Seth I. Appel

Phone: 312-554-7984

Email: sia@pattishall.com

Bio

Education

  • Columbia Law School (J.D. 2004)
  • Cornell University (B.A. 2000)

Bar Admissions

Illinois
California

Court Admissions

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Industry Expertise

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Representative Trials, Appeals & Litigation

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Professional Activities

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Representative Publications

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Representative Presentations

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Seth I. Appel

Seth works with clients across a broad range of industries to protect and enforce their intellectual property. His practice covers all aspects of trademark, copyright, unfair competition and false advertising law, including IP clearance, prosecution, licensing, and enforcement. Seth has extensive experience litigating in federal and state courts and before the Trademark Trial and Appeal Board.

Seth currently serves as Co-Chair of the Copyright Society of the USA, Midwest Chapter. He also has been appointed to the Editorial Board of the Journal of the Copyright Society.

Seth is a regular contributor to AIPPI e-News, the bimonthly newsletter of the International Association for the Protection of Intellectual Property. His other publications include co-authorship of "Shoot First and Ask Questions Later? The Impact of MedImmune v. Genentech on Declaratory Judgment Actions in Trademark Disputes," published in Volume 100 of The Trademark Reporter. Seth also is active in the International Trademark Association and the American Bar Association, Intellectual Property Law Section, where he recently served on a task force addressing the constitutionality of the Trademark Act's prohibition against registration of disparaging marks.

Seth earned a J.D. from Columbia Law School in 2004. He earned a B.A. in history from Cornell University in 2000, where he was a news and feature reporter for the Cornell Daily Sun. Before joining Pattishall, McAuliffe, Seth practiced intellectual property law for six years in San Francisco, California.

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Food & Beverage
  • Hotels, Restaurants & Leisure
  • Household & Personal Products
  • Media
  • Online Gaming and Entertainment
  • Pharmaceuticals & Biotechnology
  • Retailing
  • Software & Services
  • Technology Hardware & Equipment

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Representative Trials, Appeals & Litigation

  • Donnay USA Limited v. Donnay International S.A., International Brand Management Limited, and Brands Holdings Limited, Case No. 15-cv-05969-JMA-SIL (E.D.N.Y., 2015, Judge Azrack) (DONNAY trademark licensee again disputing termination and seeking $240,000,000; dismissed on our motion 9/1/2016; plaintiff has filed an appeal to the Second Circuit, which is pending (No. 16-3067)) (Tort Claims, Trademark License Dispute)
  • Republic Bike Inc. v. Clean Republic SODO LLC, Proceeding No. 91219564 (TTAB 2016) (Trademark)
  • PCH Auto Sales, Inc. v. Cars.com LLC and Tribune Interactive LLC, Case No. 30-2015-00765779-CU-BC-CJC (Cal. Sup. Ct., Orange County 2015) (Breach of Contract, Negligence, Negligence Interference with Prospective Economic Advantage)
  • Donnay USA Limited v. Donnay International S.A., Case No. 2:14-cv-06095-SJF-GRB (E.D.N.Y., 2014, Judge Feuerstein) (DONNAY trademark licensee disputing termination and seeking $2,000,000,000; dismissed with prejudice); on appeal, Case No. 15-2385 (2d Cir. 2015) (appeal dismissed) (Domain Name, Tort Claims, Trademark License Dispute)
  • Icelandair EHF v. Delta Air Lines, Inc., Opposition No. 91204466 (TTAB 2015) (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)
  • Acer Inc. v. Good Shepherd Motorsports LLC, Opposition No. 91219894 (TTAB 2014) (ACER) (Trademark)
  • Tommy Hilfiger Licensing LLC v. Hustletainment, Cancellation No. 92060594 (TTAB 2014) (TH vs. TH T.E.A.M.H.U.S.T.L.E., registration cancelled, judgment in favor of petitioner) (Trademark)
  • Navistar International Corporation v. VistaPrint Technologies, UDRP Case No. FA1410001586755 (Navistar won the UDRP proceeding against VistaPrint and has been awarded the domain name navisttar.com) (Domain Name, UDRP Proceeding)
  • Tommy Hilfiger Licensing LLC v. Hard Tek, LLC, Opposition No. 91219100 (TTAB 2014) (TH vs. TH Hard Tek, opposition sustained, judgment entered in favor of opposer) (Trademark)
  • American Fidelity Assurance Co. v. American Fidelity Financial Services, Inc., Case No. 1:14-cv-07747 (N.D. Ill. 2014, Judge Zagel) (Trademark Infringement)
  • Tommy Hilfiger Licensing LLC v. Jami Jurgens, Opposition No. 91216937 (TTAB 2014) (TOMMY GIRL vs. TOMGIRL) (Adverse application amended by agreement) (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., 2014, Judge Duffy) (LEMONHEADS vs. LEMON HEAD VODKA) (Use of adverse mark terminated and adverse application abandoned) (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)
  • Navistar, Inc. v. Zhilan Song, Opposition No. 91207197 (TTAB 2013) (Pattishall client Navistar Inc., through its International Truck Intellectual Property subsidiary, owns the PROSTAR trademark for trucks and successfully opposed a USPTO application to register PROSTAR for certain tires. Pattishall attorneys Brett August, Seth Appel and Andrew Hughes represented Navistar in moving for summary judgment. While that motion was pending, the parties entered into a settlement agreement by which the applicant agreed to abandon its application and to limit significantly its use of PROSTAR.) (Trademark)
  • Navistar International Corporation v. Larry Jones, Opposition No. 91210107 (TTAB 2013) (Trademark Opposition)
  • 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)
  • Medline Industries, Inc. v. Kyungeh An, Case No. 1470333 (NAF 2012) (domain name transferred to client) (Domain Name)
  • 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)
  • Suncast Corp. v. PBM Group, Inc. , C.A. No. 1:12-cv-00963 (N.D. Ill., Judge Pallmeyer) (settled) (Trademark, Trade Dress Infringement)
  • Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed in favor of Ritzenhoff) (Trademark Infringement)
  • Cloverhill Pastry-Vend, LLC v. Delegans, Edie, Opposition No. 91204691 (TTAB 2012) (opposition sustained) (Trademark)
  • SWIMC, Inc. v. True Value Company, Opposition No. 91201631 (TTAB 2012) (Trademark)
  • Medline Industries, Inc. v. Merritt DeLaughter, Case No. 1451721 (NAF 2012) (domain name transferred to client) (Domain Name)
  • Weyerhaeuser NR Company v. Robert Bosch Tool Corporation, Case No. 2:12-cv-00793 (N.D. Ill. 2012, Judge Lee) (Trademark Infringement, Unfair Competition)
  • 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)
  • Freixenet, S.A. , v. Salentein Argentina B.V. , Opposition No. 91203897 (TAPENA vs. LA TAPERA, judgment for Opposer) (Trademark)
  • Weyerhaeuser NR Company v. Robert Bosch Tool Corporation, Case No. 2:11-cv-01793 (D. Nev. 2011, Judge Mahan) (case transferred to the U.S. District Court for the Northern District of Illinois) (Trademark Infringement, Unfair Competition)
  • Ferrara Pan Candy Co., Inc. v. Mantle Products, Inc. , Opposition No. 91201690 (ATOMIC FIREBALL vs. ORIGINAL ATOMIC ENERGY BITES, judgment for Opposer) (Trademark)
  • EMC Corp. v. Promise Technology, Inc., Opposition No. 91201616 (TTAB 2011) (Trademark)
  • Liquidmetal Technologies, Inc. and Crucible Intellectual Property LLC v. Freud America, Inc., Case No. 2:11-cv-05204 (C.D. Ca. 2011; J. Morrow) (Trademark Infringement, Unfair Competition)
  • ACT, Inc. v. ACT Certification, Opposition No. 91198246 (TTAB 2011) (opposition sustained) (Trademark)
  • Ritzenhoff AG v. Bennett, Case No. 1405447 (NAF 2011) (domain names transferred to client) (Domain Name)
  • Intel Corporation v. Pentium Capital, WIPO Case No. D2011-0638 (Domain Name)
  • General Electric Company v. Group Excellence Ltd., Opposition No. 91192824 (TTAB 2011) (Trademark Opposition)
  • The Republic of Tea, Inc v. S. Martinelli & Co., Opposition No. 91193903 (TTAB 2011) (Trademark Opposition)
  • Twentieth Century Fox Film Corporation v. Renegade Classics, Case No. 2:10-cv-8565) (C.D. Cal. 2011) (Trademark, Copyright Infringement)
  • Rockstar, Inc. v. Original Good Brand Corporation, Case No. 2:09-cv-01499 (D. Nev. 2011) (Breach of Contract)
  • Intel Corporation v. NTel, Inc., Cancellation No. 92049952 (TTAB 2010) (Trademark Cancellation)
  • Palmiche Press v. Linda Ventriglia, Case No. 2:10-cv-00649 (E.D. Cal. 2010) (Copyright Infringement)
  • Super7 v. Stan Lee, et al., Case No. 4:10-cv-03442 (N.D. Cal. 2010) (Trademark Infringement)
  • Dwell LLC v. Moinian Development Group, LLC, Case No. 1:08-cv-07995 (S.D.N.Y. 2009) (Trademark Infringement)
  • Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (Domain Name)
  • Intel Corporation v. Base ltd Tihame.net, WIPO Case No. D2008-1820 (Domain Name)
  • Intel Corporation v. Harris Corporation, Opposition No. 91185763 (TTAB 2009) (Trademark Opposition)
  • Frank Nemirofsky v. Seok Ki Kim and STV Asia, Ltd., Case No. 3:07-cv-02769) (N.D. Cal. 2009) (Breach of Contract)
  • Sunkist Growers Inc. v. Dover Publications, Inc., Case No. 5:09-cv-01708 (C.D. Cal. 2009) (Trademark Infringement)
  • Thanco Products & Imports, Inc. v. George Vlasios Kontos, Case No. 4:08-cv-03046 (S.D. Tex. 2009) (Trademark Infringement)
  • Weiner v. JMBP Inc., Opposition No. 91170202 (TTAB 2009) (Trademark Opposition)
  • Matson & Isom Technology Consulting v. Dell Inc., Case No. 2:08-cv-00683 (E.D. Cal. 2008) (Trademark Infringement)
  • Hansen Beverage Company v. Rockstar, Inc, 2:06-cv-00733 (D. Nev. 2006) (Trademark, Trade Dress Infringement)

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Professional Activities

  • AIPPI U.S. Group Report on the Study Question "Bad Faith Trademarks," AIPPI World IP Congress : Member
  • The Copyright Society of the U.S.A., Midwest Chapter : Co-Chair
  • Journal of the Copyright Society of the U.S.A. : Editorial Board Member
  • Northwestern Law School Intellectual Property Law Society : Mentor
  • International Trademark Association, Non-Traditional Marks Committee (2010-2011 Committee Term; 2012-2013 Committee Term) : Member
  • American Bar Association, Intellectual Property Section : Member
  • Intellectual Property Law Association of Chicago : Member
  • California Lawyers for the Arts : Member

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Representative Publications

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Representative Presentations

  • "Freedom of Registration? THE SLANTS, REDSKINS and Registration of Disparaging Marks," AIPPI-US Global IP Educational Forum, Chicago, IL (July 2017)
  • "Hot Issues in the TTAB," John Marshall 59th Annual Intellectual Property Law Conference, Chicago, IL (February 2015)
  • "Copyright Basics," San Francisco Paralegal Association (May 2009)
  • "Copyright: What Every Artist Should Know," Napa Valley Artists Association (February 2009)

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Court Admissions

  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Northern District of California

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