Joseph N. Welch II
''[Joe] know[s] more about trademarks than anyone . . .
It's comforting to know that we have [him] to call upon to answer all those sticky trademark problems.''
Jim Galoppo, CEO Goodyear Dunlop Tires North America, Ltd.
Joseph Welch's litigation motto is: "Fight hard, fight clean, and maintain a sense of humor." With over 20 years representing companies in litigation, business planning, and transactions, he understands that the client's goals are paramount and works hard to provide efficient analyses and advice. It helps, of course, that he enjoys what he does.
"Why wouldn't I? Knowledgeable clients, challenging issues, good results for our clients, a firm full of talented lawyers-you'd have to be a grinch not to enjoy this."
Welch currently serves as the firm's Managing Partner, and says clients looking for IP lawyers have come to the right place at Pattishall. "We literally wrote the book on non-patent IP law," he explains. "Our lawyers teach at major law schools, publish books and articles, speak at high-profile events, draft important legislation, and lead IP organizations at the local, national, and international levels. The breadth and depth of our experience can't be matched."
A recognized leader in the intellectual property field, Welch has handled a wide variety of IP matters, including matters involving brands, copyrighted materials, and advertising. He's been an expert witness in brand, copyright, and IP tax cases.
Welch has extensive experience in advertising law. In a three-year period, he handled over 100 arbitrations for a single client in the highly-competitive telecommunications industry, going after a competitor's ads for alleged deception. "These cases have to be resolved quickly and efficiently," he notes. "If litigation drags on for years, even a winning client may have lost critical market share."
Welch, with his partner David Hilliard, won the Sun Life case in the Eleventh Circuit, which established the doctrine of "inevitable confusion." In that case--involving two companies that had coexisted for many decades using similar names--Welch and Hilliard used a "mystery shopper" survey and anecdotal evidence to show that the confusion had become intolerable and "inevitable."
Welch has experience in the automotive, construction products, food and beverage, power tool, healthcare, real estate, leisure exercise equipment, software, personal care, and publishing industries, as well as with universities and non-profit organizations.
Under his guidance, clients have implemented global licensing and registration programs, as well as policing programs aimed at preventing misuse, infringement, gray market imports, and domain name cybersquatting.
In addition to being a mediator himself, Welch has represented clients in more than two hundred alternative dispute resolution proceedings. He's listed in the International Who's Who of Business Lawyers, Who's Who Legal, the World's Leading Trademark Practitioners and many similar publications. His peers voted him an Illinois "Leading Lawyer" and an Illinois "Super Lawyer," and he was the subject of a feature article in Illinois Super Lawyer magazine.
Welch encourages businesses to enlist IP counsel early on. "We can help you protect your intellectual property--internally and externally--by identifying your IP assets (and potential assets), guiding you in their proper use and protection, minimizing your risks through clearance and investigation, and identifying the best way to acquire, license, and sell your IP assets. Whether your company is a start-up or a multi-national, we give you the quality service you deserve."
Industry
Expertise
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Automobiles & Components
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Consumer Durables & Apparel
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Hotels, Restaurants & Leisure
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Media
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Retailing
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Food & Drug Retailing
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Food & Beverage
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Household & Personal Products
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Insurance
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Real Estate
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Health Care Equipment & Services
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Pharmaceuticals & Biotechnology
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Commercial Services & Supplies
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Software & Services
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Technology Hardware & Equipment
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Telecommunication Services
Representative
Matters
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The National Conference for Community and Justice, Inc. v. Boston Center for Community and Justice, Inc. et al, Case No. 06 C 9584 (N.D. Ill. 2006) (multiple ex-affiliate dispute)
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Ken's Foods, Inc. v. Jays Foods, Inc. , No. 04 C 7745 (N.D. Ill. 2004) (trademark)
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BSH Home Appliances Corp. v. Krakowski, No. 07-71311 (E.D. Mich. 2003) (metatag misuse)
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BSH Home Appliances Corp. v. Distribution Direct, LLC, No. 2:02CV-0306B (D. Utah 2002) (trademark, trade dress)
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Ford Motor Company cases, 35 U.S.P.Q. 2d 1062 (7th Cir. 1995), and 62 U.S.P.Q. 2d 1701 (E.D. Mich. 2002) (two leading "genuine goods" cases)
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S-B Power Tool Company v. Ryobi Technologies, Inc. , No. 02 C 1056 (N.D. Ill. 2002) (power tool trade dress)
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Sage Products, Inc. v. Kimberly-Clark Corp., No. 02 C 0126 (N.D. Ill. 2002) (copyright, packaging trade dress)
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Bayer Corp. v. Novartis Consumer Health, Inc. , No. 01-1875 (D.N.J. 2001) (copyright, packaging trade dress)
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Bayer Corp. v. Selfcare, Inc. , No. 00 CV 0400 (N.D. Ind. 2000) (breach of contract)
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S.B. Power Tool Co. v. Grizzly Industrial, Inc. , No. 00 C 8046 (N.D. Ill. 2000) (trade dress and unlawful importation)
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Ford Motor Company v. Factory Five Racing, Inc. , No. 00-10399 RWZ (D. Mass. 1999) (automotive trade dress, counterfeiting)
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Road Less Traveled v. Roads Less Traveled, 49 U.S.P.Q. 2d 1061 (N.D. Ill. 1998) (trademark)
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Berman Indus., Inc. v. Service Merchandise Company, Inc. ¸ No. 98 C 5791 (N.D. Ill. 1998) (copyright infringement)
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AT&T 1994-1998 (over 100 false advertising arbitrations)
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The Sun Life cases, 974 F.2d 1348 (11th Cir. 1992) and 77 F.3d 135, cert. denied, 117 S.Ct 79 (1996) (pioneering the use of mystery shopper surveys)
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Avon Products, Inc. v. S.C. Johnson & Son, Inc. , 948 F.Supp. 768 (S.D.N.Y. 1997) (false advertising)
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Dowbrands v. Helene Curtis, Inc. , 863 F.Supp. 963 (D. Minn. 1994) (fair use)
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The Walt Disney Company v. World of Toys, 28 U.S.P.Q. 2d 1130 (M.D. Tenn. 1993) ($1.3 million judgment for Disney based on defendant's discovery abuse)
Professional
Activities
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Chicago Intellectual Property Alliance
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President-Elect 2006
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Chicago Intellectual Property Alliance
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Director
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American Intellectual Property Law Association
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Elected Fellow 2006
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American Intellectual Property Law Association
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Board Member
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American Intellectual Property Law Association Amicus Committee
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Chair
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American Intellectual Property Law Association Trademark Law Committee
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Chair
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American Bar Association Intellectual Property Law Section
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Liaison to ABA Litigation Section
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American Bar Association Intellectual Property Law Section Trademark and Unfair Competition Division
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Chair
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American Bar Association Intellectual Property Law Section Amicus Committee
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Co-Chair
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American Bar Association Intellectual Property Law Section Federal Trademark Legislation Committee
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Chair
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American Bar Association Intellectual Property Law Section Trademark Litigation Committee
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Chair
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The Trademark Reporter
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Editorial Board Member
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Intellectual Property Law Association of Chicago
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Treasurer and Board of Managers member
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American Intellectual Property Law Association Quarterly Journal
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Editorial Board Member
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International Trademark Association
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Projects Editorial Board Member
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Trademark Public Advisory Committee (Appointed by U.S. Secretary of Commerce)
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Member
Recent Publications
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Single volume treatise author, TRADEMARKS AND UNFAIR COMPETITION (3d ed. 2007)
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Law School coursebook author, TRADEMARKS AND UNFAIR COMPETITION (6th ed. 2005)