Thad Chaloemtiarana

Phone: 312-554-7973

Email: tc@pattishall.com

Intellectual Property News

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

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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Thad Chaloemtiarana

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 in 1996. 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.

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

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Trials, Appeals & Litigation

  • 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. 1:09cv526JFF (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. 1:08cv0084-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. 3:2006cv02997 (N.D. Ohio 2007, Judge Carr) (Trademark)
  • SWIMC, Inc. v. Fine Paints of Europe, Inc., Case No. 1:2006cv00194, (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)
  • S-B Power Tool Company v. Ryobi Technologies, Inc., Case No. 1:2002cv01056 (N.D. Ill. 2003, Judge Norgle, Sr.) (Trademark Infringement)
  • Syngenta Crop Protection v. Bayer Corporation, Opposition No. 91124759 (TTAB 2003) (Trademark)
  • Bayer Corp. v. Custom School Frames, LLC, 259 F.Supp.2d 503 (E.D. La. 2003, Judge McNamara) (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)

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Professional Activities

  • American Bar Association Intellectual Property Section, Division II - Trademarks & Unfair Competition : Vice Chair
  • 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 Trademark Association Internet Committee, 2010-2011 : Member
  • Domain Disputes Subcommittee of the International Trademark Association Internet Committee, 2010-2011 : 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 Special Committee 254 on Trademarks and the Internet (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

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Presentations

  • "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).

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