Uli Widmaier

Phone: 312 554-7923

Email: uwidmaier@pattishall.com

Intellectual Property News

Education

  • Yale Law School (J.D., 1994)
  • Brown University (honors B.A., M.A., 1990); magna cum laude, 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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Expert Witness

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Professional Activities

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Publications

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Presentations

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Uli Widmaier

''Your strategy worked. You got us a complete victory. Thank you.''





Uli Widmaier is the kind of attorney who goes the full distance for his clients. A partner at Pattishall McAuliffe, Uli has been charged with protecting some of the world's most identified brands, including Beretta USA, Ford Motor Company, General Electric, Encyclopaedia Britannica, Merriam-Webster, PepsiCo, Rand McNally, Swiss Re, Vitra Design, Mont Blanc International, and many other clients.

Having graduated with Honors Bachelor's and Master's degrees, magna cum laude and Phi Beta Kappa, from Brown University in 1990, Uli earned his J.D. at Yale Law School in 1994. He now lectures in intellectual property law at the University of Chicago Law School.

Uli was raised in Germany, and while there trained as a professional violinist. He now uses that music skill to train his two daughters in violin and piano. Both girls are accomplished musicians in their own right, and Uli is the only teacher they have ever had. Classical music is important to him, because, he says, "it is to an amazing degree analytically based. To see how a large scale work of art, such as Beethoven's 9th Symphony, is set up and argues with itself before finding resolution, is really impressive."

Getting to the essence of how things work has given Uli a definite advantage in his trademark, advertising and counterfeiting cases in federal and state court and the Patent and Trade Office. Analytical barely describes his thinking. He reads philosophy of ethics and symbolic logic books, along with material on science, theology, and history. He likes to get at the real meanings of things.

But it would be a mistake to think of him as only an intellectual and legal mind. He and his wife take serious wilderness trips by kayak into remote areas in Canada and Alaska. They go by themselves and challenge the rivers, lakes and forests. Uli is also an avid long-distance runner, running 30-60 miles a week. The same passion that Uli brings to his music, kayaking and running he pours into his practice of the law. "I love what I do because I have the opportunity to work with clients to create a real strategy to protect their brands, and to bring the kind of thinking and knowledge into litigation that can best defend against infringement and enhance a brand."

Uli often deals with Internet-related issues such as deceptive keyword marketing, sponsored links, and the use of marks on social media. "We live in a world that has continually shifted online, and the brands and reputation of our clients need to be protected in this space just as energetically as in more traditional spaces," he adds.

"The lesson I derive from music and philosophy and use in my legal work," says Uli, "is that until you understand the underpinnings, you can't really get at what is truly important to understand about the whole. Understanding the full picture allows me to better serve my client's needs."

Industry Expertise

  • Automobiles & Components
  • Consumer Durables & Apparel
  • Media
  • Retailing
  • Food & Drug Retailing
  • Food, Beverage & Tobacco
  • Energy
  • Banks
  • Diversified Financials
  • Insurance
  • Real Estate
  • Health Care Equipment & Services
  • Pharmaceuticals & Biotechnology
  • Capital Goods
  • Commercial Services & Supplies
  • Software & Services
  • Technology Hardware & Equipment
  • Telecommunication Services

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Honors & Awards

  • 2008 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
  • 2007 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law

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Trials, Appeals & Litigation

  • Dyson, Inc. v. Bissell Home Care, Inc., 1:2010-cv-08126 (N.D. Ill. 2013, Judge Der-Yeghiayan (settled on court-house steps, September 2013) (False Advertising)
  • Shield Technologies Corp. v. Paradigm Positioning, et al., Case No. 1:11-cv-06183 (N.D. Ill. 2013, Judge Grady) (granting joint motion of dismissal pursuant to settlement) (Breach of Contract)
  • Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed in favor of Ritzenhoff) (Trademark Infringement)
  • Coach, Inc. et al v. City of Chicago et al, Case Number: 1:10-cv-03108 (N.D. Ill. 2011, Judge Shadur) (Anti-counterfeiting, Trademark Infringement)
  • Sun Products Corp. v. American Greetings Corp. and Those Characters from Cleveland, Inc., Case No. 1:2010-cv-00438 (D. Del. 2010, Judge Stark) (SNUGGLE bear v. CARE BEARS, settled) (Trademark, Trade Dress, Patents)
  • Acer Inc. v. LiquidBits, Inc., Opposition No. 91192882, (TTAB Oct. 26, 2010) (Trademark)
  • Acer Inc. v. Acer Exhibits & Events, Opposition No. 91193023 (TTAB April 12, 2010) (Trademark)
  • PepsiCo, Inc. v. The Coca-Cola Company, Opposition No. 91175219 (TTAB 2009) (Trademark)
  • Corr v. Pepsico, Inc., Case No. 05 L 001785 (Cir. Ct. of Cook Cty, Ill., 2009, Judge Goldberg) (Pepsico awarded attorneys fees) (Trademark)
  • Cornerstone Architects, Inc., v. Lakeland Development Group, Inc., et. al., Case No. 1:2007cv07043 (N. D. Ill. 2009, Judge Darrah) (Copyright Infringement)
  • Advocate Health Care Network v. Healthcare Advocates, Inc., Opposition Nos. 91173245 and 91185174 (TTAB 2008) (Trademark)
  • Robert J. Corr v. PepsiCo, Inc., et al., Case No. 105823 (Il. Sup. Ct. 2008) Case Nos. 06-2251, 07-0004, 07-1277 (Ill Appl. Ct. 1st Dist.) (affirming dismissal of six trademark and fraud claims brought against PepsiCo) (Trademark Infringement)
  • Hope Family Vineyards, Pty, Ltd. v. Hope Wine, LLC, Case No. 1:2008cv03246 (N.D. Ill. 2008, Judge Lindberg) (preliminary injunction) (Trademark Infringement)
  • Northern Trust Co. v. J.P. Morgan Chase, Case No. 1:2008cv00297 (N.D. Ill. 2008, Judge Hart) (preliminary injunction) (Trademark Infringement)
  • Ford Motor Co. v. Izachak Levy et al., Case No. 1:2004cv08356 (N.D. Ill 2007, Judge St. Eve) (Ford awarded injunction and damages) (Counterfeiting, Trademark Infringement)
  • Advocate Health Care Network v. Health Advocate, Inc., Cancellation Nos. 92044852 and 92046883 (TTAB 2007) (Trademark)
  • 300 Below v. Benelli USA Corp. (Beretta), Case No. 2:2006cv02056 (C.D. Ill. 2006, Judge McCuskey) (Trademark Infringement)
  • Advocate Health Care Network v. Health Advocate, Inc., Cancellation No. 92045208 (TTAB 2006) (Trademark)
  • Swiss Reinsurance Company v. M Financial Holdings, Inc., Opposition Nos. 91165001 and 91165629, Cancellation No. 92044292 (TTAB 2006) (Trademark)
  • FF Acquisition Corp. v. Pacific Cycle L.L.C. and Torpedo Sports USA, Inc., Case No. 1:2003cv00257 (N.D. Miss. 2005, Judge Davidson) (Trademark Infringement)
  • Ford Motor Co. v. Money Makers Automotive Surplus, Inc., 2005 WL 2464715 (D. Neb. 2005, Judge Bataillon) (Ford awarded $5 million in damages) (Counterfeiting, Trademark Infringement, Trade Dress Infringement)
  • JLJ Inc. v. Santa's Best Craft LLC and Monogram Licensing, Inc., Case No. 3:2002-cv-00513 (S.D. Ohio 2005, Judge Rose) (Trademark infringement and false advertising case over seasonal holiday lights packaging and branding; settled after fact and expert discovery and mediation) (Trademark, Advertising)
  • Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002, Judges Flaum, Bauer and Evans) (Trademark Infringement)
  • Key3Media Events, Inc. v. Convention Connection, Inc., et al., 2002 WL 385546, (D. Nev. 2002, Judge Dawson) (final judgment in favor of Key3Media Events, Inc.) (Trademark Infringement)
  • Montblanc Simplo GmbH v. Savonnerie et Perfumerie Bernard, Case No. 1:2001cv01173 (E.D. Va. 2001, Judge Ellis, III) (Internet, E-Commerce and Computer Technology)
  • Ford Motor Co. v. Cattco Marketing et al., Case No. 2:2000cv04672 (E.D. Pa. 2001) (final judgment in favor of Ford Motor Co.) (Trademark Infringement)
  • Gateway 2000, Inc. v. Softbahn, Inc., Opposition No. 91112204 (TTAB 2000) (Opposition sustained) (Trademark)

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Expert Witness

  • 3M Company v. Vita Zahnfabrik H. Rauter GmbH & Co., KG and Vident, Inc., Case No. 0:2006cv04564 (D. Minn. 2008, Judge Doty) (Trademark Infringement, USPTO)
  • Klein-Becker, USA, LLC v. Allergan, Inc., Case No. 2:2003cv00514 (D. Utah 2007, Judge Benson) (Unfair Competition, Genericness)
  • General Motors Corporation v. Avanti Motors, Case No. 5:2003cv60034 (E.D. Mich. 2003, Judge Battani) (Trade Dress, Surveys)

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Professional Activities

  • University of Chicago Law School : Teaching the annual Seminar on Advanced Trademarks and Unfair Competition in the Winter 2012 Quarter
  • AIPPI Special Committee Q212 (Trade Mark Law) : Co-Chair
  • University of Chicago Law School, : Lecturer in Law (since 2002)
  • Chicago Bar Association : Member
  • Federal Bar Association : Member
  • American Bar Association Intellectual Property Section : Amicus Briefs Committee
  • Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) : Member
  • American Intellectual Property Law Association, Trademark Section : Author, Quarterly Case Summary Reports for the Third and Seventh Circuits (since 2005)

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Publications

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Presentations

  • "Changes in U.S. Law on Aesthetic Functionality and Keyword Advertising - Healthy Evolution or New Monopoly Phobia?", 12th International Trademark Conference held at the European Union's Office for the Harmonization of the Internal Market in Alicante, Spain (April 2012)
  • Webinar "Recent Developments in the Law of Keywords and Domain Names," sponsored by the American Bar Association (February 2012)
  • "Recent Developments in US Trademark Law," 11th International Trademark Conference at OHIM, Alicante, Spain (April 2011)
  • "Workshop on US Trademark Law," 11th International Trademark Conference at OHIM, Alicante, Spain (April 2011)
  • Featured speaker, "Trademark Functionality," BNA's new Intellectual Property Law Resource Center. Click here to view the video. (December 2010)
  • "Trademark Triple Play - Winning Trademark Cases on Injunction, Summary Judgment and at Trial," American Intellectual Property Law Association Annual Meeting, Washington, DC. (October 2010)
  • "Is There Something The European Trade Mark System Can Learn From The US After All?", European Community Trademark Association Roundtable, Brussels, Belgium (March 2010)
  • "The U.S. Point of View," Invited Speaker at the European Community Trademark Association Roundtable, Brussels, Belgium (March 2010)
  • "U.S. Dilution Law," AIPPI Day, Stockholm, Sweden (March 2010)
  • "U.S. trademark law - a practical introduction" (co-instructor with Gerhard Bauer, Chief Trademark Counsel at Daimler AG), Munich, Germany (December 2009)
  • "US Trademark Practice," Conference on International Trademark Law, German Federal Patent Court, Munich, Germany (October 2009)
  • "From Harmonised Trademark Law to Harmonised Trademark Proceedings," German Federal Patent Court, Munich, Germany (October 2009)
  • Invited speaker, "US Trademark Practice," Conference on International Trademark Law, German Federal Patent Court (October 2009)
  • "An Update on the TTAB's New Rules of Practice - Where are We Now?" 2009 AIPLA Spring Meeting, San Diego, CA (May 2009)
  • "US Practice - a practitioner's look at serious PTO pitfalls, and how to avoid them," 10th International Trademark Conference 2009, OHIM, Alicante, Spain (May 2009)
  • "Licensing Law-IPR Issues in Cross-Border Licensing," 10th International Trademark Conference 2009, OHIM, Alicante, Spain (April 2009)
  • "U.S. Trademark Litigation," FORUM Institut for Management, Munich, Germany (November 2008)
  • "U.S. Trademark Law," co-instructor (with Gerhard Bauer, Chief Trademark Counsel at Daimler AG), 2-day seminar for European practitioners, Munich, Germany (November 2008)
  • "Issues of Fraud in the United States Patent and Trademark Office," Chicago Bar Association Young Lawyers' Section, Intellectual Property Law Committee (October 2008)
  • Global Chair, Working Committee for Question 203 (Damages for Infringement, Counterfeiting and Piracy of Trademarks), World Intellectual Property Congress of the Association Internationale pour la Protection de la Propriété Intellectuelle (September 2008)
  • "U.S. Trademark Practice: Implications for European Strategy," 9th International Trademark Conference 2008, held at OHIM, Alicante, Spain (April 2008)
  • "U.S. IP Workshop," instructor on trademark law, Swiss Re U.S. headquarters, New York (March 2008)
  • "U.S. Trademark Law," co-instructor (with Gerhard Bauer, Chief Trademark Counsel at DaimlerChrysler AG), 2-day seminar for European practitioners, held in Frankfurt, Germany (November 2007)
  • Two presentations at the 8th International Trademark Conference 2007, held at OHIM, Alicante, Spain: "Madrid Agreement - The U.S. Perspective," and "Trademark Use and Online Advertising." (April 2007)
  • "Keywords and Sponsored Links," Intellectual Property Law Society, University of Chicago Law School (April 2007)
  • "The New Dilution Law," Chicago Bar Association (November 2006)
  • "Intellectual Property Workshop," instructor on U.S. law, 2-day seminar on international IP law at Swiss Re World Headquarters, Zurich, Switzerland (May 2006)
  • "Optimizing Product Design Protection under Patent, Copyright and Trademark Law," 2005 Corporate Patent Seminar, Chicago, IL (September 2005)
  • "Fair Use in View of KP Permanent Make-Up," Michigan Institute for Continuing Legal Education (March 2005)
  • "Dilution beyond repair? Federal Trademark Dilution in the Digital Age," co-presenter (with Prof. Doris Long), John Marshall Law School Center for Intellectual Property Law (January 2005)
  • "The Federal Trademark Dilution Act of 1995 and its interpretation by the Supreme Court in the Victoria's Secret Case," teleconference by the ABA Section of Intellectual Property Law (June 2004)
  • "Consumer Confusion in Dastar v. 20th Century Fox," panelist, IP Week 2004, Northwestern University School of Law (January 2004)
  • "Recording Industry's File Sharing Litigation and the IP Practice," panelist, IP Week 2004, Northwestern University School of Law (January 2004)
  • "Markenschutz in den USA - neu nach dem Madrider System," Intensivseminar, INGRES (Institut fuer gewerblichen Rechtsschutz), Zurich, Switzerland (September 2003)
  • "The Madrid Protocol: New Possibilities and Challenges for Protecting Trademarks in the United States," INTA Roundtable, Geneva, Switzerland (September 2003)
  • "The Supreme Court in IP Law: Three Recent Cases," panelist, American Bar Association Summer IPL Conference, San Diego (June 2003)
  • Copyright law after Eldred v. Ashcroft, panelist, IP Week 2003, Northwestern University School of Law (April 2003)
  • "The Meaning and Effect of Supreme Court IP Disputes on Practice, Policy and Business," panelist, 47th Annual Conference on Developments in Intellectual Property Law, John Marshall Law School (February 2003)
  • "Digital Rights Management and Multimedia," panelist, TechVision Conference, University of Chicago School of Business (January 2003)
  • "Regulating the Internet: the Role of Trademark Law," IP Week 2002, Northwestern University School of Law (April 2002)
  • "Current Issues in Trademark Law," Northwestern University School of Law (November 2001)
  • "Trademark Law, the Internet, and the First Amendment," Yale Symposium on Law and Technology, Yale Law School (October 2000)
  • "Domain Names, Metatags, Searching, Linking and Framing," 13th Annual Symposium on Intellectual Property, Northwestern University Corporate Counsel Center (September 2000)

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