Andrew J. Avsec

Mr. Avsec’s intellectual property law practice focuses on all aspects of domestic and international trademarks, trade dress, copyright and unfair competition law.

His litigation experience includes complex civil litigation in federal district court as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board. Mr. Avsec has also assisted clients with less traditional and cost effective trademark enforcement strategies through the use of the Uniform Dispute Resolution Policy to obtain the transfer or cancellation of domain names and through the use of U.S. Customs and Border Protection to seek the prohibition of the importation of infringing and counterfeit articles.

Mr. Avsec’s trademark prosecution and counseling practice involves the development and maintenance of large corporate clients’ trademark portfolios. He analyzes trademark searches, drafts trademark clearance opinions, prepares license and assignment documents, develops filing strategies and conducts trademark due diligence. He also works with companies to implement trademark development and usage policies and conducts intellectual property audits.

His international trademark practice includes international trademark litigation and prosecution. In connection with this area of practice, Mr. Avsec coordinates associates from around the world to implement clients’ filing and enforcement strategies.

Mr. Avsec has represented clients such as Aero Products International, Inc. (owners of the AEROBED mark), American Airlines, Inc., Bally Total Fitness Holding Corp., Danjaq, LLC (owner of film and merchandising rights in the James Bond 007 film franchise), Harvard University, Kimberly-Clark, National Spiritual Assembly of the Baha'is of the United States, Progressive Casualty Insurance Company and Wolters Kluwer US Corporation (parent company of the owners of the CCH, OVID, ASPEN PUBLISHERS, and CT CORSEARCH brands, among others).

• Bally Total Fitness Holding Corp. v. Kim2Bfit, LLC and Kim J. Garcia, Civil Action No. 8:10-cv-01108-SDM-TBM (M.D. Fla. 2010). Representing plaintiff in dispute over use of and application to register KIM2BFIT for fitness services. Case pending.
• Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., Case No. 09 CV 2263 (N.D. Ill. 2009). Representing defendant in dispute over embossing of toilet paper. Case pending.
• American Airlines, Inc. v. American Assist Travel Services, Inc., and Gerardo Villafane, No. 08 23476 (S.D. Fla. 2008). Representing plaintiff in infringement action directed against infringement of the marks AA and AMERICAN AIRLINES. Consent Judgment entered against defendants.
• Progressive Casualty Insurance Company v. Donald Clark, et al., No. 08 CV 2213 (N.D. Ohio 2008). Representing declaratory judgment plaintiff in suit regarding the phrase “National Catastrophe Response Team”. Case settled.
• The National Spiritual Assembly of the Baha’is of the United States of America Under the Hereditary Guardianship, Inc. v. National Spiritual Assembly of the Baha’is of the United States of America, Inc., Civil Action No. 64 C 1878 (N.D. Ill. 1964) (reopened for civil contempt proceeding in 2006). Case pending.

• Bally Total Fitness Holding Corp. v. Garcia, Opp. No. 91192301. Representing opposer in dispute over application to register KIM2BFIT for fitness services. Case pending.
• Kimberly-Clark Corp. v. Georgia-Pacific Consumer Products LP, Can. No. 92051438. Representing petitioner in cancellation proceeding. Case pending.
• American Airlines, Inc. v. Applied Card Systems, Inc., Opp. No. 91188811. Representing opposer in dispute over application to register APPLIED ADVANTAGE. Case pending.
• Danjaq, LLC v. Chevalier Collection, Ltd., Opp. No. 91193602. Representing opposer in dispute over application to register CASINO ROYALE mark. Case settled.
• WageWorks v. Take Care Health Systems, LLC, Opp. No. 91167509 and consolidated proceedings. Representing applicant in dispute over application to register TAKE CARE HEALTH SYSTEMS mark and related marks. Case pending.

• "Trademark on Supplemental Register Cancelled on Functionality Grounds," World Trademark Review Daily, March 1, 2011 

• “Go Green or Go Home: The FTC's Proposed Updated Green Guides,” Brinks Hofer Gilson & Lione CLEarKnowledge Now Webinar, February 15, 2011

• International Trademark Association
• American Bar Association
• Illinois State Bar Association
• Chicago Bar Association

• Eighteen New Associates Join Brinks Hofer Gilson & Lione
• Brinks Hofer Gilson & Lione Senior Partners Meet With 2006 Summer Law Student Associates

• Chicago Daily Law Bulletin
• Chicago Daily Law Bulletin
• Chicago Daily Law Bulletin
• Various Media