Jacquelyn R. Prom
Jacquelyn practices trademark litigation and prosecution, unfair competition, copyright, and right of publicity law. Jacquelyn has litigation experience in cases involving trademark infringement, unfair competition, false advertising, right of publicity, and right of privacy claims before the federal courts and the Trademark Trial and Appeal Board. She has experience counseling clients on the selection and registration of trademarks in the United States and abroad. She joined the firm as an associate in September 2016, after serving as a summer associate in 2014 and 2015. During her two years working as a law clerk and summer associate, Jacquelyn assisted attorneys with trademark searching and clearance, trademark research and litigation projects.
Jacquelyn received her J.D. from The University of Chicago Law School. While in law school, Jacquelyn participated in the Hinton Moot Court Competition, as well as the Willem C. Vis International Commercial Arbitration Moot.
Jacquelyn received her B.A., magna cum laude and Phi Beta Kappa, from The Catholic University of America with a degree in Politics and Media Studies. During her undergraduate studies, Jacquelyn spent time studying abroad at The University of Oxford, New College, and in Paris, France. While in her last year of undergraduate studies, Jacquelyn worked for the U.S. Department of State as a Program Analyst in the State Department’s Litigation and Appeals Office.
In her free time, Jacquelyn enjoys celebrating her Irish heritage by Irish dancing, walking her dog, and practicing yoga.
- 2021 IP Stars, Managing Intellectual Property : An Illinois "Rising Star"
- Nichino America, Inc. v. Valent U.S.A., LLC, Case No. C.A. No. 20-704 (USDC D. Del); and Nichino America Inc v. Valent USA LLC, Case No. 21-1850 (3rd Cir) (Trademark Infringement)
- Wm. Wrigley Jr. Company v. Terphogz, LLC, Case No. 21-CV-02357 (N.D. Ill.) (Trademark Infringement)
- Jemie B.V. v. Homebiotic, Inc., Opposition No. 91266493 (TTAB 2021) (Trademark)
- Eli Lilly and Company v. Bristol-Myers Squibb Company, Opposition No. 91239036 (TTAB 2021) (Trademark)
- Freud America, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 20-902-RGA (D. Del.) (Trademark)
- Bayer Healthcare LLC v. One California Day Entertainment LLC, Opposition No. 91253852 (TTAB 2020) (Trademark)
- Bayer Healthcare LLC v. AbbVie AB, Opposition No. 91254614 (TTAB 2020) (Trademark)
- Bayer HealthCare LLC v. Facta Health, Inc., Opposition No. 91255452 (TTAB 2020) (Trademark)
- United States Patent and Trademark Office, et. al. v. Booking.com B.V., cert. granted, No. 19-46 (Nov 8, 2019) (Brief of Coalition of .Com Brand Owners as Amici Curiae in Support of Respondent) (Trademark)
- Red Bull GmbH and Red Bull North America, Inc. v. Quality Wholesale Distributors LLC, Case No. 2:18-cv-12831-CC (D.N.J. 2019, Judge Cecchi) (Gray Market Goods, Trademark Infringement, Unfair Competition)
- Red Bull GmbH and Red Bull North America, Inc. v. Kearny Beverage, Inc., Case No. 2:19-cv-15390-KM (D.N.J. 2019, Judge Arleo) (Gray Market Goods, Trademark Infringement, Unfair Competition)
- Bayer Healthcare LLC v. Medu Scientific Ltd., Opposition No. 91246881 (TTAB 2019) (Trademark)
- Advanced Micro Devices, Inc. v. Shenzhen Leadingstar Science & Technology Development Co., Ltd., Opposition No. 91247184 (TTAB 2019) (Represented Advanced Micro Devices, Inc. ("AMD"), owner of the house mark AMD and a family of AMD marks for computer and graphics processors and related computer hardware and software, against applicant for mark AMDOX for various computer hardware and software goods; default entered against Defendant) (Trademark)
- Red Bull GmbH and Red Bull North America, Inc. v. Gotham Wholesale Corp., Case No. 2:19-cv-13503-KM (D.N.J. 2019, Judge McNulty) (Gray Market Goods, Trademark Infringement, Unfair Competition)
- Bayer Healthcare LLC v. Alivio Products, Inc., Opposition No. 92068702 (TTAB 2019) (Trademark)
- Advanced Micro Devices, Inc. v. Zhejiang Baishite Trade and Industry Co., Ltd., Opposition No. 91246185 (TTAB 2019) (Represented Advanced Micro Devices, Inc. ("AMD"), owner of the mark RADEON for computer graphics processors using in computer gaming and related goods against applicant for identical mark RADEON for various athletic game-related goods; default entered against Defendant) (Trademark)
- Advanced Micro Devices, Inc. v. Joint-Stock Company Research & Development Center "ELVEES", Opposition No. 91244761 (TTAB 2019) (Represented Advanced Micro Devices, Inc. ("AMD"), owner of the mark RYZEN for semiconductors, computer chips and related goods against applicant for the mark URIZEN for virtually identical goods; judgment in AMD's favor) (Trademark)
- Bayer Healthcare LLC v. Hal Bell and Henry Vargas, Opposition No. 91244563 (TTAB 2019) (Trademark)
- DR Media Holdings, LLC and DealerRater.com, LLC v. Dan Robinson individually and dba Dealeradar, Inc., (D. MA 2018) (Judge Saris) (Granting judgment in favor of our client for claims of trademark infringement, unfair competition, violation of Massachusetts Consumer Protection Act and cybersquatting and entering permanent injunction and transfer of domain name) (Trademark Infringement, Unfair Competition, Cybersquatting)
- Conopco, Inc. v. California Fragrance Company, Inc., Cancellation No. 92066834 (TTAB 2018) (Represented registrant in dispute over claimed non-use of "APOTHACARE" mark used by client for cosmetic products, after petitioner had planned use of the virtually identical mark "APOTHECARE" for the same goods; dispute resolved, action withdrawn with prejudice, and petitioner acquired "APOTHACARE" mark by assignment) (Trademark)
- John King Chains Limited v. John King USA, Inc., et. al., Case No. 1:17-cv-1094-MMM-JEH (C.D. Ill. 2017) (Copyright Infringement, Trademark Infringement, Unfair Competition)
- Lana Unlimited Company v. Reed, et al., Case No. 1:17-cv-05116 (N.D. Ill. 2017, Judge Leinenweber) (Trade Dress, Breach of Contract)
- Lee v. Tam, Case No. 15-1293 (U.S. 2016) (Amicus Curiae brief filed on behalf of the ABA) (Trademark, Unfair Competition)
- Might You Have to Pay the USPTO's Attorneys' Fees?, Pattishall Insights (January 2020)
- Book chapter, "State Trademark and Unfair Competition Law Remedies," Trademark Infringement Remedies (ABA/Bloomberg 3d Ed. 2017) (December 2017) (coauthor with Belinda Scrimenti, 3d Edition and Cumulative Supplements 2016).
- Game Over for EMPORIUM ARCADE BAR service mark: "Merely Descriptive", Pattishall Blog (March 2017)
- PAY MY FEES! Attorney's Fee Awards in Trademark Cases after Octane Fitness, Pattishall Insights (January 2017)
- Book chapter coauthor, "State Trademark and Unfair Competition Law Remedies," Trademark Infringement Remedies (ABA/Bloomberg 2016 Cumulative Supplement) (November 2016)