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

For Phillip Barengolts, building and protecting a company brand is just like building and protecting a personal reputation. Both must be earned, respected and defended.

"I understand the importance of brand image to a business, and strive to protect that image with as much diligence as I devote to my own reputation and that of our firm," Barengolts says.

A valuable brand is also a target for pirates: if they infringe or counterfeit the brand, they may harm its reputation. To prevent this, vigilant protection is essential.

Barengolts' experience has given him the tools to help clients maintain their stature in the marketplace. He's resolved disputes and counseled clients in all aspects of brand protection and development, including trademark, trade dress, unfair competition, copyright, anti-counterfeiting, and false advertising matters. He has particular expertise in Internet and e-commerce. He also works with clients to capture the value of intellectual property through licensing.

Barengolts has represented clients from a broad range of industries, including the automobile, consumer products such as apparel, toys and computer hardware, education, media, food and beverage, energy, health care, pharmaceutical, biotechnology, software, services and telecommunications industries.

"If you're an expanding business, I can help you protect your brand image among existing customers by preventing competitors from encroaching on established markets. I also work to ensure that your plans for expansion do not violate the intellectual property rights of players in new markets--whether they're global, on the Internet, or in new product categories," Barengolts explains.

To ensure that PepsiCo maintains its position as a leading brand in the soft drink industry, Barengolts has helped develop a global strategy to stop the sale of counterfeit and infringing products made from the client's bottles and cans. Through seizures, federal lawsuits and low-impact post-litigation policing, he quickly resolved an immediate problem, and developed an efficient method for dealing with future issues.

In another case, a client with a new business needed to establish a brand presence that could achieve global recognition without conflicting with previous rights-holders in a wide range of consumer apparel and services industries. Barengolts worked with the client's marketing team to develop a plan to avoid potential conflicts and resolve any that arose in the early stages of brand development. With his own and Pattishall's international expertise, he helped secure protection for the client's nascent brand across the world.

Described by clients and colleagues as "meticulous, professional and easy-going," Barengolts is known for treating all of his clients equally. "I devote as much attention to my pro bono clients as I do to the most complex matters for our most sophisticated clients, working closely with each one to resolve disputes in the way that best suits their specific problem and individual needs."

Barengolts helps maintain the worldwide trademark portfolio of an international nutritional supplements firm. He has drafted and helped negotiate custom system implementation agreements on behalf of a leading global provider of integrated clinical workflow solutions. He also provides pro bono representation for a local artist for all of her intellectual property needs.

While intellectual property issues span the globe, the universe of IP lawyers is actually quite small. "I never lose sight of the fact that my practice involves relationships among a small community of lawyers," he says. "Each one of us is a professional bound by a code of conduct that requires courtesy, honesty and respect. I strive to treat everyone I encounter in the course of my work--clients, opposing counsel or potential hires--with this same respect."

And that's a reputation that is perfectly legal to copy.

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

  • 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

  • BP p.l.c. v. Arrison d/b/a DASOLAR.COM, Case No. 8:2011-cv-03081 (D. Md., Judge Motz) (Trademark Infringement, Trademark Dilution)
  • 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)
  • BP P.L.C. v. National Orthodontix MGMT, LLC Opposition No. 91201087 (TTAB 2011) (Trademark Opposition - 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)
  • 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

  • Subcommittee on Defining Counterfeiting for the American Bar Association Intellectual Property Law Section on Trademark Legislation Committee : Chair
  • John Marshall Law School : Adjunct Professor, teaching Trademark and Copyright Litigation
  • International Trademark Association : Trademark Reporter Editorial Board
  • Intellectual Property Law Association of Chicago : Chair, Copyright Committee; Chief Editor, Copyright Permissions Handbook, 2010 Edition
  • 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 : Volunteer and Member of the Board of Directors
  • Northwestern School of Law : Lecturer, 2006-2008
  • Chicago Bar Association : Member
  • International Association for the Protection of Intellectual Property : Member
  • Chicago Council on Global Affairs : Member
  • Copyright Society : Member

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Publications

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Presentations

  • "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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