved with the IP industry."
  • 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property
  • 2015 Legal Media Group's Women in Business Law 2015 Expert Guide : Recognized as a Woman in Business Law Expert
  • 2015 Who's Who Legal: Trademarks 2015 : One of the world's leading Trademark lawyers
  • 2015 World Trademark Review (WTR) 1000 : For non-contentious instructions, there is no better choice than Janet Marvel, a meticulous brand strategy planner."
  • 2015 World Trademark Review (WTR) 1000 : Placed in the Silver Band in Illinois for "enforcement and litigation"
  • 2015 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property
  • 2014 The Legal 500 United States : "Janet Marvel handles anti-counterfeiting work."
  • 2014 World Trademark Review (WTR) 1000 : Janet Marvel is "a robust litigator and a level-headed adviser."
  • 2013 World Trademark Review 1000 : Cited partner Janet Marvel, saying she "crafts finely tuned development strategies" and has "a highly active enforcement practice, which encompasses briefs in the ever-evolving anti-counterfeiting field."
  • 2013 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2012 World Trademark Review 1000 : Janet A. Marvel is acclaimed for her "great understanding of trademark protection"
  • 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2011 Illinois Super Lawyers Magazine : An Illinois "Super Lawyer"
  • 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property
  • 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2008 Who's Who Legal: Illinois 2008 : An "Illinois leading lawyer in Trademark law"
  • 2008 Managing Intellectual Property : A "World's Leading Trade Mark Practitioner"
  • 2006 Who's Who Legal, The International and U.S. Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law

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Representative Trials, Appeals & Litigation

  • Medline Industries, Inc. v. JH KANG, Claim Number: FA1612001705498 (Forum 2017) (UDRP re: medlinescrubs.net; Domain transferred to client) (UDRP Proceeding)
  • C.R. Bard, Inc. v. Medline Industries, Inc., Opposition No. 91223009 (TTAB 2015) (Trademark)
  • Intex Marketing Ltd. v. The Coleman Company, Inc., Opposition No. 91220432 (TTAB 2015) (Trademark)
  • Sweet Street Desserts, Inc. v. Chudleigh's Ltd., Case Nos. 15-1445, 15-1548, Third Circuit Court of Appeals (2015) (Affirming summary judgment for Chudleigh's on Plaintiff's tortious interference claim) (Tortious Interference, Trade Dress Infringement, Functionality)
  • Flambeau, Inc. v. The Coleman Company, Inc., Opposition Nos. 92060501, 92060505 (TTAB 2015) (Trademark)
  • Learning Resources, Inc. v. Williams Lea Inc., First Salem Services Group, Houghton Mifflin Harcourt, Inc., Steven Tracy and Theresa Parker, Case No. 1:12-cv-7831 (N.D. Ill. 2012, Judge Darrah) (Trademark Infringement)
  • Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed in favor of Ritzenhoff) (Trademark Infringement)
  • Elaine Opsitnik v. Medline Industries, Inc., Case No. 12-CH-29978 (Ill. 2012, Judge Allen) (Preliminary injunction motion against Medline denied; Right of Publicity claim dismissed on Medline's motion) (Right of Publicity, Breach of Contract)
  • Coach, Inc. et al v. City of Chicago et al, Case No. 1:10-cv-03108 (N.D. Ill. 2011, Judge Shadur) (Anti-counterfeiting, Trademark Infringement)
  • Georgia-Pacific Consumer Products, LP v. Nextep, Inc. and Samuel L. Paul, Case No. C.A. No. 3:2009-cv-00156 (D. Nev. 2009) (TTAB and federal court litigation regarding BRAWNY trademark settled favorably) (Trademark Infringement, False Advertising, Unfair Competition)
  • PepsiCo, Inc. v. The Coca-Cola Company, Opposition No. 91175219 (TTAB 2009) (Trademark)
  • Ford Motor Company v. Safir GT 40 Spares, Limited, Opposition No. 91159033 (TTAB 2009) (Trademark)
  • Craftsmen Limousine, Inc. v. Ford Motor Co., 2005 WL 2321662 (W.D. Mo. 2008, Judge Whipple) (JURY TRIAL) (Unfair Competition, Trade Dress)
  • Medline Industries, Inc. v. Strategic Commercial Solutions, Inc., 553 F.Supp.2d 979 (N.D. Ill. 2008, Judge Castillo) ($4.5 million awarded to Medline Industries) (Trademark Infringement)
  • Ford Motor Co. v. Manheim Auctions, Inc., Opposition No. 91173930 (TTAB 2008) (Trademark)
  • Kimberly-Clark Corporation v. Medline Industries, Inc., Case No. 1:2007-cv-03121 (N.D. Ill. 2008, Judge Dow) (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)
  • 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)
  • Medline Industries, Inc. v. Medline Products Co., 2004 WL 1921020 (N.D. Ill. 2004, Judge Brown) (Trademark Infringement)
  • Medline Industries, Inc. v. Medline Rx Financial, LLC, 218 F.R.D. 170 (N.D. Ill. 2003, Judge Castillo) (Internet, E-Commerce and Computer Technology)
  • Ford Motor Co. v. Cattco Marketing et al., Case No. 2:2000-cv-04672 (E.D. Pa. 2001) (final judgment in favor of Ford Motor Co.) (Trademark Infringement)
  • Ford Plantation, LLC v. Black (Ford Motor Co., Third Party Plaintiff), 205 F.R.D. 698 (S.D. Ga. 2000, Judge Edenfield) (Unfair Competition)
  • Classified Ventures, L.L.C. v. Softcell Marketing, Inc., 109 F.Supp.2d 898 (N.D. Ill. 2000, Judge Nolan) (Internet, E-Commerce and Computer Technology)
  • Ford Motor Co. v. Ford Financial Solutions Inc., 55 U.S.P.Q.2d 1217 (N.D. Iowa 2000, Judge McManus) (Trademark Infringement)

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Professional Activities

  • American Bar Association-Intellectual Property Law Section : Editorial Board, Landslide Magazine (2012-2017); Acquisitions Editor (2016-2017)
  • Intellectual Property Law Association of Chicago : Board of Managers (2013)
  • International Trademark Association : Non-Profit Committee (2012-2014)
  • International Trademark Association's Non-Profit Committee : Subcommittee Vice Chair (2012-2013)
  • Intellectual Property Law Association of Chicago : Trademark Committee Chair (2011)
  • Intellectual Property Law Association of Chicago : U.S. and International Trademark Committee Chair (2009-2010)
  • Northwestern University School of Law : Adjunct Professor, Trademark and unfair competition course
  • Intellectual Property Law Association of Chicago : Vice chair, U.S. Trademarks Committee
  • International Trademark Association : Membership Services Committee, Academic Subcommittee
  • American Intellectual Property Law Association : Anti-counterfeiting Committee

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Representative Publications

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Representative Presentations

  • "Understanding the Intellectual Property License 2016: Trademark Licensing," Practising Law Institute, Chicago, IL (November 2016)
  • "Understanding the Intellectual Property License 2015: Trademark Licensing," Practising Law Institute, Chicago, IL (2015)
  • "Understanding the Intellectual Property License 2014: Trademark Licensing," Practising Law Institute, Chicago, IL (2011-2014)
  • "The Intersection of Trade Dress, Design Patent and Copyright, Trade Dress Functionality," Chicago Bar Association, Chicago, IL (April 2014)
  • "Trademarks: Year in Review," 58th Annual John Marshall Law School Intellectual Property Law Conference, Chicago, IL (February 2014)
  • "Top Ten U.S. Trademark Cases in 2012-2013," Annual Meeting of the Intellectual Property Institute of Canada, Ottawa Canada (September 2012)
  • "Trademarks: Utilitarian and Aesthetic Functionality," Strafford Live Seminar (June 2012)
  • "International Trademark Do's and Don'ts," Chicago Bar Association (April 2012)
  • "Top Ten U.S. Trademark Cases in 2010-2011," Annual Meeting of the Intellectual Property Institute of Canada, Chicago, IL (November 2011)
  • "Trademark Law: Trade Dress and other Important Issues," Martindale.com Connected's Trade Dress Webinar (December 2010)
  • "Trade Dress Development (and some other things)," Intellectual Property CLE Forum, Chicago, IL (April 2010)
  • Teleconference: "Trademark Selection, Protection & Litigation: A Crash Course for Associates" (December 2009)
  • "Proactive Steps to Protect Your Brand, A Lawyer's Perspective," 2009 Product Authentication and Brand Security Conference (October 2009)
  • Moderator, "Counterfeiting Across the Globe", AIPLA Mid-Winter Meeting (2009)
  • "Issues of Fraud in the United States Patent and Trademark Office," Chicago Bar Association Young Lawyers' Section, Intellectual Property Law Committee (October 2008)
  • "TTAB Fraud Cases," Chicago Bar Association Young Lawyers Section
  • "Trademark Registration" and "International Trademarks," Lexis/Nexis Intellectual Property 101 Teleconference Series, Trademarks
  • "Throw the Bums Out: Tips for Fighting Counterfeiting Online and in Court," Product Authentication and Brand Security Conference
  • "Trademarks: Protecting Your Business," a webinar for the Specialty Equipment Market Association (automobile and auto parts manufacturers' association)
  • "Multi-Jurisdictional Enforcement Strategies," Michigan Institute of Continuing Legal Education International Trademark Forum
  • "Famous and Well-Known Marks: The International Risks," Northwestern University Symposium on Trademark Law

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Court Admissions

  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the District of Arizona
  • U.S. District Court for the Eastern District of Michigan

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