Phillip Barengolts

Phil Barengolts is a counselor and litigator with first-chair trial experience, having handled trademark infringement, counterfeiting, unfair competition, design patent, copyright and false advertising disputes in federal trial and appellate courts throughout the country. In addition to his federal court experience, he has helped his clients navigate proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, the American Arbitration Association, the World Intellectual Property Organization, and in Illinois state court. Phil also has significant experience resolving disputes through alternative dispute resolution.

When he’s not helping his clients navigate disputes, Phil advises them on all aspects of brand protection, including the acquisition/divestiture and development of trademark rights worldwide, protection of the “look and feel” of a product through design patent and trade dress rights, and the proper marketing and labeling of products. He also counsels clients on trade secret protection, copyright, website development, influencer marketing campaigns, and privacy compliance.

Below are just some examples of the types of matters Phil has handled for his clients.

In the landmark ruling of Bayer Consumer Care AG et al. v. Belmora LLC, 819 F.3d 697 (4th Circuit 2016), Phil and his team successfully argued before the Fourth Circuit to overturn a trial court decision preventing his client, Bayer, from pursuing unfair competition, false advertising, and misrepresentation claims involving Belmora’s use and registration of a trademark in the U.S. which Bayer uses for one of the leading analgesics in Mexico.

Phil successfully argued an appeal before the Fifth Circuit involving claims of fraud on the patent and trademark office, cancellation of a trademark registration, and a breach of partnership dispute. He defended the trial court’s findings and conclusions in support of his client, a woman-owned business that develops marketing materials for its customers.

On behalf of a longstanding family-owned business, Phil and his team successfully defended against claims of design patent and trade dress infringement. After the filing of a motion to dismiss on behalf of the client showing the likely invalidity of the plaintiff’s design patents and lack of secondary meaning in the trade dress of plaintiff’s products, the plaintiff dismissed all of its claims.

Phil has helped several global beverage and pharmaceutical companies in their efforts to stop the importation and sale of materially different gray market goods into the United States. From counseling these clients on cost-effective strategies before launching a campaign to managing their online takedown efforts and, ultimately, obtaining injunctions in federal district courts against the importation and sale of the infringing goods, Phil has worked on all aspects of gray market goods enforcement.

In Illinois Chancery Court, Phil and his team obtained a temporary restraining order against a software developer that threatened to withhold certain software keys that the Firm’s client needed to continue operating its business. The failure to obtain these keys would have cost the client thousands of dollars a day in lost revenue from customers and threatened ongoing negotiations with potential customers. The underlying dispute concerned the ownership of the copyright in the software and a disagreement about the rights of the parties in a business in which they both had ownership stakes until the dispute arose.

Phil and his team have helped a Los Angeles-based food start-up clear and secure its proposed business name and house-mark in Canada, the U.S. and key European markets using alternative fee structures. We also ensured that the company’s advertising claims for its product would pass FTC, regulatory, and general false-advertising claim scrutiny. Finally, we helped secure certain key domain names, including through an undisclosed principal purchase.

Phil helped an international energy company divest itself of over $2.6 billion in trademarked assets, including drafting the agreements used as part of the overall deal structure and negotiating all aspects of the trademark agreement with the acquiror’s counsel.

Phil graduated from Brown University magna cum laude in 1998, after serving as captain of the school’s volleyball team. He is an enthusiastic sports fan, avid history buff, and loves to travel.