Uli Widmaier
''Your strategy worked. You got us a complete victory. Thank you.''
Jeff Reh, General Counsel, Beretta USA Corp.
Uli Widmaier, a Partner at Pattishall McAuliffe and a Lecturer in Law at the University of Chicago Law School, helps protect the brands of Beretta USA, Encyclopaedia Britannica, Ford Motor Company, General Electric, Merriam-Webster, Mont Blanc International, PepsiCo, Swiss Re, Vitra Design, and many other clients. He has litigated numerous trademark, advertising and counterfeiting cases in federal and state court and the PTO.
To compete effectively in today's marketplace, clients must vigorously enforce their trademark rights, so litigation and trial are essential IP tools. "I've won major cases for clients such as Ford, PepsiCo, GE, and Beretta," Widmaier notes.
"Trial work is indispensable for brand protection," Widmaier explains. "But you also need prospective strategies to enhance your brand as your business develops." That's why Widmaier has developed comprehensive global brand plans for Fortune 100 clients, touching on all aspects of brand protection law, ranging from basic trademark use guidelines to legislative proposals designed to effectuate strategic changes to current law. He is responsible for protecting the U.S. brand portfolio of Swiss Re, the world's largest reinsurance provider, and of Vitra, one of the world's leading high-end furniture design companies.
Widmaier was raised in Germany and trained there as a professional violinist. Then he moved to the United States to attend Brown and Yale. "College and law school were wonderfully productive times. I had to learn a whole new way of life. I profit from this every day, particularly when explaining to European clients how things work in the U.S. and vice versa."
"I love what I do because I have to draw on the broadest set of legal skills, integrated under the overarching mission of brand protection. For my clients, their brands are their identity. Everything I do has to advance the client's overall brand strategy," Widmaier says. "I always consider both the particular issue at hand and the big picture--the client's overall business objectives and financial concerns, the brand's future, and the industry as a whole."
Widmaier deals regularly with Internet-related issues such as cybersquatting, keyword and metatag protection, sponsored links and pop-up ads, and initial interest confusion. "We obtained an injunction against an online infringer of Key3Media's COMDEX trademark, making new law when the 9th Circuit held that disclaimers are ineffective on the Internet."
"On the other hand, my work can get pretty down to earth," Widmaier notes. "Clearing out literally truckloads of counterfeit goods from an illegal warehouse drives home that what I do is important for both the client and the public."
In addition to his legal practice, Widmaier is a Lecturer in Law at the University of Chicago Law School, where he teaches intellectual property law and First Amendment law. He enjoys writing and speaking on the law of brand protection. "This helps me gain a deeper understanding of intellectual property law and of its interaction with the legal system at large," he notes.
For Widmaier, work is all about the team. "At Pattishall, everyone contributes--from the most senior partner to our incredibly experienced paralegals and legal secretaries. Everything is geared to getting the job done. The result is a work product of unequalled quality and efficiency, and a unique level of responsiveness to client concerns. That's how we've earned the trust of the world's leading corporations."
Industry
Expertise
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Automobiles & Components
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Consumer Durables & Apparel
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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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Energy
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Banks
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Diversified Financials
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Insurance
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Real Estate
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Health Care Equipment & Services
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Pharmaceuticals & Biotechnology
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Capital Goods
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Commercial Services & Supplies
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Software & Services
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Technology Hardware & Equipment
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Telecommunication Services
Honors & Awards
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2008
Law & Politics
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An Illinois "Super Lawyer" in Intellectual Property Law
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2007
Law & Politics
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An Illinois "Super Lawyer" in Intellectual Property Law
Trials, Appeals & Litigation
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PepsiCo, Inc. v. The Coca-Cola Company, Opposition No. 91175219 (TTAB 2009)
(Trademark)
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Corr v. Pepsico, Inc., Case No. 05 L 001785 (Cir. Ct. of Cook Cty, Ill., 2009, Judge Goldberg) (Pepsico awarded attorneys fees)
(Trademark)
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Cornerstone Architects, Inc., v. Lakeland Development Group, Inc., et. al., Case No. 1:2007cv07043 (N. D. Ill. 2009, Judge Darrah)
(Copyright Infringement)
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Advocate Health Care Network v. Healthcare Advocates, Inc., Opposition Nos. 91173245 and 91185174 (TTAB 2008)
(Trademark)
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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)
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Hope Family Vineyards, Pty, Ltd. v. Hope Wine, LLC, Case No. 1:2008cv03246 (N.D. Ill. 2008, Judge Lindberg) (preliminary injunction)
(Trademark Infringement)
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Northern Trust Co. v. J.P. Morgan Chase, Case No. 1:2008cv00297 (N.D. Ill. 2008, Judge Hart) (preliminary injunction)
(Trademark Infringement)
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Ford Motor Co. v. Izachak Levy et al., Case No. 1:2004cv08356 (N.D. Ill 2007, Judge St. Eve) (Ford awarded injunction and damages)
(Trademark Infringement)
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Advocate Health Care Network v. Health Advocate, Inc., Cancellation Nos. 92044852 and 92046883 (TTAB 2007)
(Trademark)
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300 Below v. Benelli USA Corp. (Beretta), Case No. 2:2006cv02056 (C.D. Ill. 2006, Judge McCuskey)
(Trademark Infringement)
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Advocate Health Care Network v. Health Advocate, Inc., Cancellation No. 92045208 (TTAB 2006)
(Trademark)
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Swiss Reinsurance Company v. M Financial Holdings, Inc., Opposition Nos. 91165001 and 91165629, Cancellation No. 92044292 (TTAB 2006)
(Trademark)
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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)
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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)
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Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002, Judges Flaum, Bauer and Evans)
(Trademark Infringement)
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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)
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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)
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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)
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Gateway 2000, Inc. v. Softbahn, Inc., Opposition No. 91112204 (TTAB 2000) (Opposition sustained)
(Trademark)
Expert Witness
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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)
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Klein-Becker, USA, LLC v. Allergan, Inc., Case No. 2:2003cv00514 (D. Utah 2007, Judge Benson)
(Unfair Competition, Genericness)
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General Motors Corporation v. Avanti Motors, Case No. 5:2003cv60034 (E.D. Mich. 2003, Judge Battani)
(Trade Dress, Surveys)
Professional
Activities
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University of Chicago Law School,
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Lecturer in Law (since 2002)
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Chicago Bar Association
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Member
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Federal Bar Association
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Member
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American Bar Association Intellectual Property Section
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Amicus Briefs Committee
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Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
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Member
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American Intellectual Property Law Association, Trademark Section
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Author, Quarterly Case Summary Reports for the Third and Seventh Circuits (since 2005)
Publications
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Supreme Court Makes the Call: NFL Not Exempt from Antitrust Law when Licensing Team Trademarks for Merchandise, Pattishall IP News (May 2010)
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Supreme Court to Examine Application of Copyright Law's First Sale Doctrine to Importation of Gray Market Goods, Pattishall IP News (April 2010)
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Trademarks and Unfair Competition (law school casebook on trademark and unfair competition law), co-auothor (with Pattishall McAuliffe partners David C. Hilliard and Joseph Nye Welch III) (8th ed. 2010)
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Supreme Court Justice John Paul Stevens to Retire: An Important Contributor to Copyright, Trademark, and First Amendment Law Steps Aside, Pattishall IP News (April 2010)
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D.C. Circuit Rules that FCC Lacks Authority to Enforce Net Neutrality, Pattishall IP News (April 2010)
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The Protection of Major Sports Events and Associated Commercial Activities through Trademarks and other IPR, U.S. Group Report, co-author (with Peter C. Schechter), Association Internationale pour la Protection de la Propriété Intellectuelle (2009)
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Second Circuit Largely Affirms Tiffany v. eBay Judgment that eBay Did Not Infringe or Dilute the TIFFANY Trademark by Using it in Auctions, Pattishall IP News (April 2010)
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Damages for Infringement, Counterfeiting and Piracy of Trademarks, U.S. Group Report, co-author (with Joan McGivern, Vice President of Legal Services at the American Society of Composers, Authors & Publishers), Association Internationale pour la Protection de la Propriété Intellectuelle (2008)
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The Quest for Coherence in United States Trademark Dilution Law, co-author (with Raymond I. Geraldson), chapter in FESTSCHRIFT FUER JOCHEN PAGENBERG (2006)
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Conflicts between Trademark Protection and Free Speech, U.S. Group Report, Association Internationale pour la Protection de la Propriété Intellectuelle (February 2005)
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Use, Liability, and the Structure of Trademark Law, 33 HOFSTRA L. REV. 603 (2004)
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Jury und Medien - zu einem elementaren verfassungsrechtlichen Problem in den USA ("Jury and Media - a fundamental constitutional issue in the USA"), NEUE JURISTISCHE WOCHENSCHRIFT, NJW 2004, vol. 7
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Jurisdiction and the Internet: The Ascendancy of In Rem Jurisdiction and the Decline of Zippo, ABA Intellectual Property Newsletter, Vol. 21, No. 3 (Spring 2003)
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Proving Dilution in the Wake of Victoria's Secret, co-author (with Robert W. Sacoff), Pattishall McAuliffe Newsletter, Vol. 5, No. 1 (Spring 2003)
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Trademark Case leaves Open Questions - Court Adopts Some of ABA's Analysis Despite Ruling for Victoria's Secret, co-author (with Robert W. Sacoff), ABA Journal eReport, Vol. 2, Issue 9 (March 7, 2003)
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Trademark Dilution and the Plain Language Solution to Victoria's Secret, co-author (with Robert W. Sacoff and Chad Doellinger) John Marshall Law School News Source, Vol. IV, No. 2 (Fall, 2002)
Presentations
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"Is There Something The European Trade Mark System Can Learn From The US After All?", European Community Trademark Association Roundtable, Brussels, Belgium (March 2010)
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"The U.S. Point of View," Invited Speaker at the European Community Trademark Association Roundtable, Brussels, Belgium (March 2010)
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"U.S. Dilution Law," AIPPI Day, Stockholm, Sweden (March 2010)
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"U.S. trademark law - a practical introduction" (co-instructor with Gerhard Bauer, Chief Trademark Counsel at Daimler AG), Munich, Germany (December 2009)
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"US Trademark Practice," Conference on International Trademark Law, German Federal Patent Court, Munich, Germany (October 2009)
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"From Harmonised Trademark Law to Harmonised Trademark Proceedings," German Federal Patent Court, Munich, Germany (October 2009)
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Invited speaker, "US Trademark Practice," Conference on International Trademark Law, German Federal Patent Court (October 2009)
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"An Update on the TTAB's New Rules of Practice - Where are We Now?" 2009 AIPLA Spring Meeting, San Diego, CA (May 2009)
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"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)
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"Licensing Law-IPR Issues in Cross-Border Licensing," 10th International Trademark Conference 2009, OHIM, Alicante, Spain (April 2009)
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"U.S. Trademark Litigation," FORUM Institut for Management, Munich, Germany (November 2008)
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"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)
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"Issues of Fraud in the United States Patent and Trademark Office," Chicago Bar Association Young Lawyers' Section, Intellectual Property Law Committee (October 2008)
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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)
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"U.S. Trademark Practice: Implications for European Strategy," 9th International Trademark Conference 2008, held at OHIM, Alicante, Spain (April 2008)
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"U.S. IP Workshop," instructor on trademark law, Swiss Re U.S. headquarters, New York (March 2008)
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"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)
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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)
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"Keywords and Sponsored Links," Intellectual Property Law Society, University of Chicago Law School (April 2007)
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"The New Dilution Law," Chicago Bar Association (November 2006)
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"Intellectual Property Workshop," instructor on U.S. law, 2-day seminar on international IP law at Swiss Re World Headquarters, Zurich, Switzerland (May 2006)
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"Optimizing Product Design Protection under Patent, Copyright and Trademark Law," 2005 Corporate Patent Seminar, Chicago, IL (September 2005)
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"Fair Use in View of KP Permanent Make-Up," Michigan Institute for Continuing Legal Education (March 2005)
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"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)
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"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)
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"Consumer Confusion in Dastar v. 20th Century Fox," panelist, IP Week 2004, Northwestern University School of Law (January 2004)
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"Recording Industry's File Sharing Litigation and the IP Practice," panelist, IP Week 2004, Northwestern University School of Law (January 2004)
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"Markenschutz in den USA - neu nach dem Madrider System," Intensivseminar, INGRES (Institut fuer gewerblichen Rechtsschutz), Zurich, Switzerland (September 2003)
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"The Madrid Protocol: New Possibilities and Challenges for Protecting Trademarks in the United States," INTA Roundtable, Geneva, Switzerland (September 2003)
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"The Supreme Court in IP Law: Three Recent Cases," panelist, American Bar Association Summer IPL Conference, San Diego (June 2003)
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Copyright law after Eldred v. Ashcroft, panelist, IP Week 2003, Northwestern University School of Law (April 2003)
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"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)
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"Digital Rights Management and Multimedia," panelist, TechVision Conference, University of Chicago School of Business (January 2003)
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"Regulating the Internet: the Role of Trademark Law," IP Week 2002, Northwestern University School of Law (April 2002)
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"Current Issues in Trademark Law," Northwestern University School of Law (November 2001)
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"Trademark Law, the Internet, and the First Amendment," Yale Symposium on Law and Technology, Yale Law School (October 2000)
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"Domain Names, Metatags, Searching, Linking and Framing," 13th Annual Symposium on Intellectual Property, Northwestern University Corporate Counsel Center (September 2000)