Paul A. Borovay

Phone: 312-554-7954

Email: pborovay@pattishall.com

Bio

Education

  • University of Wisconsin Law School (J.D. cum laude 2013), Vice President for the Latino Law School Association

    United States Department of Education Foreign Language and Area Studies Fellow (2011-2013)
  • University of California, Berkeley (B.A., 2005), Political Science with a Minor in Public Policy

Bar Admissions

Illinois
Wisconsin

Court Admissions

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Representative Trials, Appeals & Litigation

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Professional Activities

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Representative Publications

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Paul A. Borovay

Paul A. Borovay received his J.D., cum laude, from the University of Wisconsin Law School, where he also served as Vice President for the Latino Law School Association. As part of his receiving the prestigious Foreign Language and Area Studies Fellowship from the U.S. Department of Education, Paul learned Brazilian Portuguese and studied the differences between the American intellectual property system and that of Brazil. As a participant of the University of Wisconsin's Moot Court Board, Paul and his colleague received Third Place recognition overall in the Saul Lefkowitz Intellectual Property Competition.

Paul is a native Californian and attended the University of California at Berkeley. Following his undergraduate studies, Paul moved to Washington, DC to work for a public opinion consulting firm for one year, then joined the United States Peace Corps where he lived in Ecuador and started a sustainable health education program for rural schools.

Before returning to law school, Paul recorded his own rock album and created a website which successfully promoted his band and led to a U.S. tour. Paul's experience with developing and managing his own brand affords him first-hand insight into the branding complexities faced daily by the Firm's clients.

Representative Trials, Appeals & Litigation

  • Advanced Micro Devices, Inc. v. Umbra Technologies (HK) Limited, Opposition No. 91230105 (TTAB 2017) (GEO-D; Settled, secured judgment against applicant and obtained withdrawal of application) (Trademark)
  • Advanced Micro Devices, Inc. v. Umbra Technologies (HK) Limited, Opposition No. 91229869 (TTAB 2016) (GEODESTINATION; Settled, obtained amendment to application) (Trademark)
  • Advanced Micro Devices, Inc. v. Umbra Technologies (HK) Limited, Opposition No. 91229867 (TTAB 2017) (GEODESTINATION; Settled) (Trademark)
  • Peabody Management, Inc. v. Raheem Harris, Claim Number: FA1702001717584 (Forum 2017) (UDRP re: peabodylittlerock.com; Domain transferred to client) (UDRP Proceeding)
  • Medline Industries, Inc. v. JH KANG, Claim Number: FA1612001705498 (Forum 2017) (UDRP re: medlinescrubs.net; Domain transferred to client) (UDRP Proceeding)
  • Bayer HealthCare LLC v. Green Regimen, Opposition No. 91223239 (TTAB 2016) (A SMOOTHIE A DAY KEEPS THE DOCTOR AWAY; Settled, successfully argued motion to strike unclean hands defense and obtained withdrawal of application) (Trademark)
  • 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)
  • Tyler Pipe Company, a division of McWane, Inc. v. MIFAB, Inc., Case No.: 2:16-cv-00275-JRG (E.D. Tex., 2016) (Settled; case concerned copyright infringement, trademark infringement, unfair competition, business disparagement, and tortious interference (Copyright, Trademark, Unfair Competition)
  • Linear Technology Corp. v. Hulmiho Ukolen, Case No. D2016-0830 (WIPO 2016) (UDRP re: ltspice.com; Domain transferred to client) (UDRP Proceeding)
  • Hoopla.com, LLC v. Midwest Tape, LLC, Opposition No. 92062087 (TTAB 2015) (HOOPLA; Settled, obtained withdrawal of petition to cancel with prejudice) (Trademark)
  • The Sherwin-Williams Company v. The Wooster Brush Company, Case No. 5:12-cv-03052-JRA (N.D. Ohio 2015, Judge Adams) (granting The Sherwin-Williams Company's motion for partial summary judgment, in part, and denying defendant's motion for summary judgment in its entirety) (Trade Dress, Unfair Competition)
  • All Florida Paper, Inc. v. Illinois Tool Works Inc., Cancellation No. 92060749 (TTAB 2016) (TORNADO MAGIC; obtained withdrawal of petition to cancel with prejudice) (Trademark)
  • Bayer HealthCare LLC v. Eric Oaks dba ALKAplus WATER, Opposition No. 91212903 (TTAB 2015) (ALKA PLUS H90-10+ ALKA PLUS PLATINUM CERTIFIED GUARANTEED; Settled, obtained withdrawal of application) (Trademark)
  • Bayer HealthCare LLC v. Rule One Proteins LLC, Opposition No. 91220298 (TTAB 2015) (RULE 1; Settled, secured amendment to application) (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)
  • Darden Concepts, Inc. v. Kristine Huang, Opposition No. 91212047 (TTAB 2014) (RED LOBSTER & Design v. RED CRAWFISH & Design; Settled, obtained withdrawal of opposed application and agreement to phase out all use of offending word and design mark) (Trademark)
  • Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217746 (TTAB 2014) (CHICAGO STALEYS vs. CHICAGO STALEYS, application expressly abandoned) (Trademark)
  • Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217747 (TTAB 2014)(DECATUR STALEYS vs. DECATUR STALEYS, application expressly abandoned) (Trademark)
  • 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)

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Professional Activities

  • Copyright Society of the United States, Midwest Chapter : Co-Chair
  • Asociacion Interamericana de la Propiedad Intelectual Trademark Working Committee : Member
  • International Trademark Association : Member
  • Illinois Bar Association : Member
  • Wisconsin State Bar Business Law Section : Member
  • Wisconsin State Bar Intellectual Property Section : Member
  • Wisconsin Bar Association : Member

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Representative Publications

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Court Admissions

  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin

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