Janet A. Marvel
''Janet Marvel is a deep thinker with vast experience. She is extremely reliable and always a calming presence.''
World Trademark Review 1000 (2022)
''Janet Marvel is a 'wonderful mentor and superb listener who really tailors her advice to the particular needs of clients.''
World Trademark Review 1000 (2020)
''Janet Marvel demonstrates impressive range as a counsellor and litigator, she has impeccable judgment and deep subject-matter expertise and can be trusted with your most important intellectual assets. Her advice is very pragmatic and gets straight to the point.''
World Trademark Review 1000 (2019)
Pattishall partner Janet Marvel protects brands, copyrighted works and domain names throughout the world. She has been charged with protecting the trademarks of many world-famous brands, such as Ford, Pepsi, Harlequin (romance novels) and Mattel. She even protects the famous CHEESEHEAD hat, on view every Sunday of the NFL season when the Packers play.
As part of her practice, Janet represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country, in state and federal courts and before the United States Patent and Trademark Office. In a notable case, she successfully defended a small company’s ownership of the BRAWNY mark for plastic bags against an all-out attack in two federal courts and the TTAB. She also developed expert testimony for the Internal Revenue Service in a $262 million case involving evaluation of assets of the Carnation Company. She handled the acquisition of the famous CURAD mark.
Janet writes the comprehensive treatise Hilliard, Welch & Marvel, Trademarks and Unfair Competition (11th edition, 2023, Lexis Nexis); on-line edition (2023, Lexis Nexis). She has been an adjunct professor at Northwestern School of Law and teaches classes at Chicago Kent College of Law and the University of Chicago Law School. Janet has served for many years alongside federal district court judges as a Judge of the International Trademark Association Saul Lefkowitz Moot Court Competition.
Janet has developed comprehensive five-year brand plans for all of the major divisions of Ford Motor Company and for Mattel. She’s handled all the brand needs for Medline Industries, Inc., an over $8 billion a year medical products company. She has developed and runs worldwide anti-counterfeiting programs for large clients. In the U.S. she has worked closely with police to raid defendants’ warehouses and obtain felony convictions for sellers of counterfeit Ford parts. She has in-depth knowledge of the use of Chinese copyright law and Chinese Customs enforcement.
When she is not working, you will probably find Janet hiking — often north of the Arctic Circle. Janet’s travel has included backpacking trips to Canada’s Ellesmere Island (at 80 degrees north latitude, accessible just 3 weeks a year), Gates of the Arctic National Park and the Arctic National Wildlife Refuge.
Janet also serves on the Textile Committee of the Art Institute of Chicago, which she says has given her fascinating insights into the art world.
After graduating Phi Beta Kappa from Indiana University in 1983, Janet took three years off before entering law school. During that time, she went to work in advertising. She earned her J.D. from the University of Michigan Law School in 1989.
- Automobiles & Components
- Consumer Durables & Apparel
- Food, Beverage & Tobacco
- Health Care Equipment & Services
- Technology Hardware & Equipment
- 2023 World Trademark Review (WTR) 1000 : Ranked Gold nationally and in Illinois for "prosecution and strategy" and ranked Silver in Illinois for "enforcement and litigation"
- 2023 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2023 World Trademark Review (WTR) Global Leaders 2022 : Recognized as a Global Leader in Private Practice for 2022
- 2023 The Best Lawyers in America® 2023 : Recognized as “Lawyer of the Year” in Trademark Law in Chicago
- 2022 Who's Who Legal: Trademarks 2022 : One of the country's leading IP Trademark lawyers
- 2022 IP Stars, Managing Intellectual Property : Recognized Nationally and in Illinois as a Trade mark star
- 2022 World Trademark Review (WTR) 1000 : Ranked Gold nationally and in Illinois for "prosecution and strategy"
- 2022 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation"
- 2022 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2021 Who's Who Legal: Trademarks 2021 : One of the world's leading Trademark lawyers
- 2021 The Best Lawyers in America® 2022 : Recognized in the field of Trademark Law
- 2021 World Trademark Review (WTR) : Recognized as a Global Leader in Private Practice
- 2021 IP Stars, Managing Intellectual Property : Recognized Nationally and in Illinois as a Trade mark star
- 2021 World Trademark Review (WTR) 1000 : Ranked Gold nationally and in Illinois for "prosecution and strategy"
- 2021 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation"
- 2021 Illinois Super Laywers : An Illinois "Super Lawyer"
- 2020 The Best Lawyers in America® 2021 : Recognized in the field of Trademark Law
- 2020 Selected as a "Trade mark star" in Illinois
- 2020 IP Stars, Managing Intellectual Property : Selected as an “IP Star” in Illinois
- 2020 World Trademark Review (WTR) 1000 : Nationally ranked Gold for “prosecution and strategy”; ranked Gold in Illinois for “prosecution and strategy”; and ranked Silver in Illinois for “enforcement and litigation”
- 2020 World Trademark Review (WTR) 1000 : “A senior leader in the group … is Janet Marvel – a ‘wonderful mentor and superb listener who really tailors her advice to the particular needs of clients.’ As an editor of the American Bar Association’s Landslide magazine, she has followed dynamic change in the trademark industry extremely closely and can bring surety to brand owners as they navigate ever more complex terrains. Marvel also authored a treatise on trademark and unfair competition law alongside Joseph Welch II and David Hilliard.”
- 2020 Illinois Super Lawyers : An Illinois “Super Lawyer”
- 2019 Who’s Who Legal : A Global Trademark Lawyer
- 2019 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for “enforcement and litigation” and “prosecution and strategy”
- 2019 World Trademark Review (WTR) 1000 : ”Janet Marvel demonstrates impressive range as a counsellor and litigator, she has impeccable judgment and deep subject-matter expertise and can be trusted with your most important intellectual assets. Her advice is very pragmatic and gets straight to the point.”
- 2019 Illinois Super Lawyers : An Illinois “Super Lawyer”
- 2018 Who's Who Legal: Trademarks 2018 : One of the world's leading Trademark lawyers
- 2018 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation" and "prosecution and strategy"
- 2018 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2017 Who's Who Legal: Trademarks 2017 : One of the world's leading Trademark lawyers
- 2017 World Trademark Review (WTR) 1000 : "Janet Marvel can handle any trademark matter under the sun; she has 'a stellar reputation and is terrific with clients.'"
- 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2016 Expert Guides : A leading practitioner in Trade Marks
- 2016 Who's Who Legal: Trademarks 2016 : One of the world's leading Trademark lawyers
- 2016 World Trademark Review (WTR) 1000 : "She is a fantastic lawyer who is deeply involved with the IP industry."
- 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property
- 2015 Legal Media Group's Women in Business Law 2015 Expert Guide : Recognized as a Woman in Business Law Expert
- 2015 Who's Who Legal : One of the world's leading Trademark lawyers: "The 'distinguished' David Hilliard has represented Sun Life, Ford and Pepsi."
- 2015 World Trademark Review (WTR) 1000 : For non-contentious instructions, there is no better choice than Janet Marvel, a meticulous brand strategy planner."
- 2015 Leading Lawyers Magazine : An Illinois "Leading Lawyer"
- 2014 The Legal 500 United States : "Janet Marvel handles anti-counterfeiting work."
- 2013 World Trademark Review 1000 : Cited partner Janet Marvel, saying she "crafts finely tuned development strategies" and has "a highly active enforcement practice, which encompasses briefs in the ever-evolving anti-counterfeiting field."
- 2013 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2012 World Trademark Review 1000 : Janet A. Marvel is acclaimed for her "great understanding of trademark protection"
- 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property
- 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
- 2008 Who's Who Legal: Illinois 2008 : An "Illinois leading lawyer in Trademark law"
- 2006 Who's Who Legal, The International and U.S. Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
- Lull Ventures, LLC v. Keilhauer Ltd., Cancellation No. 92078471 (TTAB 2022) (Trademark)
- Medline Industries, Inc. v. Bestar (Xiamen) Import & Export Co, Ltd., Opp. No. 91264111 (TTAB 2021) (Trademark)
- Atlantic Therapeutics Group v. Medline Industries, Inc., Opp. No. 91252212 (TTAB 2019) (successfully defended opposition to client’s trademark application) (Trademark)
- Medline Industries, Inc. v. JH KANG, Claim Number: FA1612001705498 (Forum 2017) (UDRP re: medlinescrubs.net; Domain transferred to client) (UDRP Proceeding)
- C.R. Bard, Inc. v. Medline Industries, Inc., Opposition No. 91223009 (TTAB 2015) (Trademark)
- Intex Marketing Ltd. v. The Coleman Company, Inc., Opposition No. 91220432 (TTAB 2015) (Trademark)
- Sweet Street Desserts, Inc. v. Chudleigh's Ltd., Case Nos. 15-1445, 15-1548, Third Circuit Court of Appeals (2015) (Affirming summary judgment for Chudleigh's on Plaintiff's tortious interference claim) (Tortious Interference, Trade Dress Infringement, Functionality)
- Flambeau, Inc. v. The Coleman Company, Inc., Opposition Nos. 92060501, 92060505 (TTAB 2015) (Trademark)
- Medline Industries, Inc. v. Kyungeh An, Case No. 1470333 (NAF 2012) (domain name transferred to client) (Domain Name)
- Learning Resources, Inc. v. Williams Lea Inc., First Salem Services Group, Houghton Mifflin Harcourt, Inc., Steven Tracy and Theresa Parker, Case No. 1:12-cv-7831 (N.D. Ill. 2012, Judge Darrah) (Trademark Infringement)
- Bennett v. Ritzenhoff AG, Case No. 1:11-cv-07545 (N.D. Ill. 2012) (case dismissed in favor of Ritzenhoff) (Trademark Infringement)
- Medline Industries, Inc. v. Merritt DeLaughter, Case No. 1451721 (NAF 2012) (domain name transferred to client) (Domain Name)
- Navistar, Inc.; Pure Power Technologies, LLC and International Engine Intellectual Property Company LLC v. Pure Power, LLC, C.A. No. 4:12-cv-00013-BLW (D. Idaho, Judge Winmill) (Trademark)
- Elaine Opsitnik v. Medline Industries, Inc., Case No. 12-CH-29978 (Ill. 2012, Judge Allen) (Preliminary injunction motion against Medline denied; Right of Publicity claim dismissed on Medline's motion) (Right of Publicity, Breach of Contract)
- Coach, Inc. et al v. City of Chicago et al, Case No. 1:10-cv-03108 (N.D. Ill. 2011, Judge Shadur) (Anti-counterfeiting, Trademark Infringement)
- PepsiCo, Inc. v. The Coca-Cola Company, Opposition No. 91175219 (TTAB 2009) (Trademark)
- Ford Motor Company v. Safir GT 40 Spares, Limited, Opposition No. 91159033 (TTAB 2009) (Trademark)
- Craftsmen Limousine, Inc. v. Ford Motor Co., 2005 WL 2321662 (W.D. Mo. 2008, Judge Whipple) (JURY TRIAL) (Unfair Competition, Trade Dress)
- Medline Industries, Inc. v. Strategic Commercial Solutions, Inc., 553 F.Supp.2d 979 (N.D. Ill. 2008, Judge Castillo) ($4.5 million awarded to Medline Industries) (Trademark Infringement)
- Ford Motor Co. v. Manheim Auctions, Inc., Opposition No. 91173930 (TTAB 2008) (Trademark)
- Kimberly-Clark Corporation v. Medline Industries, Inc., Case No. 1:2007-cv-03121 (N.D. Ill. 2008, Judge Dow) (Trademark Infringement)
- Ford Motor Co. v. Izachak Levy et al., Case No. 1:2004-cv-08356 (N.D. Ill 2007, Judge St. Eve) (Ford awarded injunction and damages) (Anti-counterfeiting, Trademark Infringement)
- Ford Motor Co. v. Money Makers Automotive Surplus, Inc., 2005 WL 2464715 (D. Neb. 2007, Judge Bataillon) (Ford awarded $5 million in damages) (Counterfeiting, Trademark Infringement, Trade Dress Infringement)
- Medline Industries, Inc. v. Medline Products Co., 2004 WL 1921020 (N.D. Ill. 2004, Judge Brown) (Trademark Infringement)
- American Bar Association : Fellow
- American Bar Association-Intellectual Property Law Section : Editor in Chief, Landslide Magazine (2019); Assistant Editor in Chief, Landslide Magazine (2018); Intake Editor (2017-2018); Editorial Board, Landslide Magazine (2012-2017); Acquisitions Editor (2016-2017)
- Intellectual Property Law Association of Chicago : Board of Managers (2013)
- International Trademark Association : Non-Profit Committee (2012-2014)
- International Trademark Association’s Non-Profit Committee : Subcommittee Vice Chair (2012-2013)
- Intellectual Property Law Association of Chicago : Trademark Committee Chair (2011)
- Intellectual Property Law Association of Chicago : U.S. and International Trademark Committee Chair (2009-2010)
- Northwestern Pritzker School of Law : Adjunct Professor, Trademark and unfair competition course
- Intellectual Property Law Association of Chicago : Vice chair, U.S. Trademarks Committee
- International Trademark Association : Membership Services Committee, Academic Subcommittee
- American Intellectual Property Law Association : Anti-counterfeiting Committee
- "Opportunities and Traps Under The New Trademark Act Amendments," Pattishall Insights (April 2021)
- Co-author, Medline Wins Important Case on Trademark Registration of a Color, Pattishall Insights (April 2020)
- Co-author, "First Amendment Protection for Content Creators 30 Years After Rogers v. Grimaldi," State Bar of Michigan IPLS Proceedings, Volume 30, Issue 1
- Brexit: What Trademark Owners Need to Know Now, Pattishall Insights (May 2018)
- Co-Author of a treatise: Hilliard, Welch & Marvel, Trademarks and Unfair Competition (11th edition, 2023, Lexis Nexis); on-line edition (2023, Lexis Nexis)
- Prepare Now for Random Trademark Registration Audits, Pattishall Insights (October 2017)
- Anti-Counterfeiting Master Class: Interview With Paul Brown - Underwriters Laboratories," Landslide Magazine, a Publication of the ABA Section of Intellectual Property Law, Vol. 10, No. 1 (September/October 2017)
- It's Really Hard to Trademark Product Designs. But, You Can Do It. Pattishall Blog (July 2017)
- "Brandverbing Your Trademark." Is that a good thing? Pattishall Blog (July 2017)
- Pick the Right Trademark and You Won't Have to Sue People, Pattishall Blog (June 2017)
- Conversations in IP Law - Oliver Herzfeld of Beanstalk Talks about Brand Value and Outsourcing (Interview), Landslide Magazine, a Publication of the ABA Section of Intellectual Property Law, Vol. 9, No. 2 (November/December 2016)
- Four IP Virtuosos: William Coughlin, President/CEO Ford Global Technologies (Interview), Landslide Magazine, a Publication of the ABA Section of Intellectual Property Law, Vol. 8, No. 4 (March/April 2016)
- Trademark Infringement Remedies, Chapter 6 (2nd edition and supplements 2013-2016), a publication of the ABA Section of Intellectual Property Law
- Virtual Minimum Contacts: Where Does Personal Jurisdiction Attach Through Internet-Based Activities?, Pattishall Insights (July 2015)
- Flea Market Operator Hit for Over $5 Million for Permitting Sale of Counterfeit Products, Pattishall IP News (June 2013)
- Trademark Board Confirms That New York Yankees Are Evil, Pattishall IP News (April 2013)
- How to Find and Develop Your Company's Non-Traditional Trademarks, TDmonthly, January 2013
- Value gained from nontraditional trademarks worth the effort, sportsbusinessdaily.com (January 2013)
- Book chapter co-author, "Extraordinary Circumstances and Relief," Trademark Infringement Remedies (ABA/Bloomberg 2d Ed. 2012) (December 2012)
- Brand Planning: Protect Your Trademarks and Intellectual Property, TDmonthly, October 2012
- When Does the First Amendment Trump Trademark Law? 11th Circuit Adopts Rogers v. Grimaldi Test, Pattishall IP News (September 2012)
- Seventh Circuit Issues Important Decision Regarding Trademarks in Bankruptcy, Pattishall IP News (July 2012)
- Recent Cases Show That Utilitarian Functionality Is A Serious - And Common - Impediment To Trade Dress Protection, Pattishall IP News (June 2012)
- The Mud Thickens: The Federal Circuit Issues Its Latest Decision on Utilitarian Functionality, Refusing Registration to Becton Dickinson's Blood Collection Tube Cap, Pattishall IP News (April 2012)
- Does CRACKBERRY Parody BLACKBERRY? TTAB Says "No", Pattishall IP News (March 2012)
- Defendant Hoist Manufacturer Awarded Attorney's Fees in Trade Dress Case Secalt v. Wuxi Shenxi Construction Machinery, Pattishall IP News (February 2012)
- ROLEX vs. ROLL-X: TTAB Says that ROLL-X for X-ray Tables Does Not Dilute Famous ROLEX Mark, Pattishall IP News (January 2012)
- "Classic" Case of Trademark Infringement? Top Tobacco and North Atlantic Operating Company Argue Whether CLASSIC CANADIAN and CLASSIC AMERICAN BLEND are Confusingly Similar, Pattishall IP News (December 2011)
- "WE THE PEOPLE" Should Avoid Trashing Our Own Trademarks, Pattishall IP News (December 2011)
- Total War: General Mills Successfully Opposes Registration of "TOTAL" for Yogurt, Pattishall IP News (November 2011)
- First Circuit: Supreme Court Decision Calls into Question Presumption of Irreparable Harm in Trademark Infringement Preliminary Injunction Cases, Pattishall IP News (June 2011)
- Federal Court Determines that Filing of Opposition Along with Settlement Discussions Regarding Use of a Mark is Not Grounds for Declaratory Judgment, Pattishall IP News (May 2011)
- Federal Circuit Oral Argument Bose v. Hexawave: Have the Trademark Trial and Appeal Board's Medinol Fraud Cases "Crossed a Very Fundamental Line"? Pattishall IP News (June 2009)
- Author of several Lexis/Nexis Expert Commentaries
- "Multi-Jurisdictional Enforcement Strategies" for the International Trademark Forum of the Institute of Continuing Legal Education Intellectual Property Section, State Bar of Michigan
- "The Power of Brands and Balancing the Rights of Trademark Owners with Society’s Interest in Free Expression with Janet Marvel," an On Intellectual Property Podcast (March 2023)
- "Functionality in Trademark Prosecution and Litigation: Protecting Trademarks, Defending Against Infringement Claims," a Strafford Live Webinar (October 2022)
- "Functionality in Trade Dress Prosecution," a Strafford Live Webinar (January 2022)
- "Trademark Year in Review: Key Decisions, Trends, and Strategies," a Strafford Live Webinar (April 2021)
- "Understanding the Intellectual Property License 2019: Trademark Licensing" Practising Law Institute, Chicago, IL (October 2019)
- "A Guide on the Trademark Law: Recent Developments, Enforcement and Protection Approach Explored!", a LIVE Webcast (April 2019)
- "Understanding the Intellectual Property License 2018," Practising Law Institute, Chicago, IL (November 2018)
- "Functionality in Trade Dress Prosecution and Litigation: Protecting the Look and Feel of Products and Packaging," a Strafford Live Webinar (January 2018)
- "Trademark, Copyright, First Amendment & Right of Publicity," 61st Annual John Marshall Law School Intellectual Property Law Conference, Chicago, IL (November 2017)
- "Functionality in Trademark Prosecution and Litigation," a Strafford Live Webinar (October 2017)
- "Understanding the Intellectual Property License 2016: Trademark Licensing," Practising Law Institute, Chicago, IL (November 2016)
- "Understanding the Intellectual Property License 2015: Trademark Licensing," Practising Law Institute, Chicago, IL (2015)
- "Understanding the Intellectual Property License 2014: Trademark Licensing," Practising Law Institute, Chicago, IL (2011-2014)
- "The Intersection of Trade Dress, Design Patent and Copyright, Trade Dress Functionality," Chicago Bar Association, Chicago, IL (April 2014)
- "Trademarks: Year in Review," 58th Annual John Marshall Law School Intellectual Property Law Conference, Chicago, IL (February 2014)
- "Top Ten U.S. Trademark Cases in 2012-2013," Annual Meeting of the Intellectual Property Institute of Canada, Ottawa Canada (September 2012)
- "Trademarks: Utilitarian and Aesthetic Functionality," Strafford Live Seminar (June 2012)
- "International Trademark Do's and Don'ts," Chicago Bar Association (April 2012)
- "Top Ten U.S. Trademark Cases in 2010-2011," Annual Meeting of the Intellectual Property Institute of Canada, Chicago, IL (November 2011)
- "Trademark Law: Trade Dress and other Important Issues," Martindale.com Connected's Trade Dress Webinar (December 2010)
- "Trade Dress Development (and some other things)," Intellectual Property CLE Forum, Chicago, IL (April 2010)
- Teleconference: "Trademark Selection, Protection & Litigation: A Crash Course for Associates" (December 2009)
- "Proactive Steps to Protect Your Brand, A Lawyer's Perspective," 2009 Product Authentication and Brand Security Conference (October 2009)
- Moderator, "Counterfeiting Across the Globe", AIPLA Mid-Winter Meeting (2009)
- "Issues of Fraud in the United States Patent and Trademark Office," Chicago Bar Association Young Lawyers' Section, Intellectual Property Law Committee (October 2008)
- "TTAB Fraud Cases," Chicago Bar Association Young Lawyers Section
- "Trademark Registration" and "International Trademarks," Lexis/Nexis Intellectual Property 101 Teleconference Series, Trademarks
- "Throw the Bums Out: Tips for Fighting Counterfeiting Online and in Court," Product Authentication and Brand Security Conference
- "Trademarks: Protecting Your Business," a webinar for the Specialty Equipment Market Association (automobile and auto parts manufacturers' association)
- "Multi-Jurisdictional Enforcement Strategies," Michigan Institute of Continuing Legal Education International Trademark Forum
- "Famous and Well-Known Marks: The International Risks," Northwestern University Symposium on Trademark Law
- U.S. Court of Appeals for the Third Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the District of Arizona
- U.S. District Court for the Eastern District of Michigan