Thad Chaloemtiarana

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312-554-7973

tc@pattishall.com

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I'm CEO of a growing business. How might your work help me protect my business?

I've been engaged in copyright, trademark and information technology matters since I began practicing law over a decade ago. My experience includes both federal court litigation and transaction work, including negotiation and licensing of all kinds of intellectual property rights in a wide variety of areas.

I've litigated cases involving copyright infringement, trademark and trade dress infringement, dilution, unauthorized importation of grey market goods, breach of contract, and domain name cybersquatting. I am also experienced in both arbitration and mediation proceedings.

I have extensive experience in drafting and negotiating many types of transactions, including technology development, integration and licensing agreements; website development and hosting agreements; on-line content and branding agreements; and trademark license, manufacturing and distribution agreements.

I manage, prosecute and enforce the worldwide trademark portfolios for several international companies.

What makes Pattishall's approach to IP law different?

We don't take a cookie-cutter approach to IP issues. Our strategy in every situation is to use the tools necessary to get the right result for that client. Sometimes that means a quick settlement, and other times it means a new agreement. Sometimes we use litigation, arbitration or mediation to protect valuable brand assets.

Because we do both transactional and litigation-related representation, we understand the broad range of options available that can assist a client with an IP problem. In some cases, a new business relationship may benefit a client more than a successful lawsuit.

What are your areas of concentration?

I concentrate in trademarks, copyright, licensing and due diligence, Internet and e-commerce, domain names, brand development and protection, and advertising and promotions.

I see that Pattishall has broad industry experience. What industries have you represented?

Retailing; Food, Beverage & Tobacco; Materials; Telecommunications; Software & Services; and Media, among others.

Can you describe some of the recent issues you've dealt with in your substantive areas?

Recently, I prepared agreements for clients for the development, hosting and maintenance of websites that are optimized for the .mobi top level domain name. These sites are specifically geared towards visitors who access the sites through mobile phones, WAP devices, etc. Companies convert our clients' robust and dynamic general websites into sites that are easier to view on-and more quickly downloaded onto-mobile phones and similar devices. These agreements present issues similar to ordinary website development and managed services agreements, including: identification of each party's respective intellectual property rights (and the respective representations, warranties and indemnification obligations associated with those rights), ownership and privacy of data transmitted through the .mobi sites, identification of development milestones and deadlines, and identification of the appropriate service level obligations for hosting and managing the websites.

I've also drafted a marketing and development agreement for a provider of wireless access points throughout the country whereby our client`s software could be embedded in Wi-Fi mobile phones. These phones allow for long-distance calls via the Internet (VOIP) provided that the caller has access to a Wi-Fi network.

In the retail industry, we recently engaged in a Trademark Trial and Appeal Board opposition proceeding on behalf of a major paint manufacturer against a competitor who applied to register a confusingly similar mark for paint. We later filed a trademark infringement suit in the federal district court in Delaware. That case recently settled, with the defendant agreeing to abandon its application and cease all use of their mark.

On behalf of a major tool manufacturer, we obtained judgment in a trade dress infringement and dilution action against a competitor's sale of a line of power tools which used an infringing trade dress.