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 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.
Industry Expertise
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Automobiles & Components
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Consumer Durables & Apparel
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Hotels, Restaurants & Leisure
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Media
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Retailing
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Food & Drug Retailing
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Food, Beverage & Tobacco
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Household & Personal Products
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Health Care Equipment & Services
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Pharmaceuticals & Biotechnology
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Commercial Services & Supplies
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Software & Services
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Technology Hardware & Equipment
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Materials
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Telecommunication Services
Trials, Appeals & Litigation
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Carnival Plc v. DRS Expired Domain, Case No. D2007-0808 (WIPO 2007)
(Internet, E-Commerce and Computer Technology)
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Carnival Plc v. DRS Expired Domain, Case No. D2007-0808 (WIPO 2007)
(Internet, E-Commerce and Computer Technology)
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Milwaukee Electric Tool Corporation v. Robert Bosch Tool Corporation, 2007 WL 2875232 (N.D. Ill. 2007, Judge Kendall)
(Trademark Infringement)
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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)
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Carnival Plc v. Sebastian Szerer, Case No. D2007-0807 (WIPO 2007) (Domain name transferred to client)
(Internet, E-Commerce and Computer Technology)
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3COM Corp. v. 3COM Services, LLC, Case No. 3:2006cv02997 (N.D. Ohio 2007, Judge Carr)
(Trademark)
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SWIMC, Inc. v. Fine Paints of Europe, Inc., Case No. 1:2006cv00194, (D. Del. 2006, Judge Farnan, Jr.)
(Trademark)
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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)
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S-B Power Tool Company v. Ryobi Technologies, Inc., Case No. 1:2002cv01056 (N.D. Ill. 2003, Judge Norgle, Sr.)
(Trademark Infringement)
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Syngenta Crop Protection v. Bayer Corporation, Opposition No. 91124759 (TTAB 2003)
(Trademark)
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Bayer Corp. v. Custom School Frames, LLC, 259 F.Supp.2d 503 (E.D. La. 2003, Judge McNamara)
(Trademark Infringement)
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DeJohn v. The .TV Corp. Intern., 245 F.Supp.2d 913 (N.D. Ill. 2003, Judge Manning)
(Internet, E-Commerce and Computer Technology)
Professional Activities
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Chicago Bar Association's Cyber Law and Data Privacy Committee
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Legislative Liaison
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American Bar Association Intellectual Property Section, Special Committee 254 on Trademarks and the Internet
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Chair (2009-2010)
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Northwestern University School of Law
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Adjunct Professor, "Trademarks and Unfair Competition"
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International Trademark Association Internet Committee, 2010-2011
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Member
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Domain Disputes Subcommittee of the International Trademark Association Internet Committee, 2010-2011
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Member
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ABA Intellectual Property Law Section
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Past Chair of the Online Services Committee (2005-2006)
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ABA Intellectual Property Law Section
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Past Chair of the Special Committee on Promotion and Marketing Law (2003-2005)
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Asian American Bar Association of the Greater Chicago Area
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Past Secretary (1999-2001)
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Licensing Executives Society (U.S.A. and Canada) Inc.
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Member
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American Intellectual Property Law Association
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Member
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Intellectual Property Law Association of Chicago
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Member
Publications
Presentations
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"Legal Strategies for Dealing with Anonymous Internet Posters" for the Section of Litigation, American Bar Association Annual Meeting (August 2009)
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"Trademark Licensing: Practical Guidance to Maximize Rights and Minimize Risks" for the Law Bulletin's Corporate IP Seminar (February 2008).
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"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).
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"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).
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"Downloading Drama: Strategies for Copyright Protection in the Digital Era" for the American Bar Association's 19th Annual Intellectual Property Law Conference (April 2004).
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"Recent Developments: Trademarks, Domain Names and the Internet" for the Young Lawyers Section of the Chicago Bar Association (April 2002).
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"Copyright Fair Use and the Internet" at the American Intellectual Property Law Association's 2001 Road Show: Advanced Copyright/Trademark Practice Seminar (June 2001).
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"Software Licensing and Intellectual Property" at John Marshall Law School's Digital Town Hall Meeting (April 2001).
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"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).