Phillip Barengolts

Phone: 312-554-7936

Email: pbarengolts@pattishall.com

Intellectual Property News

Education

  • Harvard Law School (J.D., 2001)
  • Brown University (Sc.B., magna cum laude, 1998)

Bar Admissions

Illinois

Industry Expertise

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Honors & Awards

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Trials, Appeals & Litigation

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Professional Activities

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Publications

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Presentations

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Phillip Barengolts

Phil Barengolts has centered his legal career on protecting and building brands. A 2001 graduate of Harvard Law School, he began his life in the Soviet Union, immigrating to the United States with his parents when he was five. From a society with virtually no brands, to growing up in a society with tens of thousands of brands, Phil embraced the concept of brands as the growth propellant of companies.

An attorney with first chair trial experience, Phil has litigated throughout the country on behalf of major brand owners, such as PepsiCo and Bayer, to defend their brands against infringement.

"Brands and reputations are so fundamentally important to companies," he says, "especially in current market conditions. I can see the real value we can bring to a company's reputation in the marketplace, whether defending the brand against infringement or building it through proper strategic planning."

In addition to litigation, he's resolved disputes through alternative dispute resolution and counseled clients in all aspects of brand protection, acquisition/divestiture and development, such as trademark, trade dress, unfair competition, copyright, anti-counterfeiting, and advertising law. He has also developed a specific focus in Internet and e-commerce areas.

Phil graduated from Brown University magna cum laude in 1998, after serving as captain of the school's volleyball team. He was, true to his instincts and future work, a defensive specialist.

An avid history buff, he has traveled widely, particularly in Europe and the Middle East, to visit the places that have had significant impacts on Western culture. "I like to know the origin of things, to see how various societies shaped the thoughts and ideas that have come down to us in the form of laws and cultural markings."

He has worked with many other clients in a broad range of industries, including automobiles, consumer products such as apparel, toys and computer hardware, education, media, food and beverage, energy, health care, pharmaceutical, biotechnology, software, services and telecommunications.

He is an enthusiastic sports fan, but his chief hobby is his children. "There's no way to adequately measure the satisfaction of being with your children," he says. "Whether going to the park with them, running around the yard, or just reading together, it's what makes life beautiful for me."

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Food & Drug Retailing
  • Food, Beverage & Tobacco
  • Household & Personal Products
  • Energy
  • Pharmaceuticals & Biotechnology
  • Software & Services
  • Technology Hardware & Equipment

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Honors & Awards

  • 2013 Illinois Super Lawyers Magazine : An Illinois "Rising Star" in Intellectual Property Litigation
  • 2012 The Legal 500 United States : Recommended for his experience in anti-counterfeiting and trade dress disputes.
  • 2012 Illinois Super Lawyers Magazine : An Illinois "Rising Star"
  • 2011 The Legal 500 United States : "Phillip Barengolts represented Bayer Healthcare as plaintiff in a domain name dispute against multiple defendants."
  • 2011 Illinois Super Lawyers Magazine : An Illinois "Rising Star" in Intellectual Property Litigation
  • 2010 Law & Politics : An Illinois "Rising Star" in Intellectual Property Litigation
  • 2009 Legal OnRamp : Gray Market Goods Expert

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Trials, Appeals & Litigation

  • PepsiCo, Inc. v. Ram Traders, Ltd., 2013 WL 100769 (D. Nev. 2013, Judge Mahan) (Trademark Infringement, Unfair Competition, Trademark Dilution)
  • FRAM Group Operations, LLC v. Purolator Filters NA, LLC, Case No. 1:12-cv-03040 (N.D. Ill. 2012, Judge Lefkow) (False Advertising)
  • Eli Lilly and Company v. Yanchep Veterinary Clinic Pty Ltd et al., Case No. 1:11-cv-01469 (S.D. Ind. 2012, Judge Magnus-Stinson) (Gray Market Enforcement, Trademark Infringement, Anti-Cybersquatting)
  • Indigo Wild, L.L.C. v. NCN Beverages, LLC and Lifestyle Brands International, LLC, Opposition No. 91197275 (TTAB 2012) (Trademark Opposition)
  • Bayer Healthcare LLC v. Belmora LLC, Cancellation No. 92047741 (TTAB 2012) (Trademark)
  • 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)
  • Bayer HealthCare LLC v. Pharmascience, Inc., Opposition No. 91200243 (TTAB 2012) (Trademark)
  • 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)
  • BP p.l.c. v. Arrison d/b/a DASOLAR.COM, Case No. 8:2011-cv-03081 (D. Md. 2011, Judge Motz) (Trademark Infringement, Trademark Dilution)
  • Kellogg North America Company v. Foodtech International, Inc. (W.D. Mich. 2011, Judge Jonker) (Trade Dress)
  • PepsiCo, Inc. v. Castillo, Case No. 1:2011-cv-03717 (S.D.N.Y. 2011, Judge Cote) (Trademark Infringement, Gray Market Goods)
  • BP P.L.C. v. National Orthodontix MGMT, LLC, Opposition No. 91201087 (TTAB 2011) (Trademark Dilution)
  • Castrol Limited v. Power Mart Corp., Cancellation No. 92053647 (TTAB 2011) (Trademark Cancellation - Abandonment)
  • Bayer HealthCare LLC v. Gidget Marks, LLC, Opposition No. 91196940 (TTAB 2011) (Trademark)
  • Pepsico, Inc. v. SPE Trading, Inc., Case No. 2:2010-cv-06833 (C.D. Cal. 2010, Judge Pregerson) (Trademark Infringement, Gray Market Goods)
  • BP P.L.C. v. Outcome Sciences, Inc., Opp. No. 91193127 (TTAB, Nov. 12, 2010) (Trademark Opposition - Logo)
  • 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)
  • Bayer AG v. ANIP Acquisition Co., Case No. 0:2010-cv-03262 (D. Minn. 2010, Judge Davis) (Trademark Infringement)
  • Jellifish International Corp. USA v. Peters, Opposition No. 91196180 (TTAB Oct. 5, 2010) (Trademark)
  • Bayer HealthCare LLC v. Eighty Business Names, WIPO Case No. D2010-1024 (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • PepsiCo, Inc. v. Intrastate Distributors, Inc., Case No. 2:2010cv11361 (E.D. Mich. 2010, Judge Lawson) (Trademark Infringement)
  • PepsiCo, Inc. v. Su Casa Imports, Inc., Case No. 3:2010cv00330 (D. Or. 2010, Judge King) (Injunction entered against importation, distribution, and sale of gray market soft drinks) (Trademark Infringement)
  • Lovemore, LLC v. More Cupcakes, LLC, Cancellation No. 92051835 (TTAB 2010) (Trademark)
  • PepsiCo, Inc. v. Southside Food Plaza, Inc., Case No. 1:2010cv00354 (E.D.N.Y. 2010, Judge Amon) (Injunction entered against importation, distribution, and sale of gray market soft drinks) (Trademark Infringement)
  • The John W. Carson Foundation v. Toilets.com, Inc., OUSPQ2d 1942 (TTAB 2010) (precedential) (awarding summary judgement to client on all counts, sustaining opposition and denying applicant a trademark registration for HERE'S JOHNNY) (Rights of Publicity and Privacy, Trademark)
  • PepsiCo, Inc. v. Hatzlacha Supermarket, Inc., Case No. 1:2009cv03034 (E.D.N.Y. 2009, Judge Weinstein) (Trademark Infringement)
  • BP P.L.C. v. Capan, Opposition No. 91191121, (TTAB 2009) (Opposition sustained) (Trademark)
  • PepsiCo, Inc. v. Grande Produce Ltd. Co., Case No. 7:2008cv00262 (S.D. Tex. 2009, Judge Hinojosa) (Trademark Infringement)
  • Kenosha Lumber & Manufacturing Company, Inc. v. PDS Electronics, Inc., Opposition No. 91188662 (TTAB 2009) (Trademark)
  • Eli Lilly & Co. v. Nikiforov, Case No. D2009-1024 (WIPO 2009) (Internet, E-Commerce and Computer Technology)
  • PepsiCo, Inc. v. Marroko USA LLC, Case No. 3:2009cv00338 (N.D. Tex. 2009, Judge Boyle) (Gray Market Enforcement, Trademark Infringement)
  • PepsiCo, Inc. v. The Coca-Cola Company, Opposition No. 91175219 (TTAB 2009) (Trademark)
  • More Cupcakes, LLC v. Lovemore LLC, Case No. 1:2009cv03555 (N.D. Ill. 2009, Judge Kocoras) (Trademark Infringement)
  • PepsiCo, Inc. v. Shalabi, Case No. 2:2009cv03989 (C.D. Cal. 2009, Judge Lew) (Trademark Infringement)
  • Bayer Corporation v. Dairy Management Inc., Opposition No. 91157755 (TTAB 2009) (Trademark)
  • PepsiCo, Inc. v. JT Saniya, Inc., Case No. 2:2009cv00751 (C.D. Cal. 2009, Judge Pregerson) (Trademark Infringement)
  • Phillips Performance Nutrition, LLC v. Bayer Healthcare, LLC, Case No. 1:2007cv01982 (D. Colo. 2009, Judge Brimmer) (Trademark Infringement)
  • Bayer Healthcare, LLC v. BioRx Pharmaceuticals, Inc., Opposition No. 91184031 (TTAB 2009) (Trademark)
  • BP P.L.C. v. Meridian Transportation Resources, LLC, Opposition No. 91187159 (TTAB 2009) (Opposition sustained) (Trademark)
  • Pepsico, Inc. et al v. Irie Motivations, Inc. et al, Case No. 2:2008cv02242 (C.D. Cal. 2008, Judge Lew) (Pepsico awarded $168,000 in damages plus attorneys' fees) (Trademark Infringement)
  • Siemens Healthcare Diagnostics, Inc. v. Qiagen GmbH, Opposition No. 91169930 (TTAB 2008) (Trademark)
  • PepsiCo, Inc. v. Star Importers & Wholesalers, Inc., Case No. 1:2008cv01733 (N.D. Ga. 2008, Judge Martin) (Trademark Infringement)
  • Praxair, Inc. and Praxair Technology v. Milner-Fenwick Inc., Opposition No. 91177015 (TTAB 2008) (Trademark)
  • PepsiCo, Inc. v. Los Potros Distribution Center, LLC, 2008 WL 2225752 (D. Ariz. 2008, Judge Campbell) (PepsiCo awarded $95,000 in damages and attorneys' fees) (Trademark Infringement)
  • Bayer HealthCare LLC v. Bortec Biomedical Ltd., Cancellation No. 92046818 (TTAB 2008) (Trademark)
  • PepsiCo, Inc. v. Señor Express LLC, Case No. 5:2008cv04004 (N.D. Iowa 2008, Judge Bennet) (Gray Market Enforcement, Trademark Infringement)
  • Ford Motor Co. v. Manheim Auctions, Inc., Opposition No. 91173930 (TTAB 2008) (Trademark Infringement)
  • PepsiCo, Inc. v. Gotera, Inc., Case No. 4:2007cv03436 (S.D. Tex. 2008, Judge Gilmore) (Trademark Infringement)
  • Kimberly-Clark Corporation v. Medline Industries, Inc., Case No. 1:2007cv03121 (N.D. Ill. 2008, Judge Dow) (Trademark Infringement)
  • PepsiCo, Inc. v. Chatik Enterprises, Inc., Case No. 2:2007cv04353 (C.D. Cal. 2007, Judge Schiavelli) (Trademark Infringement)
  • Bayer Corp. v. Germaine Laboratories, Inc., Cancellation No. 92046832 (TTAB 2007) (Trademark)
  • Atlantic Richfield Company v. ATCO Ltd., Opposition No. 91168706 (TTAB 2007) (Trademark)
  • PepsiCo, Inc. v. J.K. Distributors, Inc., 2007 WL 2852647 (C.D. Cal. 2007, Judge Cooper) (Gray Market Enforcement, 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)
  • Energy Intelligence Group, Inc. v. BP America, Inc., Case No. 1:2005cv08314 (S.D.N.Y. 2007, Judge Cedarbaum) (Copyright Infringement)
  • Atlantic Richfield Company et al. v. G&G Oil & Gas Corp., Case No. 3:2005cv01067 (M.D. Tenn. 2006, Judge Campbell) (Trademark, Trade Dress Infringement)
  • PepsiCo, Inc. v. C. Tocco Wholesale Produce, Inc., Case No. 2:2006cv10390 (E.D. Mich. 2006, Judge Hood) (Counterfeiting)
  • BP America, Inc. v. Patel, Case No. 1:2006cv00606 (S.D. Ind. 2006, Judge McKinney) (Trademark Infringement, Trade Dress Infringement)
  • The Concentrate Manufacturing Company of Ireland v. ESPI Trading Inc., Opposition No. 91165916 (TTAB 2006) (Trademark)
  • PepsiCo, Inc. v. St. Pierre, Case No. 2:2006cv10391 (E.D. Mich. 2006, Judge Rosen) (PepsiCo awarded injunction and damages) (Counterfeiting)
  • ChevronTexaco Corp. v. Castrol Ltd., Opposition No. 91156899 (TTAB 2006) (Trademark)
  • PepsiCo, Inc. v. Beverages & More, Inc., Case No. 2:2005cv07676 (C.D. Cal. 2006, Judge Otero) (Trademark Infringement)
  • PepsiCo, Inc. v. Laish Israeli Food Products, Inc., Case No. 1:2004cv04504 (E.D.N.Y. 2006, Judge Gershon) (Gray Market Enforcement, Trademark Infringement)
  • BP Products N.A., Inc. v. Sandhu Petroleum, Inc., Case No. 1:2005cv00586 (N.D. Ill. 2005, Judge Gettleman) (Trademark Infringement)
  • PepsiCo, Inc. v. Diaz Wholesale & Manufacturing Co., Inc., Case No. 1:2005cv01043 (N.D. Ga. 2005, Judge Duffey) (Gray Market Enforcement, Trademark Infringement)
  • Ford Motor Co. v. Money Makers Automotive Surplus, Inc., 2005 WL 2464715 (D. Neb. 2005, Judge Bataillon) (Ford awarded $5 million in damages) (Counterfeiting, Trademark Infringement, Trade Dress Infringement)
  • PepsiCo, Inc. v. Mexico Wholesale, Case No. 4:2005cv40101 (E.D. Mich. 2005, Judge Gadola) (Gray Market Enforcement, Trademark Infringement)
  • PepsiCo, Inc. v. AC Foods Wholesale, Case No. 3:2005cv01314 (N.D. Cal. 2005, Judge James) (Gray Market Enforcement, Trademark Infringement)
  • Dell Computer Corp. v. Delcomp, Inc., Cancellation No. 92040515 (TTAB 2005) (Trademark)
  • Ford Motor Co. v. Mill Supply, Inc., Case No. 2:2004cv71120 (E.D. Mich. 2005, Judge Cleland) (Keyword Advertising) (Trademark, Copyright, False Advertising)
  • Celsis, Inc. v. Biotrace, Inc., Case No. 1:2002cv00900 (S.D. Ohio 2005, Judge Weber) (Advertising)
  • PepsiCo, Inc. v. El Jarocho, Inc., Case No. 1:2004cv01708 (S.D. Ind. 2005, Judge Young) (Trademark Infringement)
  • Grand Vehicle Works Holdings Corp. v. Mill Supply, Inc., Case No. 1:2004cv01915 (N.D. Ill. 2004, Judge Conlon) (Trademark, Internet, E-Commerce and Computer Technology)
  • PepsiCo, Inc. v. Trueque Trading Corp., Inc., Case No. 5:2000cv00026 (S.D. Tex. 2004, Judge Ellison) (Trademark Infringement)
  • Cerveceria Del Pacifico, S.A. de C.V. v. Anheuser-Busch, Inc., Opposition No. 91107134 (TTAB 2004) (Trademark)
  • Petro-Canada v. Castrol Ltd. and Castrol Heavy Duty Lubricants, Inc., Case No. 1:2003cv02884 (S.D.N.Y. 2003, Judge Stein) (Trademark Infringement)
  • PepsiCo, Inc. v. First Indo-American Corp., Case No. 2:2003cv04605 (C.D. Cal. 2003, Judge Otero) (Gray Market Enforcement, Trademark Infringement)
  • The McNeill Group, Inc. v. Landmark Education Corp., Case No. 0:2000cv06659 (S.D. Fla. 2003, Judge Ferguson) (Copyright 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)
  • PepsiCo, Inc. v. Plank, 2002 U.S. Dist. Lexis 14378 (C.D. Cal. 2002, Judge Manella) (PepsiCo awarded temporary restraining order, injunction and $40,000 in damages) (Counterfeiting, Trademark Infringement, Trade Dress Infringement)
  • Ford Motor Co. v. Factory Five Racing, Inc., 2002 WL 32155850 (D. Mass. 2002, Judge Zobel) (Trade Dress Infringement)

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Professional Activities

  • American Bar Association : Intellectual Property Law Section Representative to the Intellectual Property Constituency of the Internet Corporation for Assigned Named and Numbers (ICANN)
  • John Marshall Law School : Adjunct Professor, teaching Trademark and Copyright Litigation (2008-present)
  • Northwestern School of Law : Lecturer, 2006-2008
  • International Trademark Association : Member, Parallel Imports Committee, North American Subcommittee (2012 - present); Editor, Trademark Reporter (2007-2011)
  • Intellectual Property Law Association of Chicago : Chair, Copyright Committee (2009 - present); Chief Editor, Copyright Permissions Handbook, 2010 Edition
  • American Bar Association : Defining Counterfeiting Sub-Committee of the Federal Trademark Legislation Committee (201) of the Section of Intellectual Property Law : Chair (2012)
  • American Bar Association : Famous Marks Doctrine Sub-Committee of the Federal Trademark Legislation Committee (201) of the Section of Intellectual Property Law : Co-Chair (2009-2010)
  • Lawyers for the Creative Arts : Member of the Board of Directors and Volunteer
  • Chicago Bar Association : Member
  • Built In Chicago : Member

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Publications

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Presentations

  • "The FTC Guidelines on Mobile and Social Marketing," IP on the Edge, The John Marshall Law School (April 2013)
  • "Emerging Trends in Social Media and Mobile Advertising," IPLAC Corporate Committee (April 2013)
  • "Getting it Right From Start Up: A Discussion of the Legal Considerations for Company Formation and Advertising," a presentation for Built In Chicago Members (February 2013)
  • "Emerging Trends in Advertising Law," U.S. headquarters of a Fortune Global 500 company (January 2013)
  • "Can They Be Stopped? Parallel Imports and Gray Market Goods Under U.S. Law," an INTA Webcast (September 2012)
  • "Counterfeiting - A Dangerous Reality: Legal Tactics and Corporate Best Practices for Combating Counterfeiters," AIPLA online seminar (June 2012)
  • "Copyrighting Trademarks: Misuse or Fair Use in Commerce?", a panel organized for the Copyright Committee for the Intellectual Property Law Association of Chicago, Chicago, IL (April 2012)
  • "The Stop Online Piracy Act (SOPA): What happens next?" Intellectual Property Law Association of Chicago Panel, Chicago, IL (April 2012)
  • "The U.S. Perspective on Parallel Imports," Parallel Imports and Trademark Protections in the Common Economic zone of the Customs Union, a joint conference of The Parallel Imports and Anti-Counterfeiting Committees of the International Trademark Association and the Coalition for Intellectual Property Rights, Moscow, Russia (December 2011)
  • "Trademark Issues in the Anti-Counterfeiting Trade Agreement (ACTA)," American Intellectual Property Law Association Spring Meeting, San Francisco, CA (May 2011)
  • "The Potential Impact of the Anti-Counterfeiting Trade Agreement (ACTA) on U.S. and International Intellectual Property Enforcement," Chicago Bar Association, Chicago, IL (April 2011)
  • "ACTA: What Will it Mean For The IP Practitioner?" Annual Intellectual Property Law Conference of the American Bar Association Section of Intellectual Property, Washington, D.C. (April 2011)
  • "Trademark Issues in the Anti-Counterfeiting Trade Agreement (ACTA)," American Bar Association-Intellectual Property Section's Spring Meeting, Washington, D.C. (April 2011)
  • "Ethics of Investigations," 13th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, University of Akron (March 2011)
  • "Trade Dress Enforcement," Intellectual Property CLE Forum, Chicago, IL (April 2010)
  • "Sponsored Internet Advertising in Light of Rescuecom," Cyberlaw and Data Privacy Committee of the Chicago Bar Association, Chicago, IL (April 2009)
  • "Trademark Issues related to the 2007 PMPA Amendment," Petroleum Marketing Attorneys' Meeting, Washington, D.C. (March 2009)
  • "Trademark Dilution Surveys," Chicago Bar Association, Young Lawyers Section, Intellectual Property Committee, Chicago, IL (April 2008)
  • "Copyright Law and Media Distribution over the Internet," Northwestern Law School IP Week, Chicago, IL (January 2008)

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