Uli Widmaier
''Your strategy worked. You got us a complete victory. Thank you.''
Jeff Reh, General Counsel, Beretta USA Corp.
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, Swiss Re, Vitra Design, Mont Blanc International, and many other clients.
Having graduated magna cum laude with a 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 and First Amendment 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 ethics books, along with other material on science. 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 northern 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 and running marathons, 50K races (about 31 miles), and is in training for a 50-miler race late in 2013. If that's not enough, he has his eyes set on a 100-mile ultra-distance race next year.
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."
Widmaier often deals with Internet-related issues such as cybersquatting, keyword and metatag protection, sponsored links and pop-up ads. "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
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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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Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed)
(Trademark Infringement)
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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)
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Shield Technologies Corp. v. Paradigm Positioning, et al., Case No. 1:11-cv-06183 (N.D. Ill. 2011, Judge Grady)
(Breach of Contract, Trade Secret, Civil Conspiracy, Fraud)
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Sun Products Corp. v. American Greetings Corp. and Those Characters from Cleveland, Inc., Case No. 1:2010-cv-00438 (D. Del. 2010, Judge Stark)
(Trademark, Trade Dress, Patents)
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Dyson, Inc. v. Bissell Home Care, Inc., 1:2010-cv-08126 (N.D. Ill., 2010, Judge Der-Yeghiayan
(False Advertising)
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Acer Inc. v. LiquidBits, Inc., Opposition No. 91192882, (TTAB Oct. 26, 2010)
(Trademark)
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Acer Inc. v. Acer Exhibits & Events, Opposition No. 91193023 (TTAB April 12, 2010)
(Trademark)
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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)
(Counterfeiting, 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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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)
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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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Teaching the annual Seminar on Advanced Trademarks and Unfair Competition in the Winter 2012 Quarter
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AIPPI Special Committee Q212 (Trade Mark Law)
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Co-Chair
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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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Quoted in the article, "'Naked license' questions develop after justices' decision on Nike" in the Chicago Daily Law Bulletin (January 2013)
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Air Force 1 trade dress dispute held moot - Nike wins at Supreme Court, but at what cost?, Pattishall IP News (January 2013)
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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 II) (9th ed. 2012); Supplement to 9th edition and Teachers Manual (2012, Lexis Nexis)
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Co-Author of Hilliard, Welch and Widmaier Lexis Analysis, "Trade Dress and the Boundaries of Trademark Protection" (102 pages) (2012)
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"Sensible Agnosticism" or "Quintessential Actual Confusion"? Fourth Circuit Reassesses Consumer Uncertainty about Sponsored Links, Intellectual Property Today (June 2012)
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Internet-Related Trademark Infringement, republished in The ABA General Practice, Solo and Small Firm Division Magazine as one of "The Best [recent articles] of ABA Sections" (May/June 2012)
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Fourth Circuit Reverses Grant Of Summary Judgment In Rosetta Stone v. Google: Google's AdWords Program To Be Put On Trial, Pattishall IP News (April 2012)
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Peter and the Wolf Leave the Public Domain - Supreme Court Holds Copyright Restoration Law is Constitutional, Pattishall IP News (January 2012)
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From Metatags to Sponsored Ads: The Evolution of Internet-Related Trademark Infringement Doctrine, published in Landslide Magazine (January/February 2012)
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You Are Now Free to Use Crinkly Paper Towels: Eighth Circuit Affirms Finding that Sale of Generic Paper Towels Designed to Fit Branded Dispensers is Not Contributory Trademark Infringement, Pattishall IP News (September 2010)
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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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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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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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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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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)
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Co-author, "Trademark Dilution and the Plain Language Solution to Victoria's Secret," John Marshall Law School News Source, Vol. IV, No. 2 (Fall, 2002).
Presentations
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"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)
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Webinar "Recent Developments in the Law of Keywords and Domain Names," sponsored by the American Bar Association (February 2012)
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"Recent Developments in US Trademark Law," 11th International Trademark Conference at OHIM, Alicante, Spain (April 2011)
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"Workshop on US Trademark Law," 11th International Trademark Conference at OHIM, Alicante, Spain (April 2011)
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Featured speaker, "Trademark Functionality," BNA's new Intellectual Property Law Resource Center. Click here to view the video. (December 2010)
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"Trademark Triple Play - Winning Trademark Cases on Injunction, Summary Judgment and at Trial," American Intellectual Property Law Association Annual Meeting, Washington, DC. (October 2010)
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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)