Thad Chaloemtiarana

Phone: 312-554-7973

Email: tc@pattishall.com

Bio

Education

  • Harvard Law School (J.D., cum laude, 1996; Technical Editor, Harvard International Law Journal)
  • Pennsylvania State University (B.A., with highest distinction and honors, 1993; Phi Beta Kappa)

Bar Admissions

Illinois

Court Admissions

View List

Industry Expertise

View List

Honors & Awards

View List

Representative Trials, Appeals & Litigation

View List

Professional Activities

View List

Representative Publications

View List

Representative Presentations

View List

Thad Chaloemtiarana

''When internet issues crop up, Thad...is first port of call; he has an encyclopaedic knowledge of domain name and IT law.''





Thad Chaloemtiarana has focused his entire career on trademark, unfair competition, copyright and information technology matters. His 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. He manages, prosecutes and enforces the worldwide trademark portfolios for several international companies.

Thad has litigated cases involving trademark and trade dress infringement, counterfeiting, false advertising and unfair competition, dilution, unauthorized importation of grey market goods, copyright infringement, breach of contract, and domain name cybersquatting. He also has 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.

Thad serves as Membership Officer for the American Bar Association's Section of Intellectual Property Law--the largest intellectual property association in the world. As Membership Officer and a member of Council, Thad is responsible for establishing the public policies and positions of the Section. He also served as Chair of the Trademark Division and on the Nominating Committee for the Section. For many years, Thad was an Adjunct Professor of Intellectual Property Law at Northwestern University School of Law, where he taught a class on Trademarks and Unfair Competition Law.

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Hotels, Restaurants & Leisure
  • Media
  • Retailing
  • Food & Drug Retailing
  • Food, Beverage & Tobacco
  • Household & Personal Products
  • Health Care Equipment & Services
  • Pharmaceuticals & Biotechnology
  • Commercial Services & Supplies
  • Software & Services
  • Technology Hardware & Equipment
  • Materials
  • Telecommunication Services

back to top

Honors & Awards

  • 2017 World Trademark Review (WTR) 1000 : "Thad Chaloemtiarana is also adept at dealing with issues in the digital realm, specifically in the pursuit of domain name squatters. The versatile attorney recently secured a permanent injunction for Robert Bosch in a multi-faceted case involving claims of trademark infringement, counterfeiting, false advertising and unfair competition."
  • 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
  • 2017 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2016 Leading Lawyers : Recognized as a Leading Lawyer in Copyright & Trademark Law and Computer & Technology Law for the State of Illinois
  • 2016 World Trademark Review (WTR) 1000 : "When internet issues crop up, Thad Chaloemtiarana is first port of call; he has an encyclopaedic knowledge of domain name and IT law."
  • 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property
  • 2016 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2015 The Legal 500 United States : Recognized for trademark litigation experience
  • 2015 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2015 World Trademark Review (WTR) 1000 : Placed in the Bronze Band in Illinois for "enforcement and litigation"
  • 2014 Leading Lawyers Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law and Computer & Technology Law for the State of Illinois
  • 2014 American Bar Foundation : Nominated by his peers to be a Fellow of the American Bar Foundation, an honor limited to less than one percent of the lawyers admitted to practice in the United States.
  • 2014 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
  • 2012 Marquis Who's Who in the World : Recognized
  • 2012 Marquis Who's Who in America : Recognized
  • 2010 The Law Bulletin Publishing Company, publishers of Chicago Lawyer and the Chicago Daily Law Bulletin : Recognized as one of the "40 Illinois Attorneys Under Forty to Watch" for 2010

back to top

Representative Trials, Appeals & Litigation

  • Bosch Sicherheitssysteme GmbH v. Boost Software, Opposition No. 92064698 (TTAB 2016) (Abandonment)
  • Robert Bosch GmbH and Robert Bosch LLC v. North Shore Imports, L.L.C., Case No. 8:16-cv-00942-T-24-MAP (M.D. Fla. 2016) (permanent injunction granted) (Counterfeiting, Trademark Infringement, Unfair Competition)
  • Robert Bosch GmbH v. Matthew Boesch, Opposition No. 91228367 (TTAB 2016) (Trademark)
  • Lenovo (Singapore) Pte. Ltd. v. Robert Bosch GmbH, TTAB Opposition No. 91225204 (TTAB 2016) (Obtained withdrawal with prejudice of opposition) (Trademark)
  • American Bridal and Prom Industry Association, Inc. et al v. John Does 1-100 (V-Bridal), Case No. 1:16-cv-00023 (N.D. Ill. 2016) (Case dismissed for lack of personal jurisdiction, preliminary injunction denied) (Trademark Infringement, Copyright Infringement)
  • Hoopla.com, LLC v. Midwest Tape, LLC, Opposition No. 92062087 (TTAB 2015) (HOOPLA; Settled, obtained withdrawal of petition to cancel with prejudice) (Trademark)
  • The Sherwin-Williams Company v. The Wooster Brush Company, Case No. 5:12-cv-03052-JRA (N.D. Ohio 2015, Judge Adams) (granting The Sherwin-Williams Company's motion for partial summary judgment, in part, and denying defendant's motion for summary judgment in its entirety) (Trade Dress, Unfair Competition)
  • 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)
  • Robert Bosch GmbH and Robert Bosch LLC v. Euro-Star Industries, 3:14-cv-01611-JBA (D. Conn. 2015, Judge Arterton) (permanent injunction granted) (Unfair Competition, False Advertising)
  • Robert Bosch GmbH and Robert Bosch LLC v. Deeds Performance and Joshua Deeds, 2:14-cv-08517-BRO-AJW (C.D. Ca. 2015, Judge O'Connell) (permanent injunction and award of $200,000 plus attorneys' fees granted) (Counterfeiting, Trademark Infringement, False Advertising)
  • Nextrade Holdings, Inc. v. Trading Technologies Int'l, Inc., 8:14-cv-1783 (M.D. Fla. 2014) (Trademark Infringement)
  • Tuff-Wall, Inc. v. The Sherwin-Williams Company, 2:13-cv-00099-KS-MTP (S.D. Miss. 2013, Judge Starrett) (Trademark)
  • Robert Bosch GmbH v. Brands Environment Establishment, Opposition No. 91211110 (TTAB 2013) (Trademark)
  • TT of Sand Lake, Inc. d/b/a Central Florida Chrysler Jeep Dodge, a Florida Corporation v. Classified Ventures, LLC, a Delaware limited liability company d/b/a cars.com, Case No. 2013-CA-003441-O (Judge Blackwell) (case dismissed) (Breach of Contract, Constructive Fraud, Deceptive and Unfair Trade Practices)
  • Robert Bosch GmbH v. Brands Environment Establishment, Opposition No. 91209003 (TTAB 2013) (Trademark)
  • FRAM Group Operations, LLC v. Purolator Filters NA, LLC, Case No. 1:12-cv-03040 (N.D. Ill. 2012, Judge Lefkow) (False Advertising)
  • Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. 2012, Judge Duggan) (After three years of litigation, Bosch awarded judgment of over $13 Million, injunction, and destruction order by default on claims for counterfeit and infringing hydraulic brakes, and for false advertising of refurbished brakes as new, genuine Bosch products) (Counterfeiting, Trademark Infringement, Unfair Competition)
  • SWIMC, Inc. v. True Value Company, Opposition No. 91201631 (TTAB 2012) (Trademark)
  • Weyerhaeuser NR Company v. Robert Bosch Tool Corporation, Case No. 2:12-cv-00793 (N.D. Ill. 2012, Judge Lee) (Trademark Infringement, Unfair Competition)
  • 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)
  • 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)
  • Bosch Security Systems, Inc. v. Seaguard Electronics, L.L.C. et al., Case No.: 2:11-cv-356 (D. Nev. 2011, Judge Hicks) (Defendants withdrew infringing trademark application, took down infringing website, and abandoned domain name at issue) (Trademark Infringement, Unfair Competition, Cybersquatting)
  • Eco Pro Painting, LLC v. The Sherwin-Williams Company et al, Case No. 1:2011-cv-00354 (N.D. Ill. 2011, Judge Kennelly) (Trademark Infringement)
  • Bayer HealthCare LLC v. Eighty Business Names, WIPO Case No. D2010-1024 (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • SWIMC, Inc. v. Jack Schwartz Shoes, Inc., Case No. 1:09-cv-526JFF (D. Del. 2009, J. Farnan, Jr.) (Trademark Infringement)
  • 3Com Corporation v. Intellijax Corporation, Opposition No. 91190831 (TTAB 2009) (Trademark)
  • SWIMC, Inc. v. Hy-Tech Thermal Solutions LLC and Hy-Tech Distributors, Inc., Case No. 1:08-cv-0084-SLR (D. Del. 2008, J. Robinson) (Trademark Infringement)
  • Reliant Technologies, Inc. v. Downtown Medical, LLC and Mark K. Sachs, Case No. 08-22882-CIV-Jordan/McAiley (S.D. Fl. 2008; J. Jordan) (Trademark Infringement)
  • Reliant Technologies, Inc. v. Robert L. McDaniel, Case NO. C 3:08-cv-2515 MMC (N.D. Ca. 2008, J. Chesney) (Trademark, ACPA)
  • Microsoft Corporation v. Intertainer, Inc., Cancellation No. 92047551 (TTAB 2007) (Trademark)
  • Hospira Inc. v. Texas International Property Associates, NAF Case No. FA0704000959934 (NAF 2007) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc v. DRS Expired Domain, Case No. D2007-0808 (WIPO 2007) (Internet, E-Commerce and Computer Technology)
  • Encyclopaedia Britannica, Inc. v. Rames Gangaram, Case NO. FA0703000852182 (NAF 2007) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Milwaukee Electric Tool Corporation v. Robert Bosch Tool Corporation, 2007 WL 2875232 (N.D. Ill. 2007, Judge Kendall) (Trademark Infringement)
  • Credo Technology Corporation v. IQ Management Corporation, Case No. D2007-0833 (WIPO 2007) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc (plaintiff in multiple cases for domain name infringement), Case Nos. FA0706000997910, FA0706001015446, FA0706000997970, FA0706000997916, FA0706000997973, FA0706001015100, FA070600097923, FA0706000997914, FA0706000997909 (NAF 2007) (Domain names transferred to client) (Internet, E-Commerce and Computer Technology)
  • Carnival Plc v. Sebastian Szerer, Case No. D2007-0807 (WIPO 2007) (Domain name transferred to client) (Internet, E-Commerce and Computer Technology)
  • 3COM Corp. v. 3COM Services, LLC, Case No. 3:2006-cv-02997 (N.D. Ohio 2007, Judge Carr) (Trademark)
  • SWIMC, Inc. v. Fine Paints of Europe, Inc., Case No. 1:2006-cv-00194, (D. Del. 2006, Judge Farnan, Jr.) (Trademark)
  • Bayer Healthcare LLC v. Nagrom, Inc., 2004 U.S. Dist. Lexis 19454, 72 U.S.P.Q.2d 1751 (D. Kan. 2004, Judge Vratil) (Trademark Infringement)
  • DeJohn v. The .TV Corp. Intern., 245 F.Supp.2d 913 (N.D. Ill. 2003, Judge Manning) (Internet, E-Commerce and Computer Technology)

back to top

Professional Activities

  • Intellectual Property Council, Automotive Aftermarket Suppliers Association : Member
  • American Bar Association Section of Intellectual Property Law : Membership Officer (2016-2017)
  • American Bar Association Section of Intellectual Property Law's Council : Member (2014-present)
  • American Bar Association Section of Intellectual Property Law's 31st Annual Intellectual Property Conference : Program Chair - Trademarks (2016)
  • Associates Task Force for the Membership Committee of the American Bar Association Section of Intellectual Property Law : Chair (2015-present)
  • CLE Board for the American Bar Association Section of Intellectual Property Law : Member (2015-present)
  • TTAB Rules Package "Rapid Response" Task Force for the American Bar Association Section of Intellectual Property Law : Member (2015-present)
  • Young Lawyer Fellows Selection Committee for the American Bar Association Section of Intellectual Property Law : Member (2015-present)
  • Nominating Committee for the American Bar Association Section of Intellectual Property Law : Member (2014)
  • Membership Committee for the American Bar Association's Section of Intellectual Property Law : Member (2014-present)
  • Trademarks and Unfair Competition Division for the American Bar Association's Section of Intellectual Property Law : Chair (2012-2014); Vice-Chair (2010-2012)
  • Diversity Action Group (DAG) of the American Bar Association's Section of Intellectual Property Law : Vice Chair (2014-present)
  • Promotion Subcommittee of the Diversity in the Profession Action Group (DPAG) for the Intellectual Property Law Section of the American Bar Association : Co-Chair
  • International Domain Name Issues Subcommittee (IDNIS) of the International Trademark Association Internet Committee, 2012-2013 : Member
  • International Trademark Association Internet Committee, 2010-2012 : Member
  • Domain Disputes Subcommittee of the International Trademark Association Internet Committee, 2010-2011 : Past Member
  • Northwestern University School of Law : former Adjunct Professor of Intellectual Property Law
  • Chicago Bar Association Cyber Law and Data Privacy Committee : Past Chair (2010-2011)
  • American Bar Association Intellectual Property Section : Past Chair of the Trademarks and the Internet Committee (2009-2010)
  • American Bar Association Intellectual Property Law Section : Past Chair of the Online Services Committee (2005-2006)
  • American Bar Association Intellectual Property Law Section : Past Chair of the Special Committee on Promotion and Marketing Law (2003-2005)
  • Asian American Bar Association of the Greater Chicago Area : Past Secretary (1999-2001)
  • Licensing Executives Society (U.S.A. and Canada) Inc. : Member
  • American Intellectual Property Law Association : Member
  • Intellectual Property Law Association of Chicago : Member

back to top

Representative Publications

back to top

Representative Presentations

  • "The TTAB in Action," American Bar Association IPL Spring Conference, Bethesda, Maryland (April 2016)
  • "How to Conduct a Trademark Search," Northwestern University School of Law's 8th Annual Entrepreneurship Law Center Conference, Chicago, Illinois (April 2013)
  • "Settlement Trends in Trademark Cases," 2012 Midwest Intellectual Property Institute, Minneapolis, Minnesota (September 2012)
  • "Issues and Trends in Consumer Privacy Law," Chicago Bar Association, Chicago, IL (June 2011)
  • "An Introduction to Intellectual Property Law in the United States," French-American Chamber of Commerce, Chicago, IL (November 2010)
  • "Legal Strategies for Dealing with Anonymous Internet Infringers," Intellectual Property Law Section CLE Roundtable, American Bar Association Annual Meeting, San Francisco, CA (August 2010).
  • "Legal Strategies for Dealing with Anonymous Internet Posters" for the Section of Litigation, American Bar Association Annual Meeting (August 2009)
  • "Trademark Licensing: Practical Guidance to Maximize Rights and Minimize Risks" for the Law Bulletin's Corporate IP Seminar (February 2008).
  • "Trademark Licensing and Defective Products-Walking the Line Between Licensing Control and Products Liability" for the John Marshall Law School's 52nd Annual Intellectual Property Law Conference (February 2008).
  • "Grants, Restrictions, and Circumventions: Strategies for the Distribution and Use of Digital Content" for the American Bar Association's 21st Annual Intellectual Property Law Conference (April 2006).
  • "Downloading Drama: Strategies for Copyright Protection in the Digital Era" for the American Bar Association's 19th Annual Intellectual Property Law Conference (April 2004).
  • "Recent Developments: Trademarks, Domain Names and the Internet" for the Young Lawyers Section of the Chicago Bar Association (April 2002).
  • "Copyright Fair Use and the Internet" at the American Intellectual Property Law Association's 2001 Road Show: Advanced Copyright/Trademark Practice Seminar (June 2001).
  • "Software Licensing and Intellectual Property" at John Marshall Law School's Digital Town Hall Meeting (April 2001).
  • "Privacy and the Internet: A Sticky Web" at the Northwestern University School of Law's 13th Annual Symposium on Intellectual Property Law and the Corporate Client (September 2000).

back to top

Court Admissions

  • U.S. District Court for the Northern District of Illinois
  • Supreme Court of Illinois

back to top