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
Representative
Matters
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Moseley v. Victoria Secret, Inc., 537 U.S. 418 (2003). I co-authored the American Bar Association's amicus curiae brief in the first trademark dilution case to reach the Supreme Court. Justice Kennedy, in his concurrence, adopted the ABA's position in its entirety.
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Roth Architects, Inc., v. Cornerstone Architects, Ltd., et al. , (N.D. Ill. 2007). The plaintiff alleged copyright infringement against our client, Cornerstone. We forced settlement discussions early in the discovery process. By carefully analyzing the factual basis of plaintiff's claim, we managed to reduce plaintiff's multi-million-dollar damages demand to a nominal amount, and settled the case on that basis.
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300 Below, Inc., v. Benelli U.S.A. Corp., Case No. 2:2006cv02056 (C.D Ill. 2006). Benelli was accused of trademark infringement and related wrongdoing. We obtained a complete victory for the client by forcing the plaintiff through aggressive and diligent discovery to agree to a judgment that cleared the client of all wrongdoing.
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Swiss Reinsurance Co. v. M Financial Holdings, Inc. (TTAB 2006). We obtained a very favorable settlement for Swiss Re against a major competitor's attempt to use and register a confusingly similar logo.
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Ford Motor Co. v. Money Makers Automotive Surplus, Inc., 2005 U.S. Dist. LEXIS 22232, Case No. 8:2003cv00493 (D. Neb. 2005). We stopped a major counterfeiter of Ford car parts by seizing over 250 pallets of counterfeit and repackaged goods that took more than a dozen semi trucks to remove from the counterfeiter's warehouse, and obtaining a judgment and damages award in Ford's favor.
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JLJ Inc. v. Santa's Best Craft LLC and Monogram Licensing, Inc., Case No. 3:2002cv00513 (S.D. Ohio, 2005). This was a trade dress and false advertising case that we handled for co-defendant GE. We successfully settled the case after extensive discovery and mediation.
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Rush Beverage Co. v. South Beach Beverage Co. (N. D. Ill. 2004). We represented defendants South Beach, a wholly-owned PepsiCo subsidiary, in this case involving allegations of trademark infringement, breach of contract, and theft of trade secrets. After full discovery, we obtained a complete victory via summary judgment. We also obtained a dismissal of plaintiff's appeal on jurisdictional grounds.
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Montblanc Simplo GmbH v. Savonnerie et Perfumerie Bernard (E.D. Va. 2003). We recovered numerous domain names for Montblanc in a difficult and hotly contested case.
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Key3Media Events, Inc. v. Comdex.net (E.D. Va. 2002). We recovered numerous domain names for Key3Media from an offshore cybersquatter, using the in rem provisions of the Anti-Cybersquatting Consumer Protection Act.
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Key3Media Events, Inc. v. Convention Connection, Inc. (D. Nev. 2002). We obtained a full injunction against an online infringer of our client's COMDEX trademark. In its final judgment, the court held for the first time in the Ninth Circuit that disclaimers are ineffective on the Internet.
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)
Recent Publications
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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).