Andrew N. Downer
Every lawyer needs a good mentor. Andrew Downer is fortunate to have many.
The first was his father, who has practiced law for more than 40 years. “While I am a relatively young attorney,” Downer says, “I have had the pleasure and privilege of watching my father work, and learning from his experience.”
That background provided Downer with a solid foundation for his own practice, where he works among attorneys with extensive IP law experience. “At Pattishall, my mentors are the lawyers who have played an important role in shaping trademark law for many years,” Downer adds. “The fact that we have so many true experts in the field to use as resources is what sets us apart from our competitors.”
Now an IP expert in his own right, Downer helps companies move through all the necessary steps to secure their brand assets–from search and clearance to trademark registration, policing and enforcement, and litigation in the event that a conflict arises.
Downer has experience handling all aspects of trademark litigation, as well as trademark licensing and due diligence, preventing counterfeiting, protecting domain names, and developing and protecting brands. He’s represented clients in a broad spectrum of industries: automobiles, consumer durables and apparel, retailing, hotels, restaurants and leisure, food, and beverage, capital goods, and technology.
Downer recently helped a major auto parts company go after a business selling counterfeit auto parts. The result was the conviction of the business owner for felony trademark counterfeiting and a substantial settlement for his client.
Downer believes “a good attorney should be fair, flexible, open-minded, creative, intelligent, humble, honest and trustworthy–the same qualities that I strive to exhibit myself.” At Pattishall, he stands in good company. “I am fortunate to be able to look around the office and see these same qualities in the people that I work with every day,” he explains.
- Automobiles & Components
- Consumer Durables & Apparel
- Hotels, Restaurants & Leisure
- Food, Beverage & Tobacco
- Capital Goods
- Software & Services
- Technology Hardware & Equipment
- MasterCard International Incorporated v. Cinkciarz.Pl, Opp. No. 91230490 (TTAB 2022) (Trademark)
- Kingston Technology Corporation v. Spansion LLC, Opposition and Cancellation Nos. 9121810, 91222728, 92061796 (TTAB 2017) (Represented Defendant and Counter-Plaintiff in the initial proceeding and Plaintiff in later proceedings involving "Hyper" prefix marks in the technology industry; prevailed in overcoming seven motions to dismiss the client's claims and counterclaims, leading to settlement involving withdraw of opposition and client's registration) (Trademark)
- Royal Purple, LLC v. David Ward et al, Case No. 4:13-cv-03271 (S.D. Texas, June 2016, Judge Atlas) (Trade Secret, Trademark Infringement, RICO)
- Indigo Wild, L.L.C. v. NCN Beverages, LLC and Lifestyle Brands International, LLC, Opposition No. 91197275 (TTAB 2012) (Trademark Opposition)
- Bosch Security Systems, Inc. v. Seaguard Electronics, L.L.C. et al., Case No.: 2:11-cv-356 (D. Nev. 2011, Judge Hicks) (Defendants withdrew infringing trademark application, took down infringing website, and abandoned domain name at issue) (Trademark Infringement, Unfair Competition, Cybersquatting)
- Eco Pro Painting, LLC v. The Sherwin-Williams Company et al, Case No. 1:2011-cv-00354 (N.D. Ill. 2011, Judge Kennelly) (Trademark Infringement)
- Ashley Furniture Inds. v. Laura Ashley, American Arbitration Association (AAA) Case No. 51133Y0105608 (Trademark, Breach of Contract)
- Givens v. American College of Trial Lawyers, Case No. 1:2009-cv-00074 (M.D. Ala. 2009, Judge Walker) (Summary Judgment 2010, settlement, 2011) (Internet, E-Commerce and Computer Technology)
- Oracle America, Inc. v. DomZilla Ltd. Case No. FA1009001348714 (NAF 2010) (recovered 21 domain names) (Internet, E-Commerce and Computer Technology)
- World Wide Sales, Inc. v. Church & Dwight Co., Inc., Case No. 1:2008-cv-01198 (N.D. Ill. 2009, Judge Kennelly) (granting summary judgment for defendant on trademark infringement and fraud claims) (Trademark Infringement)
- Paxar Corporation v. Kap Graphics, Case No. 1:1993-cv-05082 (N.D. Ill. 2009, Judge Bucklo) (Paxar awarded $2 million in damages plus attorneys' fees) (Patents)
- Workhorse Custom Chassis, LLC v. Performance Specialists, LLC, Opposition No. 91184804 (TTAB 2009) (Opposition sustained) (Trademark)
- Illinois Tool Works v. Phoenix American Holdings, Inc., Case No. 2:2008-cv-05721 (C.D. Cal. 2008, Judge Snyder) (Trademark Infringement)
- Country Creations v. Banwart, Opposition No. 91173418 (TTAB 2007) (Proceeding dismissed with prejudice) (Trademark)
- Spansion LLC v. Esalk LLC, Case No. D2007-1237 (WIPO 2007) (domain transferred) (ADR, arbitration, Mediation, and Expert Witnesses)
- Singletary, et al v. GMRI, Inc., Case No. 1:2004-cv-20517 (S.D. Fla. 2005, Judge Martinez) (General)
- 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)
- Grand Vehicle Works Holdings Corp. v. Mill Supply, Inc., Case No. 1:2004-cv-01915 (N.D. Ill. 2004, Judge Conlon) (Trademark, Internet, E-Commerce and Computer Technology)
- Chicago Bar Association : Member
- American Bar Association : Member
- Intellectual Property Law Association of Chicago : Member
- International Trademark Association : Member