Robert W. Sacoff
''Since the early days of Gateway, we have relied on Bob to protect and enforce our brands.''
Mike Barry, Regional General Counsel, Acer America, Inc.
'' Robert Sacoff is an extremely thorough lawyer, an ace on TTAB proceedings and internet-related matters as well as a leader in various IP organisations, he is truly impressive."
World Trademark Review, 2019
''Robert Sacoff . . . is a highly respectable figure in the IP world and has obtained many awards for his activities and work. He is a magnificent professional who always displays a comprehensive knowledge of the law and the vision to devise the most appropriate strategies, especially in truly complex cases." "A dean of the Chicago Bar, he has had a long, glittering career and has been deeply involved in the community.''
World Trademark Review, 2018
Bob has practiced trademark, copyright and unfair competition law and litigation for over 30 years. He has prosecuted and defended cases in courts throughout the country, and in the Trademark Trial and Appeal Board. He has dealt with myriad e-commerce and social media issues, and has handled scores of UDRP and URS cases, combating fraudulent practices and recovering domain names from cybersquatters. His experience spans diverse consumer and B2B product fields such as food and wine, fashion brands, sporting goods, computer hardware and software, information technology, integrated circuits, agricultural equipment, insurance, banking, publishing, consulting, sports and entertainment ticketing, vehicle rental, automobiles and auto parts.
He has been an author, speaker and bar leader in the intellectual property field for decades, within and outside the United States. He Chaired the American Bar Association Section of Intellectual Property Law, which at the time had 20,000 members and 90 committees, and co-authored an ABA amicus curiae brief to the Supreme Court in the Victoria’s Secret trademark dilution case. He served on the Boards of Directors of INTA, the International Trademark Association, and AIPLA, the American Intellectual Property Law Association, and helped formulate the Trademark Office intent-to-use rules implementing the 1989 Lanham Act revisions. He testified before Congress on the Trademark Counterfeiting Act of 1984 and the Trademark Dilution Revision Act of 2006. He served on the Trademark Public Advisory Committee for many years as a private sector advisor to the U.S. Patent & Trademark Office.
Bob has also been active in the field of foreign and international trademark law, representing clients in projects ranging from clearance, registration, enforcement and licensing to oppositions, gray market goods, and infringement actions. Bob served as a private sector advisor to the U.S. Delegation to the Trademark Law Treaty Diplomatic Conference in Geneva, Switzerland. He has also been an active member of AIPPI, the Association Internationale pour la Protection de la Propriété Intellectuelle. AIPPI is a politically neutral professional association founded in 1897. It has over 9,000 members in more than 100 countries, and is devoted to developing and improving intellectual property laws around the world. At its 2016 Congress in Milan, Italy, AIPPI presented Bob with its Award of Merit, which recognizes outstanding contributions to AIPPI’s work. Bob is one of only eight American lawyers to have received this Award since its creation in 1997.
Bob has degrees from Northwestern University School of Law, where he was a member of the Editorial Board of the Northwestern University Law Review, and the University of Notre Dame. He is regularly recognized in professional reviews such as World Trademark Review, Legal 500, International Who’s Who of Trademark Lawyers, Marquis Who’s Who in America, Martindale-Hubbell, Illinois Super Lawyers, International Who’s Who of Business Lawyers, and Leading Lawyers. He lives in Glenview, Illinois with his wife Mary, and in his spare time enjoys international travel and the racquet sports, including squash and court tennis, the medieval predecessor of modern lawn tennis.
- Automobiles & Components
- Consumer Durables & Apparel
- Hotels, Restaurants & Leisure
- Media
- Retailing
- Food, Beverage & Tobacco
- Household & Personal Products
- Banks
- Diversified Financials
- Insurance
- Health Care Equipment & Services
- Transportation
- Software & Services
- Technology Hardware & Equipment
- 2023 World Trademark Review (WTR) 1000 : Ranked Silver nationally for "enforcement and litigation"
- 2023 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation"
- 2023 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2023 Martinale Hubbel Bar Register : AV® Rated Preeminent Lawyer for 2023
- 2022 Who's Who Legal: Trademarks 2022 : One of the country's leading IP Trademark lawyers
- 2022 World Trademark Review (WTR) 1000 : Ranked Silver nationally in "enforcement and litigation"
- 2022 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation"
- 2022 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2022 Leading Lawyers Magazine : An Illinois “Leading Lawyer” in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law
- 2021 Martindale Hubbell Bar Register : AV® Rated Preeminent Lawyer for 2022
- 2021 Who's Who Legal: Trademarks 2021 : One of the world's leading Trademark lawyers
- 2021 World Trademark Review (WTR) 1000 : Ranked Silver nationally in "enforcement and litigation"
- 2021 World Trademark Review (WTR) 1000 : Ranked Silver in Illinois for "enforcement and litigation"
- 2021 Illinois Super Laywers : An Illinois "Super Lawyer"
- 2021 Leading Lawyers Magazine : An Illinois “Leading Lawyer” in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law
- 2020 Expert Guides - Trade Mark 2020 : Recognized as a leading practitioner in Trade Marks
- 2020 World Trademark Review (WTR) 1000 : Nationally ranked Silver for “enforcement and litigation” and ranked Silver in Illinois for “enforcement and litigation”
- 2020 Illinois Super Lawyers : An Illinois “Super Lawyer”
- 2020 Leading Lawyers Magazine : An Illinois “Leading Lawyer”
- 2019 World Trademark Review, Experts’ expert : Rated one of the Top 20 trademark law practitioners in the U.S.
- 2019 Who’s Who Legal : A Global Trademark Lawyer
- 2019 D.C. Bar : Champion of Intellectual Property Award. The D.C. Bar presents this career-achievement award to a lawyer “who has served the intellectual property community with distinction, whose efforts have had an impact on intellectual property policy, who has encouraged innovation and the protection of intellectual property rights, and who continues to inspire and advocate for the intellectual property community.”
- 2019 World Trademark Review (WTR) 1000 : Nationally ranked Silver for “enforcement and litigation”
- 2019 World Trademark Review (WTR) 1000 : “Robert Sacoff is an extremely thorough lawyer, an ace on TTAB proceedings and internet-related matters as well as a leader in various IP organisations, he is truly impressive.”
- 2019 Illinois Super Lawyers : An Illinois “Super Lawyer”
- 2019 Leading Lawyers Magazine : An Illinois “Leading Lawyer”
- 2019 Leading Lawyers Magazine : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law for the State of Illinois
- 2019 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 2018 Who's Who Legal: Trademarks 2018 : One of the world's leading Trademark lawyers
- 2018 Expert Guides - Trade Mark 2018 : Recognized as a leading practitioner in Trade Marks
- 2018 World Trademark Review (WTR) : Nationally ranked Silver for "enforcement and litigation
- 2018 Leading Lawyers Magazine : An Illinois "Leading Lawyer"
- 2018 Leading Lawyers Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law for the State of Illinois
- 2018 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2017 Who's Who Legal: Trademarks 2017 : "Robert W. Sacoff boasts over three decades of experience in US courts and before the Trademark Trial and Appeal Board (TTAB). Peers speak highly of his work in this area and of his knowledge of international trademark law."
- 2017 Who's Who Legal: Trademarks 2017 : One of the world's leading Trademark lawyers
- 2017 World Trademark Review (WTR) 1000 : Nationally ranked Silver for "enforcement and litigation" and ranked Silver in Illinois for "enforcement and litigation"
- 2017 World Trademark Review (WTR) 1000 : "Robert Sacoff is another ace at resolving disputes and has been a blessing for brand owners seeking peace of mind both domestically and internationally. The defence of rights in cyberspace is a forte and he has handled a plethora of Uniform Domain Name Dispute Resolution Policy (UDRP) cases."
- 2017 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2017 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 2016 AIPPI : Award of Merit
- 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 Leading Lawyers Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law for the State of Illinois
- 2016 World Trademark Review (WTR) 1000 : "Sacoff is a truly excellent trademark attorney, a go-to guy in the region."
- 2016 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation
- 2016 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 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 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 2015 World Trademark Review (WTR) 1000 : Placed in the Silver Band nationally for "Individuals: enforcement and litigation"
- 2015 Illinois Super Lawyers : An Illinois "Super Lawyer" in Intellectual Property Litigation
- 2015 Leading Lawyers Magazine : An Illinois "Leading Lawyer"
- 2014 Leading Lawyers Magazine, Business Edition : Recognized as a Leading Lawyer in Copyright & Trademark Law, Intellectual Property Law and Trade Secrets/Unfair Competition Law for the State of Illinois
- 2014 American Lawyer Media and Martindale-Hubbell : Selected as a 2014 Top Rated Lawyer in Intellectual Property
- 2014 2014 Guide to the World's Leading Trademark Lawyers : Recognized as one of the World's Leading Trade Mark Lawyers
- 2014 Illinois Super Lawyers Magazine : An Illinois "Super Lawyer"
- 2013 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
- 2013 The International Who's Who of Trademark Lawyers : One of the world's leading Trademark lawyers
- 2013 American Lawyer Media and Martindale-Hubbell : Selected as a 2013 Top Rated Lawyer in Intellectual Property
- 2013 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2013 The International Who's Who of Business Lawyers : Recognized
- 2012 Leading Lawyers Magazine, Business Edition : A "Leading Lawyer" in Intellectual Property
- 2012 The Legal 500 United States : Recommended for his focus on trademark infringement and unfair competition cases.
- 2012 The International Who's Who of Trademark Lawyers 2012 : One of the world's leading Trademark lawyers
- 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
- 2011 The International Who's Who of Trademark Lawyers 2011 : One of the world's leading Trademark lawyers
- 2011 The International Who's Who of Business Lawyers : Recognized
- 2010 Leading Lawyers Magazine, Business Edition : Selected as a "Top Business Lawyer in Intellectual Property Law in Illinois"
- 2010 The International Who's Who of Business Lawyers 2010 : One of the world's leading Business lawyers
- 2010 World Trademark Review : In the "Experts' expert" list, Robert W. Sacoff is included as one of the top 20 trademark practitioners in the United States
- 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
- 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property Litigation
- 2009 Managing Intellectual Property : Selected as a "World's Leading Trade Mark Practitioner"
- 2009 Chicago Lawyer Magazine : Selected as a "Top Intellectual Property Lawyer in Illinois" by Leading Lawyers Network
- 2009 American Bar Foundation : Nominated by his peers to be a Fellow, an honor limited to one-third of one percent of the lawyers in America
- 2009 Leading Lawyers Network Magazine : A "Leading Lawyer" in Intellectual Property
- 2009 The International Who's Who of Trademark Lawyers 2009 : One of the Leading Trademark Attorneys in the World
- 2008 Who's Who Legal, The International Who's Who of Business Lawyers : Characterized as "authoritative" in his field
- 2008 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
- 2008 Who's Who Legal: Illinois 2008 : An "Illinois leading lawyer in Trademark law"
- 2008 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Litigation
- 2007 World Trademark Review : "A leader of the trademark bar and well recognized speaker and author on trademark law."
- 2007 Who's Who Legal, The International Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
- 2007 Marquis Who's Who in American Law, 30th Anniversary Edition : Recognized
- 2007 Informa plc, the publisher of Trademark World, Patent World and Copyright World : Identified as a "Luminary" within the field of intellectual property
- 2007 The International Who's Who of Trademark Lawyers 2007 : Recognized
- 2007 Leading Lawyers Network Magazine : Named a "Leading Lawyer" in Intellectual Property Law
- 2007 Who's Who Legal, The International Who's Who of Business Lawyers : One of the 22 "Most Highly Regarded Individuals -Global" in intellectual property (1 of 6 in the U.S.)
- 2007 The Legal 500 United States : Recognized for his "litigation prowess" in intellectual property matters
- 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
- Acer Incorporated v. Peijun Cai, Opp. No. 91266009 (TTAB 2021) (Trademark)
- Hyper Ice, Inc. v. Medisana AG, and Shenzhen Comfort Technology Co. , Ltd. dba Easepal Group, Case No. 8:16-cv-01711-AG-KES (C.D. Ca. 2016, Judge Guilford) (Trade Dress Infringement, Breach of Contract, Breach of Fiduciary Duty)
- Donnay USA Limited v. Donnay International S.A., International Brand Management Limited, and Brands Holdings Limited, Case No. 15-cv-05969-JMA-SIL (E.D.N.Y., 2015, Judge Azrack) (DONNAY trademark licensee disputing termination and seeking $190,000,000; case dismissed on our motion 9/1/2016; plaintiff appealed to the Second Circuit Court of Appeals (No. 16-3067), dismissal affirmed on 8/24/2017) (Tort Claims, Trademark License Dispute)
- Tyler Pipe Company, a division of McWane, Inc. v. MIFAB, Inc., Case No.: 2:16-cv-00275-JRG (E.D. Tex., 2016) (Settled; case concerned copyright infringement, trademark infringement, unfair competition, business disparagement, and tortious interference (Copyright, Trademark, Unfair Competition)
- Linear Technology Corp. v. Hulmiho Ukolen, Case No. D2016-0830 (WIPO 2016) (UDRP re: ltspice.com; Domain transferred to client) (UDRP Proceeding)
- Booz Allen Hamilton Inc. v. Domain May Be For Sale Check Afternic.com, Case No. D2016-1339 (WIPO 2016)(boozallem.com, transferred to complainant) (Domain Name)
- CNH Industrial America LLC v. Chris Dudek, Case No. D2016-0599 (WIPO 2016) (newholland.equipment, transferred to complainant) (Domain Name)
- Hydromax Incorporated Limited v. Tyler Pipe Company, Cancellation No. 92063107 (TTAB 2016) (settled) (Trademark Cancellation)
- CNH Industrial America LLC v. Derrick James, Case No. D2016-0320 (WIPO 2016) (casedozerparts.com, transferred to complainant) (Domain Name)
- CNH Industrial America LLC v. Terry Burkart, Case No. D2015-1683 (WIPO 2015) (caseih.parts and newholland.parts ordered transferred to complainant) (Domain Name)
- Donnay USA Limited v. Donnay International S.A., Case No. 2:14-cv-06095-SJF-GRB (E.D.N.Y., 2014, Judge Feuerstein) (DONNAY trademark licensee disputing termination and seeking $2,000,000,000; dismissed with prejudice); on appeal, Case No. 15-2385 (2d Cir. 2015) (appeal dismissed) (Domain Name, Tort Claims, Trademark License Dispute)
- Booz Allen Hamilton Inc. v. INTDOMAIN/APEXED, Case No. D2015-1413 (WIPO 2015) (booz-allen.org ordered transferred to complainant) (Domain Name)
- Booz Allen Hamilton Inc. v. Andrea Dini, Case No. D2015-1626 (WIPO 2015) (booz-allen.net ordered transferred to complainant) (Domain Name)
- Booz Allen Hamilton Inc. v. Groupfield Limited, Case No. D2015-1614 (WIPO 2015) (booz-allen.biz ordered transferred to complainant) (Domain Name)
- Booz Allen Hamilton Inc. v. Leftfielddomains.com, Case No. D2015-1414 (WIPO 2015) (boozallenclassic.com transferred to complainant) (Domain Name)
- Booz Allen Hamilton Inc. v. Hongjie Shi, Case No. D2015-1009 (WIPO 2015) (boozallen.asia ordered transferred to complainant) (Domain Name)
- CNH Industrial Inc. v. Steve Brim, Case No D2015-1188 (WIPO 2015) (newhollandtractor.parts ordered transferred to complainant) (Domain Name)
- Acer Inc. v. Good Shepherd Motorsports LLC, Opposition No. 91219894 (TTAB 2014) (ACER) (Trademark)
- Tommy Hilfiger Licensing LLC v. Hustletainment, Cancellation No. 92060594 (TTAB 2014) (TH vs. TH T.E.A.M.H.U.S.T.L.E., registration cancelled, judgment in favor of petitioner) (Trademark)
- Booz Allen Hamilton Inc. v. Fabrizio Benassi, Case No. FA1410001587850 (Nat'l Arb. Forum, 2014) (boozallen.services, name suspended per complaint) (Domain Name, URS Proceeding)
- Tommy Hilfiger Licensing LLC v. Hard Tek, LLC, Opposition No. 91219100 (TTAB 2014) (TH vs. TH Hard Tek, opposition sustained, judgment entered in favor of opposer) (Trademark)
- CNH Industrial America LLC v. Arkadiy Lazarev, Case No. (CRR) D2014-1954 (WIPO 2014) (case vs. case.construction, name voluntarily transferred) (Domain Name, UDRP Proceeding)
- Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217746 (TTAB 2014) (CHICAGO STALEYS vs. CHICAGO STALEYS, application expressly abandoned) (Trademark)
- Tate & Lyle Ingredients Americas LLC v. Pocket Maps Worldwide Ltd., Opposition No. 91217747 (TTAB 2014)(DECATUR STALEYS vs. DECATUR STALEYS, application expressly abandoned) (Trademark)
- Tommy Hilfiger Licensing LLC v. Jami Jurgens, Opposition No. 91216937 (TTAB 2014) (TOMMY GIRL vs. TOMGIRL) (Adverse application amended by agreement) (Trademark)
- Acer Inc. v. Eitan Chkechkov, Opposition No. 91212866 (TTAB 2014) (Judgment for opposer) (ACER vs AXER) (Trademark)
- Slazengers Limited v. Arctic Cat Inc., Opposition No. 91198066 (TTAB 2014) (Design vs. Design, settled) (Trademark)
- Ferrara Candy Co. v. Head Spirits, LLC, CA No. 2:14-cv-1182-PMD (D.S. Car., 2014, Judge Duffy) (LEMONHEADS vs. LEMON HEAD VODKA) (Use of adverse mark terminated and adverse application abandoned) (Trademark Infringement)
- Societe des Produits Nestle S.A. v. BB Endeavors LLC, Opposition Nos. 91203331 and 91206176 (TTAB 2014) (SKINNY COW vs. SKINNYGIRL, settled) (Trademark)
- Acer Inc. v. Apple Inc., Opposition No. 91198009 (Consolidated with Opposition Nos. 91198015, 91198990, 91199025, 91199013, 91199027, 91198992, 91199024 and 91199026; lead counsel in oppositions by five opposers) (TTAB 2014) (Smartphone and tablet drawings, applications withdrawn) (Trademark)
- Booz Allen Hamilton Inc. v. DP Consulting, Int'l, Case No. D2012-1204 (WIPO 2013) (Domain Name)
- Booz Allen Hamilton Inc. v. Jo Han, Case No. D2013-1206 (WIPO 2013) (Typosquatting)
- Booz Allen Hamilton Inc. v. PrivacyProtect.org/ICS Inc., Case No. D2013-0740 (WIPO 2013) (Typosquatting)
- Ferrara Pan Candy Co., Inc. v. Sweets n'Lolly Pops De R. L. De C.V. , Opposition No. 91207845 (ATOMIC FIREBALL vs. GRANDES BOLAS DE FUEGO RELLENAS, judgment for opposer) (Trademark)
- Tommy Hilfiger Licensing LLC v. CBM Creative Brands Marken GmbH, Opposition No. 91206744 (FLAG DESIGN v. McNEAL SPORTS + FLAG DESIGN, judgment for Opposer) (Trademark)
- Ferrara Pan Candy Co., Inc. v. 1650 Broadway Associates Inc. dba Ellen's Stardust Diner, Opposition No. 91208271 (ATOMIC FIREBALL vs. ATOMIC FLOATS, judgment for Opposer) (Trademark)
- Lance Armstrong Foundation v. BS4L, Inc. , Opposition Nos. 91201140 and 91202333 (LIVESTRONG vs. B STRONG 4 LIFE; oppositions withdrawn) (Trademark)
- Tommy Hilfiger Licensing LLC v. Michael Dagostino, Opposition No. 91206146 (TOMMY HILFIGER vs. TOMMY BEACH, judgment for Opposer) (Trademark)
- Suncast Corp. v. PBM Group, Inc. , C.A. No. 1:12-cv-00963 (N.D. Ill., Judge Pallmeyer) (settled) (Trademark, Trade Dress Infringement)
- KLN Enterprises, Inc. v. Ferrara Pan Candy Co., Inc. , C.A. No. 0:12-cv-00365-DWF-LIB (D. Minn. 2012, Judge Frank) Opposition Nos. 91200871 and 91203729 (PEANUTHEAD vs. NUTHEADS, settled) (Trademark, Declaratory Judgment)
- Quady Winery Inc. v. Freixenet, S.A. , C.A. No. 1:11-cv-01474-AWI-BAM (E.D. Cal., Judge Ishii), Opposition No. 91198984 (ELYSIUM vs. FREIXENET ELYSSIA, settled) (Trademark Infringement)
- Freixenet, S.A. , v. Salentein Argentina B.V. , Opposition No. 91203897 (TAPENA vs. LA TAPERA, judgment for Opposer) (Trademark)
- Black Rush Mining LLC, et. al v. Black Panther Mining LLC, et. al, C.A. No. 1:11-cv-03257, (N.D. Illinois 2011, Judge Castillo) (Transferred to S.D. Indiana per defendant's motion) (Breach of Contract)
- Ferrara Pan Candy Co., Inc. v. Mantle Products, Inc. , Opposition No. 91201690 (ATOMIC FIREBALL vs. ORIGINAL ATOMIC ENERGY BITES, judgment for Opposer) (Trademark)
- Acer Inc. v. Arch Computer, LLC, Opposition No. 91200049 (GATEWAY vs. GATEWAYTECH, judgment for Opposer) (Trademark)
- Ferrara Pan Candy Co., Inc. v. Judson-Atkinson Candies, Inc., Opposition Nos. 85043196 and 85044258 (ATOMIC FIREBALL vs. GREAT BALLS OF FIRE, settled) (Trademark)
- Acer Inc. v. Minntech Corp., Opposition No. 91198133 (TTAB 2011) (ACER v. A-CER, application withdrawn) (Trademark)
- Sun Products Corp. v. American Greetings Corp. and Those Characters from Cleveland, Inc., Case No. 1:2010-cv-00438 (D. Del. 2010, Judge Stark) (SNUGGLE bear v. CARE BEARS, settled) (Trademark, Trade Dress, Patents)
- CNH America LLC v. Davis Equipment Sales & Service, Inc., Case No. 4:2010-cv-00141 (S.D. Ind. 2010, Judge Young) (Continuing trademark use by former dealer, judgment for Plaintiff including attorneys' fees) (Trademark)
- Ferrara Pan Candy Co., Inc. v. Alanric Food Distributors, Inc., Opposition No. 91193541 (TTAB 2010) (Judgment for opposer) (Trademark)
- Segura Viudas, S.A. v. United States Distilled Products Co., Opposition No. 91197154 (TTAB 2010, application withdrawn) (Trademark)
- Booz Allen Hamilton, Inc. v. Yukio Hatoyama (Arbitral Tribunal, New Delhi) (Internet, E-Commerce and Computer Technology)
- Linear Technology Corp. v. EldoLAB Holding B.V., Opposition No. 91197192 (TTAB 2010) (Trademark)
- Oracle America, Inc. v. DomZilla Ltd. Case No. FA1009001348714 (NAF 2010) (recovered 21 domain names) (Internet, E-Commerce and Computer Technology)
- Acer Inc. v. LiquidBits, Inc., Opposition No. 91192882, (TTAB Oct. 26, 2010) (Trademark)
- Gateway US Retail, Inc. v. Asustek, Inc., Opposition No. 91182947 (TTAB 2010) (Trademark)
- Acer Inc. v. Acer Exhibits & Events, Opposition No. 91193023 (TTAB April 12, 2010) (Trademark)
- Asian & Western Classics, B.V. v. Joan Selkow, Cancellation No. 92048821 (TTAB 2010) (Trademark)
- Auto Meter Products, Inc. v. Maxima Technologies & Systems, LLC, Case No. 1:2005-cv-04587 (N.D. Ill. 2009, Judge Andersen) (trademark and trade dress case involving automotive aftermarket gauges, settled after fact and expert discovery) (Trademark)
- MediaLive International, Inc., Case No. FA0507000520527 (NAF 2005) (Internet, E-Commerce and Computer Technology)
- Linear Technology Corp. v. Maxlinear, Inc., Opposition No. 91172470 (TTAB 2009) (Trademark)
- Qantas Airways Ltd. v. Boushie, Opposition No. 91189115 (TTAB 2009) (Trademark)
- Slazengers Ltd. v. The Sports Authority, Inc., Case No. 1:2007-cv-01024 (E.D. Va. 2008, Judge O'Grady) (gray market golf ball case) (Trademark)
- Ticketmaster Corp. v. DeVane, Case No. 7:2007-cv-00196 (E.D.N.C. 2008, Judge Fox) (Recovered ticketmastgerevent.com and enjoined defendant) (Cybersquatting)
- Ticketmaster Corp. v. Whiteman, Case No. 2:2007-cv-02422 (D. Ariz. 2008, Judge Bolton) (Recovered azticketmaster.com and enjoined defendant) (Cybersquatting, Trademark)
- Ticketmaster Corp. v. Chernow, Case No. 3:2007-cv-06075 (N.D. Cal. 2008, Judge Ware) (Recovered bigticketmaster.com and enjoined defendant) (Cybersquatting)
- Danone Asia Pte. Ltd. & Amoy Food Ltd. v. Best Food Services Inc., Case No. 1:2005-cv-04999 (N.D. Ill. 2007, Judge Moran) (counterfeit soy sauce seized and distribution enjoined) (Trademark Infringement)
- Gateway, Inc. v. Evalue Technology, Opposition No. 91169415 (TTAB 2007) (Opposition sustained) (Trademark)
- Ticketmaster Corp. v. Hotline Entertainment, Inc., Case No. DCA-881-CIRA (Canadian Internet Registration Authority 2005) (Internet, E-Commerce and Computer Technology)
- Gateway, Inc. v. Electric Power Research, Opposition No. 91162057 (TTAB 2005) (Opposition sustained) (Trademark)
- 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)
- 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)
- Emachines, Inc. v. Overstock.com, Opposition No. 91163235 (TTAB 2005) (Defendant withdrew trademark application) (Trademark)
- Gateway, Inc. v. Entridia Corporation, Opposition No. 91125577 (TTAB 2004) (Opposition sustained) (Trademark)
- Gateway, Inc. v. SWP Net Inc., Cancellation No. 92040500 (TTAB 2004) (Cancellation granted) (Trademark)
- Gateway, Inc. v. Group III International Ltd., by assignment from Gateway Luggage Co., Inc., Cancellation No. 92042393 (TTAB 2004) (Registration cancelled) (Trademark)
- Gateway, Inc. v. The Linksys Group, Inc., Opposition No. 91155818 (TTAB 2004) (Trademark)
- ABA Section of Intellectual Property Law Task Force to select the Section representative to serve on the ABA Board of Governors from 2023-2026 : Member
- AIPPI Organizing Committee for the 2022 Global IP Congress : Member
- AIPPI US Group Study Committee to prepare the US National Report on Q277, Registrability of Trade Marks Against Public Order or Morality : Co-Chair
- AIPPI Standing Committee on Geographical Indications (2017-2021) : Member
- AIPPI U.S. Group Report on “Copyright in Artificially Generated Works,” AIPPI World Congress : Co-Chair
- American Bar Association Section of Intellectual Property Law : Liaison with Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) (2012-2019)
- AIPPI World Congress, Session on the “Registrability of 3D trademarks” Study Question : Chair
- AIPPI U.S. Group Report on the Study Question “Bad Faith Trademarks,” AIPPI World IP Congress : Co-Chair
- 2016 INTA Pattishall Medal Committee : Chair
- AIPPI (US) Committee reporting on the Copyright Question on “Linking and Making Available on the Internet” : Member
- AIPPI US Group Nominating Committee : Member (2015)
- Intellectual Property Owners Planning Committee for the IPO Annual Meeting : Member (2015)
- AIPPI Communications Committee : Member
- Association Internationale pour la Protection de la Propriete Intellectuelle United States Working Committee on Q214 on Trademark Dilution : Chair
- American Bar Foundation : Fellow
- American Bar Association Intellectual Property Law Section : Former Chair
- Association Internationale pour la Protection de la Propriete Intellectuelle United States : Past President (2004-2006)
- Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) : Executive Committee Member
- International Trademark Association : Former Board member
- American Intellectual Property Law Association (AIPLA) : Former Board member
- Northwestern Journal of Technology and Intellectual Property Law : Former Advisory Board member
- The Trademark Reporter : Former Editorial Board Member
- Trademark Public Advisory Committee : Former Member
- Lawyers Club of Chicago : Former Board member
- GRUYERE Held Generic in the United States, AIPPI Newsletter (May 2023)
- Quoted in the article "3 Ethical Traps Awaiting The Devious Lawyer," Law 360 (May 2016)
- People Power? A Survey of Surveys, 42 World Trademark Review.45 (March/April 2013)
- Firm Seminar on "Brand Power Through Strategic IP Management," Pattishall Newsletter (January 2012)
- "The Ethics of Deception, Pretext Investigations in Trademark Cases," Colorado Bar Association (April 2010)
- "A Consumer's View of the UDRP Process," ABA IPL Newsletter, Vol. 23, No. 4 (Summer 2005).
- 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).
- "Trademark Law in the Technology-Driven Global Marketplace," 4 YALE SYMPOSIUM ON LAW & TECHNOLOGY 8 (2001).
- "Constructing Evidence Based on Disclosure on the Internet," European Communities Trade Mark Association (ECTA) 38th Annual Conference, Edinburgh, Scotland (June 2019)
- "Copyright Year In Review," Moderator, IPO Annual Meeting, Chicago, IL (September 2018).
- "Design Law," Northwestern Law Journal of Technology & Intellectual Property Annual Symposium, Chicago, IL (April 2018)
- "Administering Ethical and Admissible Pretext Investigations," a Lorman Live Webinar (January 2018)
- "Trademark Ethics: Conducting Ethical and Admissible Pretext Investigations," ABA's 31st Annual Intellectual Property Conference, Bethesda, MD (April 2016)
- "Use of Survey Evidence in Trademark Cases," AIPPI World Intellectual Property Congress, Toronto (September 2014)
- "Fair Use of Trademarks and Creative Works in Advertising," an International Franchise Association Business Solution Roundtable at the IFA 47th Annual Legal Symposium, Chicago, IL (May 2014)
- "The Ethics of Deception," Intellectual Property Law Association of Chicago Annual Meeting, Chicago, IL (November 2013)
- "Register Clogging and Goods/Services Designation: US versus The European Model," FICPI ExCo Meeting & 13th Open Forum, Rome, Italy (November 2011).
- "Border Measures and Goods in Transit," AIPPI Forum & ExCo 2011, Hyderabad, India (October 2011).
- "Brand Power through Strategic IP Management," Moderator, Northwestern University's Kellogg School of Management (September 2011).
- "The Functional Boundary of Trademark Rights," Intellectual Property Owners Annual Meeting, Los Angeles, CA (September 2011).
- "The Ethics of Deception," Fourth Annual Conference on Legal Ethics in the Practice of IP Law, The Center for Intellectual Property Law at John Marshall Law School, Chicago, IL (April 2011).
- "Workshop on Non-Traditional Trademarks, Especially 3D Trademarks," Moderator/Speaker, AIPPI 42nd World Intellectual Property Congress, Paris (October 2010).
- "The Ethics of Deception," Colorado Bar Association, Denver, CO (April 2010).
- "The Impending, Controversial Expansion of the gTLD Space," Intellectual Property Owners (IPO) Association's Annual Meeting, Chicago, IL (September 2009).
- "Well-Known and Famous Marks" (Workshop Moderator), 41st AIPPI World Congress, Boston (September 2008).
- "Trademark Cases in the International Trade Commission," AIPPI/ASIPI Meeting, Mexico City (April 2008).
- "Ten Things Every Brand Owner Should Know About Anti-Counterfeiting and Piracy," Panel Member, IPO Annual Meeting, Chicago (2006).
- "Survey Evidence in Trademark Cases," Panel Moderator, AIPPI 40th World Intellectual Property Congress, Gothenburg, Sweden (2006).
- "The Madrid Link to the Community Trade Mark System," AIPLA Spring Meeting, Chicago (September 2006).
- "Ethical Issues Involving Pretext Investigations in Trademark Infringement Cases," INTA Trademark Administrators Conference, Chicago (September 2005).
- "A Consumer's View of the UDRP Process," World Intellectual Property Organization(WIPO)/ABA Program on Mediation And Arbitration Of Intellectual Property Disputes, New York (2005).
- "Mediation and Arbitration of Intellectual Property Disputes," United Nations headquarters, New York City, NY, jointly sponsored by the World Intellectual Property Organization (WIPO) and the ABA Section of Intellectual Property Law (March 2005).
- "The Ethics and Implementation of Pretext Investigations," International Trademark Association's Trademark Administrators Conference, Chicago, Illinois (September 2005).
- "Practical Consequences of Case Law Granting Protection as Registered Trademarks of Descriptive Marks and Determination of Their Scope of Protection," 39th AIPPI World Congress, Geneva, Switzerland (June 2004).
- "Ideas Into Action: Implementing Reform of the Patent System," FTC Conference at the University of California, Berkeley's Boalt Hall School of Law (April 2004).
- "U.S. Trademark Clearance In View Of The Madrid Protocol," 14th Annual All-Ohio Annual Institute on Intellectual Property, Cleveland and Toledo (September 2004).
- "Madrid, and Other Harmonies And Discords In International Trademark Law," Michigan State Bar, 30th Annual Intellectual Property Law Summer Institute, Mackinac Island (July 2004).
- "Trademark Dilution in the United States," IBC Conferences IP Law Summer School, Cambridge, England (2003).
- U.S. Supreme Court
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- U.S. District Court for the District of Maryland
- U.S. District Court for the Western District of Michigan