Robert W. Sacoff

Phone: 312-554-7934

Email: rsacoff@pattishall.com

Intellectual Property News

Education

  • Northwestern University School of Law (J.D., 1973, Member, Editorial Board of the Northwestern University Law Review)
  • University of Notre Dame (A.B., 1969)

Bar Admissions

Illinois
District of Columbia
Maryland

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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Robert W. Sacoff

''Since the early days of Gateway, we have relied on Bob to protect and enforce our brands.''





Bob has concentrated his practice in trademark and unfair competition law and litigation for over 30 years. He has handled cases in courts throughout the country and in the Trademark Trial and Appeal Board involving such diverse industries and product fields as wine, fashion apparel, publishing, holiday lighting, agricultural and construction equipment, vehicle rental, online event ticketing, automobile parts and accessories, and computer and high technology products. He is active in the areas of ecommerce and Internet issues, and has handled over 100 UDRP cases, recovering scores of cybersquatter domain names for clients.

He has been an author, speaker and bar leader in the intellectual property field for decades. He served on the Boards of Directors of the International Trademark Association (INTA) and the American Intellectual Property Law Association (AIPLA), and contributed to the formulation of the U.S. Patent & Trademark Office rules implementing the intent-to-use provisions of the 1989 Lanham Act revisions. He served as Chair of the American Bar Association (ABA) Section of Intellectual Property Law, with 20,000 members and 90 committees, and co-authored an ABA amicus curiae brief to the U.S. Supreme Court in the Victoria's Secret case, the first trademark dilution case to reach the high Court. After the Court's decision, construing the statute to require proof of actual dilution, he testified in Congress before the House Judiciary Committee's Subcommittee on Courts, the Internet, and Intellectual Property, advocating an amended likelihood of dilution standard that became law in the Trademark Dilution Revision Act of 2006. He also served on the Trademark Public Advisory Committee for approximately ten years, which provides private sector advice to the U.S. Patent & Trademark Office.

Bob has long been active in international trademark law as well, and handles foreign trademark issues for domestic clients, including oppositions and infringement actions, counseling, licensing, clearance, and registration. He has spoken abroad on trademark law and has participated in international trademark policy and harmonization initiatives. He served as President of the U.S. national group of AIPPI, a global international intellectual property law association dating back to the signing of the Paris Convention, and has served on AIPPI committees for many years. He also served as a private sector advisor to the U.S. delegation to the Diplomatic Conference on the Trademark Law Treaty in Geneva, Switzerland.

His recognition in professional reviews include World Trademark Review; The International Who's Who of Trademark Lawyers; Marquis Who's Who in America; Illinois Super Lawyers; Martindale-Hubbell Bar Register; The International Who's Who of Business Lawyers; Leading Lawyers Magazine, Business Edition; and The Legal 500.

Bob is a graduate of the Northwestern University School of Law, where he was a member of the Editorial Board of the Northwestern Law Review. He is also a graduate of the University of Notre Dame. He lives in Glenview, Illinois, with his wife Mary, and in his spare time enjoys international travel and the racquet sports, including tennis, squash, and court tennis, the medieval precursor to modern tennis.

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Hotels, Restaurants & Leisure
  • Media
  • Retailing
  • Food, Beverage & Tobacco
  • Household & Personal Products
  • Banks
  • Diversified Financials
  • Insurance
  • Health Care Equipment & Services
  • Transportation
  • Software & Services
  • Technology Hardware & Equipment

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Honors & Awards

  • 2014 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2014 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2014 Leading Lawyers Magazine : An Illinois "Leading Lawyer"
  • 2013 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2013 The International Who's Who of Trademark Lawyers 2013 : One of the world's leading Trademark lawyers
  • 2013 American Lawyer Media and Martindale-Hubbell : Selected as a 2013 Top Rated Lawyer in Intellectual Property
  • 2013 Marquis Who's Who in America : Recognized
  • 2013 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2013 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2013 The International Who's Who of Business Lawyers : Recognized
  • 2012 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
  • 2012 The Legal 500 United States : Recommended for his focus on trademark infringement and unfair competition cases.
  • 2012 The International Who's Who of Trademark Lawyers 2012 : One of the world's leading Trademark lawyers
  • 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2012 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2011 The International Who's Who of Trademark Lawyers 2011 : One of the world's leading Trademark lawyers
  • 2011 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2011 Illinois Super Lawyers Magazine : An Illinois "Super Lawyer"
  • 2011 The International Who's Who of Business Lawyers : Recognized
  • 2010 Leading Lawyers Magazine, Business Edition : Selected as a "Top Business Lawyer in Intellectual Property Law in Illinois"
  • 2010 The International Who's Who of Trademark Lawyers : One of the world's leading Trademark lawyers: "Robert Sacoff is 'resourceful and skilled' and his clients include Gateway and Ticketmaster."
  • 2010 The International Who's Who of Business Lawyers 2010 : One of the world's leading Business lawyers
  • 2010 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2010 World Trademark Review : In the "Experts' expert" list, Robert W. Sacoff is included as one of the top 20 trademark practitioners in the United States
  • 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property Litigation
  • 2009 Managing Intellectual Property : Selected as a "World's Leading Trade Mark Practitioner"
  • 2009 Chicago Lawyer Magazine : Selected as a "Top Intellectual Property Lawyer in Illinois" by Leading Lawyers Network
  • 2009 American Bar Foundation : Nominated by his peers to be a Fellow, an honor limited to one-third of one percent of the lawyers in America
  • 2009 Leading Lawyers Network Magazine : A "Leading Lawyer" in Intellectual Property
  • 2009 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2009 The International Who's Who of Trademark Lawyers 2009 : One of the Leading Trademark Attorneys in the World
  • 2008 Who's Who Legal Illinois : Described Bob Sacoff as "wonderfully astute"
  • 2008 Who's Who Legal, The International Who's Who of Business Lawyers : Characterized as "authoritative" in his field
  • 2008 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2008 Who's Who Legal: Illinois 2008 : An "Illinois leading lawyer in Trademark law"
  • 2008 Managing Intellectual Property : A "World's Leading Trade Mark Practitioner"
  • 2008 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2007 World Trademark Review : "A leader of the trademark bar and well recognized speaker and author on trademark law."
  • 2007 Who's Who Legal, The International Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
  • 2007 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2007 Marquis Who's Who in American Law, 30th Anniversary Edition : Recognized
  • 2007 Informa plc, the publisher of Trademark World, Patent World and Copyright World : Identified as a "Luminary" within the field of intellectual property
  • 2007 The International Who's Who of Trademark Lawyers 2007 : Recognized
  • 2007 Leading Lawyers Network Magazine : Named a "Leading Lawyer" in Intellectual Property Law
  • 2007 Who's Who Legal, The International Who's Who of Business Lawyers : One of the 22 "Most Highly Regarded Individuals -Global" in intellectual property (1 of 6 in the U.S.)
  • 2007 The Legal 500 United States : Recognized for his "litigation prowess" in intellectual property matters
  • 2006 Who's Who Legal, The International and U.S. Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
  • 2005 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2005 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law
  • 2004 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law

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Trials, Appeals & Litigation

  • Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217746 (TTAB 2014) (CHICAGO STALEYS vs. CHICAGO STALEYS) (Trademark)
  • Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217747 (TTAB 2014)(DECATUR STALEYS vs. DECATUR STALEYS) (Trademark)
  • Tommy Hilfiger Licensing LLC v. Jami Jurgens, Opposition No. 91216937 (TTAB 2014) (TOMMY GIRL vs. TOMGIRL) (Trademark)
  • Acer Inc. v. Eitan Chkechkov, Opposition No. 91212866 (TTAB 2014) (Judgment for opposer)) (ACER vs AXER) (Trademark)
  • Slazengers Limited v. Arctic Cat Inc., Opposition No. 91198066 (TTAB 2014) (Design vs. Design, settled) (Trademark)
  • Ferrara Candy Co. v. Head Spirits, LLC, CA No. 2:14-cv-1182-PMD (D.S. Car., Judge Duffy) (LEMONHEADS vs. LEMON HEAD VODKA) (Trademark Infringement)
  • Societe des Produits Nestle S.A. v. BB Endeavors LLC, Opposition Nos. 91203331 and 91206176 (TTAB 2014) (SKINNY COW vs. SKINNYGIRL, settled) (Trademark)
  • Acer Inc. v. Apple Inc., Opposition No. 91198009 (Consolidated with Opposition Nos. 91198015, 91198990, 91199025, 91199013, 91199027, 91198992, 91199024 and 91199026; lead counsel in oppositions by five opposers) (TTAB 2014) (Smartphone and tablet drawings, applications withdrawn) (Trademark)
  • Booz Allen Hamilton Inc. v. DP Consulting, Int?l, Case No. D2012-1204 (WIPO 2013) (Domain Name)
  • Booz Allen Hamilton Inc. v. Jo Han, Case No. D2013-1206 (WIPO 2013) (Typosquatting)
  • Booz Allen Hamilton Inc. v. PrivacyProtect.org/ICS Inc., Case No. D2013-0740 (WIPO 2013) (Typosquatting)
  • Ferrara Pan Candy Co., Inc. v. Sweets n'Lolly Pops De R. L. De C.V. , Opposition No. 91207845 (ATOMIC FIREBALL vs. GRANDES BOLAS DE FUEGO RELLENAS, judgment for opposer) (Trademark)
  • Tommy Hilfiger Licensing LLC v. CBM Creative Brands Marken GmbH, Opposition No. 91206744 (FLAG DESIGN v. McNEAL SPORTS + FLAG DESIGN, judgment for Opposer) (Trademark)
  • Ferrara Pan Candy Co., Inc. v. 1650 Broadway Associates Inc. dba Ellen's Stardust Diner, Opposition No. 91208271 (ATOMIC FIREBALL vs. ATOMIC FLOATS, judgment for Opposer) (Trademark)
  • Lance Armstrong Foundation v. BS4L, Inc. , Opposition Nos. 91201140 and 91202333 (LIVESTRONG vs. B STRONG 4 LIFE; oppositions withdrawn) (Trademark)
  • Tommy Hilfiger Licensing LLC v. Michael Dagostino, Opposition No. 91206146 (TOMMY HILFIGER vs. TOMMY BEACH, judgment for Opposer) (Trademark)
  • Suncast Corp. v. PBM Group, Inc. , C.A. No. 1:12-cv-00963 (N.D. Ill., Judge Pallmeyer) (settled) (Trademark, Trade Dress Infringement)
  • KLN Enterprises, Inc. v. Ferrara Pan Candy Co., Inc. , C.A. No. 0:12-cv-00365-DWF-LIB (D. Minn. 2012, Judge Frank) Opposition Nos. 91200871 and 91203729 (PEANUTHEAD vs. NUTHEADS, settled) (Trademark, Declaratory Judgment)
  • Quady Winery Inc. v. Freixenet, S.A. , C.A. No. 1:11-cv-01474-AWI-BAM (E.D. Cal., Judge Ishii), Opposition No. 91198984 (ELYSIUM vs. FREIXENET ELYSSIA, settled) (Trademark Infringement)
  • Freixenet, S.A. , v. Salentein Argentina B.V. , Opposition No. 91203897 (TAPENA vs. LA TAPERA, judgment for Opposer) (Trademark)
  • Black Rush Mining LLC, et. al v. Black Panther Mining LLC, et. al, C.A. No. 1:11-cv-03257, (N.D. Illinois 2011, Judge Castillo) (Transferred to S.D. Indiana per defendant's motion) (Breach of Contract)
  • Ferrara Pan Candy Co., Inc. v. Mantle Products, Inc. , Opposition No. 91201690 (ATOMIC FIREBALL vs. ORIGINAL ATOMIC ENERGY BITES, judgment for Opposer) (Trademark)
  • Acer Inc. v. Arch Computer, LLC, Opposition No. 91200049 (GATEWAY vs. GATEWAYTECH, judgment for Opposer) (Trademark)
  • Ferrara Pan Candy Co., Inc. v. Judson-Atkinson Candies, Inc., Opposition Nos. 85043196 and 85044258 (ATOMIC FIREBALL vs. GREAT BALLS OF FIRE, settled) (Trademark)
  • Acer Inc. v. Minntech Corp., Opposition No. 91198133 (TTAB 2011) (ACER v. A-CER, application withdrawn) (Trademark)
  • Sun Products Corp. v. American Greetings Corp. and Those Characters from Cleveland, Inc., Case No. 1:2010-cv-00438 (D. Del. 2010, Judge Stark) (SNUGGLE bear v. CARE BEARS, settled) (Trademark, Trade Dress, Patents)
  • CNH America LLC v. Davis Equipment Sales & Service, Inc., Case No. 4:2010-cv-00141 (S.D. Ind. 2010, Judge Young) (Continuing trademark use by former dealer, judgment for Plaintiff including attorneys' fees) (Trademark)
  • Ferrara Pan Candy Co., Inc. v. Alanric Food Distributors, Inc., Opposition No. 91193541 (TTAB 2010) (Judgment for opposer) (Trademark)
  • Segura Viudas, S.A. v. United States Distilled Products Co., Opposition No. 91197154 (TTAB 2010, application withdrawn) (Trademark)
  • Booz Allen Hamilton, Inc. v. Yukio Hatoyama (Arbitral Tribunal, New Delhi) (Internet, E-Commerce and Computer Technology)
  • Linear Technology Corp. v. EldoLAB Holding B.V., Opposition No. 91197192 (TTAB 2010) (Trademark)
  • Oracle America, Inc. v. DomZilla Ltd. Case No. FA1009001348714 (NAF 2010) (recovered 21 domain names) (Internet, E-Commerce and Computer Technology)
  • Acer Inc. v. LiquidBits, Inc., Opposition No. 91192882, (TTAB Oct. 26, 2010) (Trademark)
  • Gateway US Retail, Inc. v. Asustek, Inc., Opposition No. 91182947 (TTAB 2010) (Trademark)
  • Acer Inc. v. Acer Exhibits & Events, Opposition No. 91193023 (TTAB April 12, 2010) (Trademark)
  • Asian & Western Classics, B.V. v. Joan Selkow, Cancellation No. 92048821 (TTAB 2010) (Trademark)
  • Auto Meter Products, Inc. v. Maxima Technologies & Systems, LLC, Case No. 1:2005cv04587 (N.D. Ill. 2009, Judge Andersen) (trademark and trade dress case involving automotive aftermarket gauges, settled after fact and expert discovery) (Trademark)
  • MediaLive International, Inc., Case No. FA0507000520527 (NAF 2005) (Internet, E-Commerce and Computer Technology)
  • Linear Technology Corp. v. Maxlinear, Inc., Opposition No. 91172470 (TTAB 2009) (Trademark)
  • Qantas Airways Ltd. v. Boushie, Opposition No. 91189115 (TTAB 2009) (Trademark)
  • Ticketmaster Corporation (plaintiff in multiple cases for domain name infringement), Case Nos. D2008 0051, D2008 0579, D2008 0665, D2008 0578, D2008 0577, D2008 0439, D2008 0350, D2008 0349, D2008 0388, D2008 1330, D2008 1331, D2008 1479, D2008 1494, D2008 1495, D2008 1491, D2008 1509, D2008 1519, D2008 1510, D2008 1655 (WIPO 2008) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2008 0051, D2008 0493, D2008 0063, D2008 0054, D2008 0062, D2008 0053, D2008 0485, D2008-1821 (WIPO 2008) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corp. v. Darling, Bob, Case No. D00006454 (Nominet UK Dispute Resolution Service 2008) (domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corporation (plaintiff in multiple cases for domain name infringement), Case Nos. D2008-0579, D2008-0578, D2008-0577, D2008-0439, D2008-0350, D2008-0349 (WIPO 2008) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Slazengers Ltd. v. The Sports Authority, Inc., Case No. 1:2007-cv-01024 (E.D. Va. 2008, Judge O'Grady) (gray market golf ball case) (Trademark)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2008-0493, D2008-0485, D2008-0063, D2008-0054, D2008-0052, D2008-0051 (WIPO 2008) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corp. v. DeVane, Case No. 7:2007-cv-00196 (E.D.N.C. 2008, Judge Fox) (Recovered ticketmastgerevent.com and enjoined defendant) (Cybersquatting)
  • Ticketmaster Corp. v. Whiteman, Case No. 2:2007-cv-02422 (D. Ariz. 2008, Judge Bolton) (Recovered azticketmaster.com and enjoined defendant) (Cybersquatting, Trademark)
  • Ticketmaster Corp. v. Chernow, Case No. 3:2007-cv-06075 (N.D. Cal. 2008, Judge Ware) (Recovered bigticketmaster.com and enjoined defendant) (Cybersquatting)
  • Ticketmaster Corporation, Case No. D2007 1921 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2007 1439, D2007 1440 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Venetian Casino Resort, LLC, Case No. D2007 0048 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc., Case No. D2007 0804 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Franchise Services, Inc., Case No. FA0702000913862 (NAF 2007) (Internet, E-Commerce and Computer Technology)
  • Danone Asia Pte. Ltd. & Amoy Food Ltd. v. Best Food Services Inc., Case No. 1:2005cv04999 (N.D. Ill. 2007, Judge Moran) (counterfeit soy sauce seized and distribution enjoined) (Trademark Infringement)
  • Gateway, Inc. v. Evalue Technology, Opposition No. 91169415 (TTAB 2007) (Opposition sustained) (Trademark)
  • Sun Microsystems, Inc., Case No. DIR2006 0005 (WIPO 2006) (Internet, E-Commerce and Computer Technology)
  • Linear Technology Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2006 0699, D2006 1382 (WIPO 2006) (Internet, E-Commerce and Computer Technology)
  • Las Vegas Sands, LLC (plaintiff in multiple cases for domain name infringement), Case Nos. D2006 0982, D2006 1377, D2006 0979, D2006 0981, D2006 0978, D2006 0980 (WIPO 2006) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2006 0913, D2006 0604, (WIPO 2006) (Internet, E-Commerce and Computer Technology)
  • Zagat Survey, LLC, Case No. FA0311000210304 (NAF 2006) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corporation (plaintiff in multiple cases for domain name infringement), Case Nos. FA0608000783217, FA0607000744436, FA0608000783217 (NAF 2006) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0605000706689, FA0603000664931 (NAF 2006) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0605000706689, FA0603000664931 (NAF 2006) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc., Case No. D2005 0699 (WIPO 2005) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0506000491742, FA0506000491749, FA0506000491749 (NAF 2005) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corp., Case No. FA0508000528200 (NAF 2005) (Internet, E-Commerce and Computer Technology)
  • Ticketmaster Corp. v. Hotline Entertainment, Inc., Case No. DCA-881-CIRA (Canadian Internet Registration Authority 2005) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Electric Power Research, Opposition No. 91162057 (TTAB 2005) (Opposition sustained) (Trademark)
  • JLJ Inc. v. Santa's Best Craft LLC and Monogram Licensing, Inc., Case No. 3:2002-cv-00513 (S.D. Ohio 2005, Judge Rose) (Trademark infringement and false advertising case over seasonal holiday lights packaging and branding; settled after fact and expert discovery and mediation) (Trademark, Advertising)
  • Emachines, Inc. v. Overstock.com, Opposition No. 91163235 (TTAB 2005) (Defendant withdrew trademark application) (Trademark)
  • Ticketmaster Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2004 0060, D2004 0400 (WIPO 2004) (Internet, E-Commerce and Computer Technology)
  • Match.com, LP, Case No. D2004 0230 (WIPO 2004) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0409000328532, FA0408000307330 (NAF 2004) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Emma J. Barkuloo Trust, Opposition No. 91115538 (TTAB 2004) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. Entridia Corporation, Opposition No. 91125577 (TTAB 2004) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. SWP Net Inc., Cancellation No. 92040500 (TTAB 2004) (Cancellation granted) (Trademark)
  • Gateway, Inc. v. Group III International Ltd., by assignment from Gateway Luggage Co., Inc., Cancellation No. 92042393 (TTAB 2004) (Registration cancelled) (Trademark)
  • Gateway, Inc. v. The Linksys Group, Inc., Opposition No. 91155818 (TTAB 2004) (Trademark)
  • Ticketmaster Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2003 0905, D2003 0397, D2003 0346 (WIPO 2003) (Internet, E-Commerce and Computer Technology)
  • Match.com, LP (plaintiff in multiple cases for domain name infringement), Case Nos. D2003 0505, D2003 0510 (WIPO 2003) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2003 0261, D2003 0257 (WIPO 2003) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc., Case No. D2003 0933 (WIPO 2003) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119728 (TTAB 2003) (Trademark)
  • The Straumann Co. v. Lifecore Biomedical, Inc., Case No. 1:2000cv10602 (D. Mass. 2003, Judge Lindsay) (Trademark Infringement)
  • Gateway, Inc. v. Wireless Retail, Opposition No. 91156742 (TTAB 2003) (Trademark)
  • World Book, Inc. v. Worldbookdealers.com Limited, Case No. 1:2002cv06937 (N.D. Ill. 2003, Judge Norgle, Sr.) (Trademark Infringement)
  • Gateway, Inc. v. Ishoni Networks, Opposition No. 91125572 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119791 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway Corp., Opposition No. 91121354 (TTAB 2003) (Trademark)
  • Gateway, Inc. v. Netgateway, Inc., Opposition No. 91119722 (TTAB 2003) (Trademark)
  • Netgateway Inc. v. Gateway, Inc., Cancellation No. 92031240 (TTAB 2003) (Proceeding dismissed with prejudice) (General)
  • Ticketmaster Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2002 0992, D2002 01018, D2002 0944, D2002 0167, D2002 0166, D2002 0165 (WIPO 2002) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc., Case No. DBIZ2002 00208 (WIPO 2002) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2002 0656, D2001 0243 (WIPO 2002) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. FA0206000114621, FA0204000112537, FA0204000112539, FA0112000102723 (NAF 2002) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. International Data Group, Cancellation No. 92032845 (TTAB 2002) (Registration cancelled) (Trademark)
  • Gateway, Inc. v. New Gateway, Inc., Opposition No. 91151284 (TTAB 2002) (Opposition sustained) (Trademark)
  • Key3Media Events, Inc, Case No. 109E94243112R60 (NAF 2002) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. MacChina LLC, Opposition No. 91123947 (Opposition sustained) (Trademark)
  • Gateway, Inc. v. Software Technologies, Opposition No. 91117912 (TTAB 2002) (Trademark)
  • Key3Media Events, Inc. v. Convention Connection, Inc., et al., 2002 WL 385546, (D. Nev. 2002, Judge Dawson) (final judgment in favor of Key3Media Events, Inc.) (Trademark Infringement)
  • Ticketmaster Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2001 0252, D2001 0720, D2001 0720, D2001 0906, D2001 0716, D2001 1304, Dinfo2001 00485 0001, DINFO 2001 00148 00001 (WIPO 2001) (Internet, E-Commerce and Computer Technology)
  • Key3Media Events, Inc., Case No. D2001 00004 (DTV2001 0004) (WIPO 2001) (Internet, E-Commerce and Computer Technology)
  • Budget Rent a Car Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2001 0772, D2001 1056, Dinfo2001 00058 00001 (Afilias Sunrise Registration Challenge) (WIPO 2001) (Internet, E-Commerce and Computer Technology)
  • Booz Allen Hamilton, Inc., Case No. D2001 0243 (WIPO 2001) (Internet, E-Commerce and Computer Technology)
  • Montblanc Simplo GmbH v. Savonnerie et Perfumerie Bernard, Case No. 1:2001cv01173 (E.D. Va. 2001, Judge Ellis, III) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. AFX Technology Group, Opposition No. 91120401 (TTAB 2001) (Opposition sustained) (Trademark)
  • Gateway, Inc. v. Ericsson Inc., Opposition No. 91121060 (TTAB 2001) (Opposition sustained) (Trademark)
  • Spacenet, Inc. v. Spacenet, Inc., Case No. 6:2001cv00259 (M.D. Fla. 2001, Judge Conway) (Trademark)
  • Gateway Systems, Inc. v. Gateway 2000, Inc., Opposition No. 91117634 (TTAB 2001) (Proceeding dismissed with prejudice) (Trademark)
  • Ticketmaster Corporation (plaintiff in multiple cases for domain name infringement), Case Nos. D2000 1551, D2000 1550 (WIPO 2000) (Internet, E-Commerce and Computer Technology)
  • Budget Rent a Car Corp. (plaintiff in multiple cases for domain name infringement), Case Nos. D2000 0986, D2000 0663, D2000 1020 (WIPO 2000) (Internet, E-Commerce and Computer Technology)
  • General Electric Co. (plaintiff in multiple cases for domain name infringement), Case Nos. D2000 0394, D2000 0343, D2000 0344 (WIPO 2000) (Internet, E-Commerce and Computer Technology)
  • Sun Microsystems, Inc., Case No. D2000 0002 (WIPO 2000) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. (plaintiff in multiple cases for domain name infringement), Case Nos. D2000 0767, D2000 0198, D2000 0106, D2000 0129, D2000 0109, D2008 0052 (WIPO 2000) (Internet, E-Commerce and Computer Technology)
  • Gateway, Inc. v. Gateway Systems, Inc., Case No. 1:200cv00316 (N.D. Ill. 2000, Judge Hibbler) (Trademark Infringement)
  • Gateway 2000, Inc. v. Softbahn, Inc., Opposition No. 91112204 (TTAB 2000) (Opposition sustained) (Trademark)
  • Gateway 2000, Inc. v. Stew Leonard's, Opposition No. 91104890 (TTAB 1999) (Opposition sustained) (Trademark)

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Professional Activities

  • AIPPI US Group Nominating Committee : Chair
  • American Bar Association Section of Intellectual Property Law : Liaison with Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) (2012-13)
  • Association Internationale pour la Protection de la Propriete Intellectuelle United States Working Committee on Q214 on Trademark Dilution : Chair
  • American Bar Foundation : Fellow
  • American Bar Association Intellectual Property Law Section : Former Chair
  • Association Internationale pour la Protection de la Propriete Intellectuelle United States : Past President (2004-2006)
  • Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) : Executive Committee Member
  • International Trademark Association : Former Board member
  • American Intellectual Property Law Association (AIPLA) : Former Board member
  • Northwestern Journal of Technology and Intellectual Property Law : Former Advisory Board member
  • The Trademark Reporter : Former Editorial Board Member
  • Trademark Public Advisory Committee : Former Member
  • Lawyers Club of Chicago : Former Board member

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Publications

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Presentations

  • "Use of Survey Evidence in Trademark Cases," AIPPI World Intellectual Property Congress, Toronto (September 2014)
  • "Fair Use of Trademarks and Creative Works in Advertising," an International Franchise Association Business Solution Roundtable at the IFA 47th Annual Legal Symposium, Chicago, IL (May 2014)
  • "The Ethics of Deception," Intellectual Property Law Association of Chicago Annual Meeting, Chicago, IL (November 2013)
  • "Register Clogging and Goods/Services Designation: US versus The European Model," FICPI ExCo Meeting & 13th Open Forum, Rome, Italy (November 2011).
  • "Border Measures and Goods in Transit," AIPPI Forum & ExCo 2011, Hyderabad, India (October 2011).
  • "Brand Power through Strategic IP Management," Moderator, Northwestern University's Kellogg School of Management (September 2011).
  • "The Functional Boundary of Trademark Rights," Intellectual Property Owners Annual Meeting, Los Angeles, CA (September 2011).
  • "The Ethics of Deception," Fourth Annual Conference on Legal Ethics in the Practice of IP Law, The Center for Intellectual Property Law at John Marshall Law School, Chicago, IL (April 2011).
  • "Workshop on Non-Traditional Trademarks, Especially 3D Trademarks," Moderator/Speaker, AIPPI 42nd World Intellectual Property Congress, Paris (October 2010).
  • "The Ethics of Deception," Colorado Bar Association, Denver, CO (April 2010).
  • "The Impending, Controversial Expansion of the gTLD Space," Intellectual Property Owners (IPO) Association's Annual Meeting, Chicago, IL (September 2009).
  • "Well-Known and Famous Marks" (Workshop Moderator), 41st AIPPI World Congress, Boston (September 2008).
  • "Trademark Cases in the International Trade Commission," AIPPI/ASIPI Meeting, Mexico City (April 2008).
  • "Ten Things Every Brand Owner Should Know About Anti-Counterfeiting and Piracy," Panel Member, IPO Annual Meeting, Chicago (2006).
  • "Survey Evidence in Trademark Cases," Panel Moderator, AIPPI 40th World Intellectual Property Congress, Gothenburg, Sweden (2006).
  • "The Madrid Link to the Community Trade Mark System," AIPLA Spring Meeting, Chicago (September 2006).
  • "Ethical Issues Involving Pretext Investigations in Trademark Infringement Cases," INTA Trademark Administrators Conference, Chicago (September 2005).
  • "A Consumer's View of the UDRP Process," World Intellectual Property Organization(WIPO)/ABA Program on Mediation And Arbitration Of Intellectual Property Disputes, New York (2005).
  • "Mediation and Arbitration of Intellectual Property Disputes," United Nations headquarters, New York City, NY, jointly sponsored by the World Intellectual Property Organization (WIPO) and the ABA Section of Intellectual Property Law (March 2005).
  • "The Ethics and Implementation of Pretext Investigations," International Trademark Association's Trademark Administrators Conference, Chicago, Illinois (September 2005).
  • "Practical Consequences of Case Law Granting Protection as Registered Trademarks of Descriptive Marks and Determination of Their Scope of Protection," 39th AIPPI World Congress, Geneva, Switzerland (June 2004).
  • "Ideas Into Action: Implementing Reform of the Patent System," FTC Conference at the University of California, Berkeley's Boalt Hall School of Law (April 2004).
  • "U.S. Trademark Clearance In View Of The Madrid Protocol," 14th Annual All-Ohio Annual Institute on Intellectual Property, Cleveland and Toledo (September 2004).
  • "Madrid, and Other Harmonies And Discords In International Trademark Law," Michigan State Bar, 30th Annual Intellectual Property Law Summer Institute, Mackinac Island (July 2004).
  • "Trademark Dilution in the United States," IBC Conferences IP Law Summer School, Cambridge, England (2003).
  • "Trademark Piracy and Dilution -- From Bricks To Clicks," IPO Annual Meeting, Chicago (2003).

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