Federal Trials & Appeals
When your valuable brand is under attack, sometimes it's necessary to protect it by turning to litigation. In recent years alone, we've filed or defended more than 500 cases in federal district courts.
Recent Pattishall cases have resulted in more than 150 leading federal appellate and district court opinions in non-patent intellectual property law. Pattishall has been recognized for many years as the preeminent trial and appellate firm in our field, whether measured by the number of federal cases handled or by the results achieved.
We have litigated to protect brands for clients as diverse as:
- BP North America
- Eli Lilly & Company
- EMC Corporation
- Encyclopedia Brittanica
- Ford Motor Company
- John W. (Johnny) Carson (estate of)
- Kellogg Company
- Kohler, Inc.
- Medline Industries
- Owens Corning
- The American Medical Association
And while we are proud of our litigation and trial successes, we recognize that each dispute is unique and some matters are best resolved outside of the courtroom. We pride ourselves in working closely with our clients, approaching each matter creatively, and finding solutions that best fit the needs of the client.
We don't just litigate cases-we also decide them. Members of the Firm were among the first to become mediators and arbitrators in intellectual property disputes. Pattishall lawyers have also been leaders for many years in representing clients in mediations and arbitrations throughout the United States and abroad.
The Pattishall Team Approach
You want IP counsel who can use their insight and experience to make the process as smooth as possible. At Pattishall, our team approach allows us to staff your matter appropriately, while tapping into the most experienced lawyers around. Our entire team-from our receptionist to our name partners-is focused on developing, building, and protecting your brand.
We defend the most valuable brands in the world. We can defend yours.
At Pattishall, we understand that your trademark is the centerpiece of your brand. We can defend your trademark - and so much more. Starting with the design and registration, we help our clients develop trademarks that can be protected. Then we work to insure that your trademark maintains its value.
You may think you know a trademark when you see one, but the field is complex. A mark is any device that serves as an indication of source. Besides words and logos, a mark may be a sound, color, slogan, product shapes, or even a smell.
We've helped thousands of clients protect their trademarks, as well as their shapes, colors, sounds, and even marching ducks!
For example, for Ford we've developed a program to register unique automotive design elements - such as mirrors, bumpers and taillights - as an additional means of thwarting counterfeiters and infringers.
Our firm offers the complete range of trademark services, in the U.S. and internationally:
Our network of international associates has been forged over many years, with lawyers and agents we've identified as the best trademark practitioners in their respective countries.
Want to know the details? As a regular part of our practice, we:
- Litigate trademark and trade dress infringement, dilution, gray-market and counterfeit goods lawsuits and appeals, in both state and federal courts
- Litigate Trademark Trial and Appeal Board cases and appeals to the Federal Circuit, including opposition and cancellation proceedings and ex parte appeals
- Conduct domestic and international trademark clearance searches
- Prepare and prosecute trademark application programs and supervise post-registration activities in the United States and abroad
- Conduct trademark investigations and watches in the United States and abroad
- Prepare licensing, assignment, and security agreements.
Whether you're protecting a logo or a line of marching ducks, you can turn to Pattishall for every aspect of trademark law.
Pattishall understands that all legitimate businesses are threatened by piracy. If your company has a successful brand, it is going to attract infringers, cybersquatters, false advertisers, grey marketeers and counterfeiters.
This has always been true, but in today's global marketplace, valuable brands will regularly encounter these problems in both the U.S. and internationally. The Internet has dramatically expanded unfair trading, as cybersquatters register domain names based on your brand, and use them to misdirect customers to your competitors, making money in the process by sponsored links and click-throughs.
Hit-and-run websites permit sellers to pop up and disappear quickly, steering customers away from legitimate businesses. The practice of "URL tasting," for example, means that cybersquatters don't even have to pay for the URLs before deciding which names will enable them to steal sales from your most popular brands.
Pattishall has experience fighting counterfeiters of all kinds. Over the years, we've built extensive contacts with many of the best counsel in foreign countries. This creates an international IP army to help our clients fight pirates wherever in the world they attack.
Our in-depth knowledge of civil seizures and our strong relationships with Customs agencies and law enforcement-in the U.S. and other countries-are invaluable in helping clients move quickly against counterfeit goods and fake websites.
Don't wait for the pirates to attack before taking action. Pattishall lawyers can help you develop a plan to defend your brands.
Brand protection is more than playing defense. It requires affirmative steps to protect your brands from attack and to build their strength for the times when you must go on the offensive. To succeed, you must understand the value of brand assets, and how they are used in each business.
If you have brand assets, you need a brand protection plan. Creating it is a straightforward process.
The bones of a brand protection plan are:
- Use and licensing
Education is key to implementing a successful brand protection plan. The first step is helping clients to select a brand that can have maximum protection (or helping them accept lesser protection with an understanding of the risks and benefits). Brand selection is the critical first step, and affects the cost and timing of all the remaining steps in the process.
At Pattishall, we have years of experience helping clients select the right brand.
The clearance process may involve a national search, or searching in jurisdictions throughout the world, to determine whether someone already owns a similar brand. Expenses for this process can get out of hand unless clients understand the costs per country and the timing involved. Clear communication helps clients decide on the right clearance process for them.
If the clearance process shows that the brand is not available, all is not lost. We may be able to offer options like canceling a prior registration or purchasing it. At Pattishall, we have been helping clients achieve their brand goals for more than a century.
Over the years, we've built extensive contacts with many of the best counsel in foreign countries. This creates a kind of international IP army for our clients, and through us they can gain access to a network of many of the best brand lawyers in the world.
Companies typically watch the costs of the registration process closely. The more distinctive the brand, the less the registration costs are likely to be. Nonetheless, issues often are raised by the registering entity that need to be resolved. At Pattishall, we have experienced attorneys to help you obtain a favorable result in the registration arena.
Use and Licensing
If you don't use your brand correctly, you may lose it. We can help you plan and execute brand use seminars, and set up systems to help establish and maintain proper use. In-house counsel find this service invaluable in guiding their clients, and in reducing the number of telephone calls and emails they receive.
Proper licensing is also critical to creating and growing the value of intellectual property rights. We've helped many clients design and revamp highly successful IP licensing systems.
Enforcing your IP rights is critical. A strong enforcement program, involving both negotiation and litigation, preserves and strengthens your brands in many ways. It discourages encroachers, and reduces the risk of the brand becoming generic or diluted.
You should not limit your enforcement efforts to major problems. Consistent enforcement efforts create a strong record to warn away would-be infringers and support difficult litigation. We provide a consistent strategy for many clients with well-known, valuable brands.
A major component of enforcement is fighting counterfeit and gray market goods. Our in-depth knowledge of civil seizures and strong relationships with Customs agencies-in the U.S. and other countries-as well as with local law enforcement, are invaluable in helping clients move quickly against counterfeiters and counterfeit goods.
Your brand protection plan may include:
- Internet use and protection
- Package and product design protection
- The right of publicity
- Interaction with copyright, patents and trade secrets.
Pattishall attorneys have experience implementing brand protection plans in a wide variety of businesses and industries. Clients have found that such plans save money in the long run, because it is cheaper to systematically protect a brand than to defend it in litigation on an ad hoc basis. Let us help you develop a brand protection plan for your business.
At Pattishall, we start protecting your valuable trademarks and copyrights long before litigation becomes necessary. We can help you understand the full value of your trademark and copyright assets and how best to use and protect them. Our attorneys have extensive experience in business counseling, business transactions and strategic planning for a wide variety of intellectual property fields, including trademark and copyright law, advertising law, and internet business and regulation. We are well versed in trademark clearances (to insure your trademark or copyright won't fall to someone else's prior rights), copyright and trademark registration, licensing, due diligence, and corporate intellectual property transactions. We have handled corporate transactions for famous brands, worldwide. We know how to structure a deal to provide you with the strongest trademark and copyright protection, and our litigation experience will help you identify and avoid potential pitfalls.
We counsel owners of some of the world's most famous brands. Let us put our experience to work for you
Trade dress is a frequently misunderstood area of IP law. The law gives you the right, under appropriate circumstances, to protect the design, look and feel of your products.
Trade dress can be protected under federal trademark law if it's distinctive and non-functional (so as not to conflict with patent laws). Trade dress, even without a brand name-think about the Nike Swoosh-helps to identify the source of goods.
A good example of trade dress is the shape of a bottle: even without the label, consumers understand that a bottle with that distinctive shape or color contains a familiar product. Pattishall protected the famous packaging of Mountain Dew, resolving a dispute with the producer of a soft drink sold in green and red cans bearing the name of the beverage in a design similar to the Mountain Dew logo.
We've protected trade dress for our clients in a variety of industries. On behalf of a major tool manufacturer, Pattishall obtained judgment in a trade dress infringement and dilution action against a competitor's sale of a line of power tools that used an infringing trade dress.
Copyright law protects original expressions. They may be literary, dramatic, musical, artistic, or other intellectual works. At Pattishall, we have broad experience with all aspects of copyright law - as it has traditionally been practiced, and on the cutting-edge of Internet and technology issues.
For one client, we developed a copyright-based anti-counterfeiting strategy that took advantage of the statuatory damages provided by the Copyright Act. As a result, the client knocked out forty-eight counterfeiters and collected $10 million in damages.
We represent a variety of companies and individuals with their publications, product designs, web sites, computer software and other works subject to copyright law. For Encyclopedia Britannica, we helped to eliminate on-line and print copies of their famous encyclopedia that were openly pirated and sold by publishers in China and Taiwan.
As a regular part of our practice, we:
- Litigate copyright infringement cases
- Counsel clients on the protection of copyrighted works
- File copyright applications and handle the prosecution of them
- Draft license and assignment agreements
- Conduct clearance searches.
Our Internet, e-commerce, and computer technology practice has stayed on the cutting edge of this dynamic field of law. Every day, we're involved in Internet litigation and transactions.
Online problems have yielded a range of new tools - the UDRP, ACPA, DMCA - which we regularly use to help our clients defend their brands. We've handled hundreds of domain name disputes at WIPO and the NAF, have prevented online disclosure of confidential information abroad, and have recovered large damage awards under the ACPA.
Our litigation practice includes:
- Internet domain name infringement and cybersquatting disputes
- Metatag and key word infringement disputes
- Linking, framing and spamming disputes
- Database protection and invasion disputes
- Rights of privacy and publicity matters
- Copyright infringement cases regarding web site and source code copying
- Contract disputes.
Our counseling and transaction practice includes:
- Internet domain names acquisition and registration
- Clearance of advertising, sweepstakes, promotions and contests on the Internet
- Co-branding, distribution, and Internet content licensing agreements
- Clickwrap and similar agreements
- Web site development agreements
- Software license, maintenance and development agreements
- Technology transfer agreements
- Technology development, ownership and confidentiality agreements
- Consultant agreements relating to technology services
- Intellectual property audits and compliance reviews
- Trade secret protection programs.
Whatever your concern, Pattishall can help to guide you through Internet, privacy and e-commerce issues.
Advertising & Promotions
Your advertising says a lot about your company and your products. By focusing on prevention and protection, your business can develop safe, successful advertising. At Pattishall, we can help you pinpoint strategies that will protect your company's reputation, and help you promote your brand strategically. And our radar is always scanning the horizon for new developments in this highly volatile area of the law.
Pattishall helped Land Rover create the Land Rover G4 Challenge, a multi-national, bi-annual competition in which applicants from more than 20 countries compete to win a Range Rover. To comply with the various countries' marketing, contest and commercial regulations, our attorneys managed a team of foreign counsel, assembled with assistance from Ford. We designed interactive applications as well as detailed rules, agreements and releases in several languages. We even advised and negotiated on Land Rover's behalf for post-competition distribution of the event.
If a competitor steps over the line in making claims about its product, or accuses you of doing so, we can help you in your response strategy, including litigation if necessary. We have represented clients such as AT&T over the years not only in federal court litigation, but in hundreds of arbitration proceedings and other forms of alternative dispute resolution.
Our advertising and promotions practice includes advertising and promotions development, clearance and litigation.
As a regular part of our practice, we:
- Litigate federal court, state court, FTC, NAD and NARB cases;
- Litigate false advertising disputes through arbitration proceedings;
- Conduct advertising clearance reviews;
- Prepare sweepstakes and promotional rules;
- Oversee substantiation of product claims;
- Evaluate marketing practices;
- Draft agency and talent contracts.
Rights of Publicity & Privacy
We represent and counsel a broad range of individuals and companies in rights of publicity and privacy matters. We have experience litigating, negotiating and drafting agreements pertaining to these rights.
We know the law because we helped create it. Pattishall represented the late Johnny Carson in a seminal right of publicity case that made far-reaching new law. One Pattishall partner headed the legislative effort that resulted in the Illinois Right of Publicity Statute.
If you feel that your right of publicity or privacy has been adversely affected, or such rights are otherwise at issue in connection with your business, contact us.
Protecting trade secrets has long been an important part of IP protection, and at Pattishall, we've been involved with their protection since the early years of our firm.
For one small, innovative, woman-owned start-up, we recently initiated a trade secret protection program incorporating a full range of vendor and employee confidentiality and non-compete agreements, as well as internal procedures that insure compliance with recent developments in the law of trade secrets.
We represent companies and individuals in:
- Trade secret litigation
- Trade secret protection planning
- Trade secret licensing and assignment agreements
- Confidentiality agreements
- Employment agreements
- Covenants not to compete
We look forward to talking to you more about this on a "need to know" basis.
In addition to our Advertising and Promotions practice, we handle litigation and counseling for media and non-media clients in the areas of First Amendment law, personal and product defamation, business disparagement, pre-publication due diligence review, and privacy. We assist clients with a wide array of issues arising from the publication and dissemination of information in all media, including print, television, radio, and the Internet. With the increasing shift to electronic delivery of information and the explosive growth of social media, our firm's practice has evolved and adapted to meet our clients' needs in all media channels.
Our media law group includes litigators, intellectual property attorneys, and mediators in the fields of publicity, privacy, First Amendment, and trade secret issues. The firm's 127-year history as a renowned intellectual property boutique means that our attorneys have extensive familiarity with issues that commonly arise in new media and technology cases, such as matters involving domain names, the Digital Millennium Copyright Act ("DMCA"), the Communications Decency Act ("CDA"), and the Computer Fraud and Abuse Act ("CFAA"). Our lawyers practice collaboratively, bringing to bear their collective expertise on behalf of our clients in today's highly competitive and ever evolving media landscape.
Privacy and Data Security
Use and protection of consumer data, data breach responses, privacy policies, security audits, and other issues arising out of the evolving laws on protection of personal information are critical in today's business and legal landscape. But what exactly is "privacy law"? It certainly extends well beyond data security, and in our practice, we address the myriad issues that comprise privacy law, including internal privacy systems and controls, data breach responses, "privacy by design," regulatory compliance, communicating privacy policies and practices to customers, working with vendors, privacy training, and various other issues. And with both federal and state privacy laws constantly changing, we work to stay up-to-date with the evolving laws and how they may impact our clients.
As an example of our practice, we advised a client interested in purchasing another company. The client had concerns over the target company's compliance with privacy laws. We conducted a privacy due diligence review of the target company, in which we identified potential privacy issues and concerns, and analyzed the potential privacy risks and liability in the target company's business.
Our privacy practice includes the following work:
- Privacy audits and compliance reviews
- Transactional privacy due diligence
- Drafting company privacy policies
- Data Security
- Data breaches
- Contractual issues relating to privacy
- Privacy counseling
- Direct marketing
- Behavioral Marketing
- Geolocation privacy
Licensing & Franchising
Your brand may be worth more than you think. In recent years, licensing and franchising have grown exponentially. Many national brands have realized more income from licensing than from product production. Pattishall can help you use licensing and franchising to capture the value of your brand.
In addition, licensing may prove an effective method for resolving a thorny dispute. For Grant Thornton, we structured an international licensing program to insure that accounting services offered by members and correspondent firms met Grant Thornton's high professional standards. This program has been the key to resolving infringements and disputes worldwide.
Our licensing practice includes.
- License Transfer Agreements
- Logos, Word Marks, Service Marks
- Confidentiality Agreements
- Distribution Agreements
- Contractor Intellectual Property Agreements
- E-Commerce Transactions
- Strategic Alliances
- Intellectual Property Asset Portfolio Audits
- Due Diligence Research and Valuation
- Creation of Trademark Holding Companies.
If you are interested in unlocking the potential in your brand, our experienced attorneys can help.
Mergers & Acquisitions, Due Diligence & Audits
Pattishall represents clients in mergers and acquisitions, and conducts due diligence reviews and audits in all the areas of our practice. We help value brands for sellers and buyers, as well as the IRS, on behalf of clients and as independent experts.
In many M&A transactions, the brand assets are the most valuable property being acquired. Brands can't be reproduced, and many brand assets have both national and international goodwill. Pattishall has helped to value brands since the M&A business took off in the 1980's
Pattishall has counseled clients in transactions involving many famous brands, including:
- Del Monte
- Everyday Learning Corporation
- London Fog
Our firm served as lead intellectual property counsel for R.J.R. Nabisco in multi-billion dollar transactions involving the sale of the Nabisco businesses in Europe, the worldwide sale of the Del Monte fresh food and processed food business, and transactions involving other famous brands in various countries around the world. We undertook global due diligence of ownership, licensing and litigation records, drafting and negotiating M&A documents, and post-transaction transfers involving OREO, RITZ, PLANTERS, DEL MONTE and other household names.
ADR, Arbitration, Witnesses
We recognize that court litigation is not the only way to solve problems for our clients. Sometimes it isn't the best way. Our attorneys know when and how to use ADR (alternative dispute resolution) to achieve superior results at a lower cost than is typical in litigation.As advocates in mediation and arbitration, we are experienced in the use of alternative proceedings such as arbitration before the AAA (American Arbitration Association), the UDRP (Uniform Dispute Resolution Policy) for domain name disputes, the NAD (National Advertising Division) for false advertising claims, and the ITC (International Trade Commission) for importation disputes involving unfair competition, as well as general settlement negotiations.
A representative list of such activities include:
- Handling domain name disputes under the ICANN UDRP;
- Mediating and arbitrating trademark and unfair competition disputes as a member of the CPR/International Trademark Association Institute for Dispute Resolution;
- Handling hundreds of Lanham Act ADR proceedings over the last ten years;
- Mediating disputes through the Lanham Act Mediation Program in the United States District Court for the Northern District of Illinois;
- Serving as advocates in settlement conferences;
- Testifying as expert witnesses in trademark infringement, copyright infringement, advertising and taxation cases.
In addition to serving as advocates for clients in ADR (alternative dispute resolution), Pattishall attorneys are certified as arbitrators and neutrals with district courts and leading dispute resolution service providers, such as CPR (International Institute for Conflict Prevention & Resolution), INTA (International Trademark Association), AAA (American Arbitration Association), and FRANARB (Franchise Arbitration and Mediation Services). Our experience as neutrals includes service as mediators in trademark, copyright, and licensing disputes; arbitrators in franchising and general commercial disputes; a panelist in UDRP domain name disputes; and authors of independent case evaluations and second opinion analyses. Members of our ADR practice are frequently retained by other firms and selected by Federal and State Courts to serve as neutrals in mediation and arbitration. For more information, contact:
Robert M. Newbury (Northern District of Illinois Lanham Act Neutral)
David C. Hilliard (CPR/International Trademark Association Institute for Dispute Resolution; Northern District of Illinois Lanham Act Affiliated Individual)
Joseph N. Welch II (Northern District of Illinois Lanham Act Neutral)
Brett A. August (Northern District of Illinois Lanham Act Neutral)
Expert Witness Services
Given the depth of our experience, and the breadth of our practice, it's not surprising that Pattishall lawyers are regularly tapped as expert witnesses in IP matters.
We have broad experience testifying in litigation on:
- Copyright, trademark and unfair competition matters
- False advertising
- IRS and corporate evaluations of brand assets
- Trade dress and product design
- Licensing and contracts
- Malpractice and ethics
- U.S. Patent and Trademark Office practice and procedures.
A Pattishall attorney served as an expert for the Internal Revenue Service in Nestle Holdings v. The Commissioner of Internal Revenue, a dispute over Nestle's low valuation of brand assets when it acquired Carnation Company. By showing that Carnation's maintenance records tracked the strengths and weaknesses of the transferred brands, expert testimony demonstrated that Nestle's evaluation was incorrect, winning a favorable settlement for the Internal Revenue Service.
For General Motors, our three-pronged analysis protected the shape of GM's Hummer vehicle as distinctive, non-functional and infringed by Avanti Motor Corporation.
Please contact us about serving as experts, either for testimony or assistance analyzing your case.