Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Jonathan S. Jennings

Phone: 312-554-7937

Email: JSJ@pattishall.com

Education

Northwestern University School of Law (J.D., 1990, Articles Editor for The Journal of Criminal Law and Criminology)
Trinity College, Dublin, Ireland (1986-87, Rotary Scholar)
Emory University (B.A., 1986, Phi Beta Kappa)

Bar Admissions

Illinois

Industry Expertise

Honors & Awards

Trials, Appeals & Litigation

Professional Activities

Publications

Presentations

Jonathan S. Jennings

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312-554-7937

Email JSJ@pattishall.com

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To Jonathan Jennings, IP law is an intricate puzzle. A solution always exists, but you have to find it. To find it, you have to know where to look.

Whether he's representing clients, drafting legislation, teaching, writing or speaking at conferences, he's reflecting on the impact of intellectual property law on business and society. His ability to think through complex problems efficiently has earned him a reputation for finding solutions.

Jennings has managed matters involving a broad spectrum of IP law: trademarks, trade secrets, and copyright; anti-counterfeiting and gray market goods; and domain names, brand development and advertising.

Jennings has counseled clients from the food and beverage, energy, real estate, health care, telecommunications, and pharmaceutical industries through the maze of IP law, legislation and regulation.

"I see myself primarily as a problem-solver and litigator. I also counsel large and small businesses--as well as prominent individuals--on complicated transactions like web site co-branding and confidentiality agreements or trademark and right of publicity licensing matters," Jennings explains. He manages trademark registration portfolios in the U.S. and worldwide (including through the Madrid Protocol) and provides brand clearance opinions.

In one of his more notable cases, Jennings filed a summary judgment motion on behalf of AT&T prior to commencing a potentially lengthy trademark trial. The resulting order not only permanently stopped an ISP from infringing the client's mark, but also resulted in an award of attorneys' fees and costs.

He's brought over 50 successful gray market and anti-counterfeiting civil actions, involving soft drinks, pharmaceuticals and various foods. He organized and participated with law enforcement in successful raids on the manufacturers of counterfeit products.

Never afraid to enter the labyrinth, Jennings uses persuasion and leadership to forge new paths and advance intellectual property law through legislative and regulatory change. On behalf of the ABA IP Law Section, he organized and participated in a meeting with USPTO officials and representatives of INTA, AIPLA and IPO on the TTAB's proposed changes to its rules of practice. Also, on behalf of the Section, he helped to prepare testimony before Congress on proposals to amend the Federal Trademark Dilution Act of 1995, met with representatives of IPO, INTA and AIPLA on proposed legislation to change the statute, and organized responses to questions from Congress on what became the Trademark Dilution Revision Act of 2006.

On behalf of the Chicago Bar Association, he was the primary drafter of the Illinois Right of Publicity Statute and testified in support of this legislation before the Illinois Senate. As a direct result of his efforts, Illinois enacted a well-balanced statute that protects individuals and businesses alike.

Jennings is now working through the International Trademark Association, as the Chair of the North American Subcommittee of the Parallel Imports Committee, to improve the Customs regulations on gray market goods. "The current Lever Rule regulations do not adequately protect brand owners," he says. He represented INTA at meetings on this issue in Washington with officials from U.S. Customs and Border Protection and the U.S. Treasury Department. INTA recently appointed him to its North America Council, and will serve as the Chair of the Parallel Imports Committee beginning in 2010.

Recognizing his ability to unravel convoluted IP issues, Illinois attorneys named Jennings one of the state's "Leading Lawyers," as well as an Illinois "Super Lawyer" in intellectual property law. He also was selected for "Who's Who in American Law" and the "Guide to the World's Leading Trade Mark Law Practitioners" (7th Edition). In addition, he was nominated by his peers to be a Fellow of the American Bar Foundation, an honor limited to one-third of one percent of the lawyers in America.

He was elected to a four-year term on the Council of the ABA Section of Intellectual Property Law, after serving as Chair of the Section's Trademark Division. In 2006, the Section recognized him for his work with an award noting his "extraordinary contributions and commitment" to the organization. In August 2008, he also received a recognition certificate for his "exemplary contribution to the charter year of the new publications program of the American Bar Association Section of Intellectual Property Law" from the Section Chair.

He frequently explains IP law for the courts and the press. Most notably, the Court of Appeals for the 4th Circuit cited him as an authority on cybersquatting issues in Harrod's Limited v. Fifty-Four Internet Names. Leading publications quoting him include: THE NATIONAL LAW JOURNAL on the subject of trademark counterfeiting in its July 3, 2006, article, "Countering Counterfeits;" BNA'S MEDIA LAW REPORTER in its November 7, 2006, article, "Virtual Superstars After Death," on right of publicity law; the CHICAGO TRIBUNE on the subject of right of publicity legislation in its May 28, 2008, article "Suit Aims to get at soul of photo rights;" and, most recently, INC. magazine on the subject of trademark clearance in its December 1, 2009, article "How to Protect Your Trade Secrets."

Jennings is an Adjunct Professor at The John Marshall Law School and a member of the Advisory Board for the DePaul University College of Law's Center for Intellectual Property Law & Information Technology. He has presented and published on a wide variety of topics in the field of intellectual property law.

"What I enjoy about IP law is that new areas spring up overnight. Puzzling out efficient solutions to emerging problems is what makes law practice exciting." And given his experience, it's no mystery why he has succeeded.