Robert W. Sacoff

Intellectual property cases aren't always black and white. But when it comes to trademark infringement and unfair competition, Bob Sacoff sees things clearly. For brands to thrive, infringements must be detected and stopped.

In one of his favorite cases, Sacoff stopped the sale of a black and white spotted video game controller, which infringed his client Gateway Computers' cow spots brand and advertising motif. "The defendant said it was 'winter camouflage' but it looked just like our client's well-known cow spots," says Sacoff. "We got them to agree to a consent injunction and pay attorney's fees."

For years Bob has been an author, speaker and bar leader in the intellectual property field. He was Chair of the American Bar Association Section of Intellectual Property Law from 2003-2004, leading the Section's 20,000 members and 90 committees. From 2004-2006, he served as President of AIPPI United States, the U.S. affiliate of Zurich-based AIPPI.

"IP is a constantly changing field nationally and globally. Bar leadership is a great way to stay on top of new developments, contribute to the profession and influence the path of the law."

Sacoff understands that all legitimate businesses are threatened by knockoffs. "If your company has a successful brand, it is going to attract infringers, cybersquatters, false advertisers and counterfeiters," he explains. "It has always been so, but in today's global marketplace, well-recognized brands will encounter infringement problems in both the United States and other countries as well. Online business over the Internet has also expanded unfair trading, as cybersquatters register domain names based on your brand, and use them to misdirect customers to your competitors, making money in the process by sponsored links and click-throughs."

Careful clearance of your own brands is equally important. Sacoff has been enforcing, defending and securing brands for almost thirty years. He has built a reputation for stopping infringers, counterfeiters and cybersquatters, both here and abroad. As clients develop new brands, trade identities and domain name assets, Sacoff helps to clear them, manage infringement risks and secure the necessary legal protection. "It's important to respect the valid IP rights of others and avoid creating infringement problems yourself! Clients need cost-effective strategies for evaluating, registering and enforcing brands around the world."

An active litigator in cases across the country, Bob has handled disputes in industries from high tech to mass-marketed consumer products and services. He's represented clients in trademark, trade dress, false advertising, copyright infringement and anti-cybersquatting cases in the district courts, trademark appeals in U.S. Circuit Courts, trademark oppositions and cancellations before the Trademark Trial and Appeal Board, and in International Trade Commission litigation. He's handled approximately 100 successful domain name UDRP cases.

Sacoff co-authored the amicus curiae brief filed on behalf of the American Bar Association in the famous Victoria's Secret case, the first trademark dilution case ever to reach the U.S. Supreme Court. After the Court's decision that the statute required proof of actual dilution, Sacoff testified before Congress in support of amending the Federal Trademark Dilution Act to adopt a likelihood of dilution standard.

In World Trademark Review (2007), Sacoff was recognized as "A leader of the trademark bar and well recognized speaker and author on trademark law". In Who's Who Legal, The International Who's Who of Business Lawyers, Sacoff was recognized as 1 of the 22 "Most Highly Regarded Individuals-Global" in intellectual property and 1 of 6 U.S. lawyers named in that group, and was also nominated and recognized as an "exceptional" trademark practitioner (2006, 2007). Sacoff was also recognized for his "litigation prowess" in the Litigation and Intellectual Property Volumes of The Legal 500 United States (2007). Sacoff was named an "Illinois Super Lawyer" in Intellectual Property (2005, 2007). He has been recognized in the Guide to the World's Leading Trademark Practitioners (2004), as an Illinois Leading Lawyer in Intellectual Property (2004).