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Christopher M. Dolan
Mr. Dolan is a Shareholder in the firm’s Chicago office and a member of its Trademark Practice Group. Mr. Dolan’s practice focuses on trademark, unfair competition, false advertising, trade dress and copyright matters. He has substantial experience in all phases of federal court litigation, including preliminary injunction actions, bench and jury trials and appellate matters. Mr. Dolan has also handled a large number of trademark litigations before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. Mr. Dolan regularly counsels clients on a range of intellectual property issues, advertising issues and regarding their intellectual property portfolios. He has significant experience negotiating and drafting intellectual property agreements and with intellectual property due diligence reviews. Mr. Dolan also has extensive experience with international trademark litigations and has set strategy, conducted briefing and prepared oral arguments for dozens of successful litigations and precedent setting decisions in multiple countries. In addition, Mr. Dolan’s international practice involves complex international trademark licensing, settlement and co-existence agreements, international trademark prosecution and enforcement strategies and counterfeiting protection. Mr. Dolan has represented a diverse range of clients such as Danjaq, LLC (owner of the James Bond film and merchandising franchise), National Spiritual Assembly of the Baha’is of the United States, Motorola, Inc., Progressive Casualty Insurance Company, Aero Products International, Inc., R.J. Reynolds Tobacco Company, Amway, Yahoo!, Jockey International, Inc., Kohl’s, Trudell Medical, GoTo.com, Inc. and Herman Miller, Inc., among others.
- Leading Intellectual Property Lawyer, Leading Lawyers Network, 2011
- Illinois Super Lawyers, 2009, 2012
- Executive Articles Editor, AIPLA Quarterly Journal, 1998-1999
Representative Matters
Federal District and Appellate Court View All
- The Law Offices of Peter F. Ferracuti, P.C. v. Drew Ferracuti Law, Case No. 11-cv-07265 (N.D. Ill. 2011) Trademark infringement action. (pending)
- Safety Squad, LLC v. Dorel Industries, Inc., Case No. 10-cv-03111 (N.D. Ill. 2010) Trademark infringement action. (Settled)
- Shop-Vac Corporation v. Alton Industry Ltd. Group, Case No. 10-cv-1066 (N.D. Ill. 2010) Patent infringement and false advertising action. (Settled)
- Amway Corp. v. MonaVie, Inc., et al. (D. Utah 2008-2010) Trade secret misappropriation, tortious interference and false advertising action. (Settled)
- National Spiritual Assembly of The Baha’is of the United States v. Schlatter et al, No. 08-2306 (Seventh Circuit Court of Appeals) Civil contempt action regarding violation of a permanent trademark injunction. (Pending)
- Motorola, Inc. v. Razor USA, LLC, Case No. 2198-N (Del. Chancery Ct. 2006). Represented Motorola in declaratory judgment action concerning trademark license agreement. (Settled)
- Aero Products International, Inc. v. Thane International, Inc., et al., Case No. 06 C 0104 (N.D. Ill. 2006) trademark infringement action. (Settled)
- Drive Financial Services, LP v. Progressive Casualty Insurance Company, Civil Action No. 6:04-CV-558-WMS) (E.D. Tex.) trademark infringement action. (Settled)
- Nartron v. Amway, (Mich. St. Ct. (Osceola Co.), Mich St. Ct. App., W.D. Mich., Sixth Circuit Court of Appeals, 1992-2006). Patent ownership, trade secret and breach of contract action on an electrical end-of-life indicator. Involved with appeal and remand at state court level, federal bankruptcy court proceedings, Sixth Circuit of Appeals relating to bankruptcy appeal and second chair at trial after Court of Appeals remand. Settled after bankruptcy court granted Amway’s motion to appoint a trustee in place of Nartron’s CEO.
- Aero Products International, Inc. v. Intex Recreation Corp. et al., 02 CV 2890 (N.D. Ill.). Patent and trademark case resulting in jury verdict in 2005 finding willful infringement of Aero’s patent and trademark rights and awarding $2.95 million for patent infringement and $1 million for trademark infringement.
- R.J. Reynolds Tobacco Company, et al. v. Premium Tobacco Stores, Inc., et al., Case No. 99 C 1174 (N.D. Ill.). Gray market goods case. Jury verdict in 2004, finding, among other things, federal trademark infringement, unfair competition and willful dilution and awarding $3.5 million in defendant’s profits for their importation and sales of Reynolds’ products intended for foreign markets.
- GoTo.com, Inc. v. The Walt Disney Company, et al., Civil Action No. 99-01674-TJH (C.D. Cal.). Patent and trademark infringement case resulting in a preliminary injunction enjoining Disney’s use of the GO Light logo (affirmed by the Ninth Circuit Court of Appeals on interlocutory appeal) and a civil contempt proceeding for failure to obey the injunction.
Trademark Trial and Appeal Board (TTAB) Cases View All
- Alticor, Inc. v. Fizzy, LLC, Cancellation No. 92054472 (pending)
- GlobalView Software, Inc. v. AgData, L.P., Opp. No. 91202047 (pending)
- Danjaq, LLC v. 008 International, LLC, Opp. No. 91202123 (pending)
- WebMagic Ventures, LLC v. Penny Arcade, Inc., Opp. Nos. 91194277; 91194299; 91194374; 91194376; and 91194378 (dismissed)
- Danjaq. LLC v. Lijuan Shen, Opp. No. 91201143 (pending)
- Danjaq, LLC v. Lipstick Bond Girls, Opp. No. 91199475 (pending)
- Danjaq, LLC v. Anju Singh, Opp. No. 91197757. (Opposition sustained)
- Danjaq, LLC v. Faberge Services Limited, Cancellation No. 92053305. (Petition to cancel granted)
- Danjaq, LLC v. Faberge Limited, Opp. No. 91196764. (Judgment for opposer)
- Danjaq, LLC v. Dames Bond, LLC, Opp. No. 91194166. (Opposition sustained)
- Danjaq, LLC v. Dames Bond, LLC, Opp. No. 91194167. (Opposition sustained)
- Danjaq, LLC v. Chevalier Collection Ltd., Opp. No. 91193602. (Opposition sustained)
- Danjaq, LLC v. Friedli, Marc H., Opp. No. 91187556. (Opposition sustained)
- Danjaq, LLC v. Eric F. Prince, LLC, Opp. No. 91187000. (Opposition sustained)
- Danjaq, LLC v. McMorris, Michael A., Opp. No. 91185547. (Opposition sustained
- Danjaq, LLC v. Inter-Global Sp. z o.o., Opp. No. 91184405. (Opposition sustained
- Danjaq, LLC v. Banjo Buddies Inc., Opp. No. 91180394. (Opposition sustained)
- Danjaq, LLC v. 008 Design, Inc., Opp. No. 91180405. (Opposition sustained)
- Danjaq, LLC v. White Star s.p.a., Opp. No. 91180407. (Opposition sustained)
- Danjaq, LLC v. Bolshoi Beverage Co., Opp. No. 91179340. (Opposition sustained)
- Danjaq, LLC v. Banjo Buddies Inc., Opp. No. 91178307. (Opposition sustained)
- Danjaq, LLC v. CI Production, LLC, Opp. No. 91178069. (Opposition sustained)
- Danjaq, LLC v. William Roskam, Opp. No. 91176824. (Opposition sustained)
- Danjaq, LLC v. Bond-Eye Traders Pty Ltd., Opp. No. 91176648. (Opposition sustained)
- Danjaq, LLC v. The Marketing Resources Group, Ltd., Opp. No. 91175378. (Opposition sustained)
- Danjaq, LLC v. Ian Fleming Publications Limited, Opp. Nos. 91175306, 91174061, 91174277, 91173089 and 91173060. (Applications withdrawn with consent)
- National Spiritual Assembly of the Baha’is of the United States v. Baha’i Publishers Under the Provision of the Covenant, Opp. No. 91173908. (Pending)
- National Spiritual Assembly of the Baha’is of the United States v. Second International Baha’i Council, Opp. No. 91173793. (Pending).
- Danjaq, LLC v. Chatam International Incorporated, Opp. No. 91173074. (Opposition sustained)
- Neal Chase v. The National Spiritual Assembly of the Baha’is of the United States, Cancellation. No. 92047154. (Pending)
- Danjaq, LLC v. Jane Elizabeth Bond, Opp. No. 91167946. (Judgment for opposer)
- Danjaq, LLC v. Web Express Inc., Opp. No. 9116765. (Opposition sustained)
- Danjaq, LLC v. Vegas Clothing LLC, Opp. No. 91164272. (Judgment for opposer)
- Danjaq, LLC v. Pride Mobility Products Corporation, Opp. No. 91161655. (Opposition sustained)
- Danjaq, LLC v. Daniel J. Heffernan, Opp. No. 91160826. (Opposition sustained)
- Danjaq, LLC v. Igor John Philipps, Opp. No. 91160520. (App. abandoned after opposition)
- "IP: The Bare Facts on Naked Licensing," InsideCounsel.com, September 6, 2011
- "IP: Gray Market Goods Spell Trouble for Companies," InsideCounsel.com, August 23, 2011
- "IP: The Pros and Cons of Top-Level Domains," InsideCounsel.com, July 26, 2011
- "IP: FTC Advertising Enforcement on Social Media," InsideCounsel.com, July 12, 2011
- "IP: Letters of Protest," InsideCounsel.com, June 14, 2011
- “IP: Territoriality and Well-Known Trademarks," InsideCounsel.com, May 17, 2011
- “IP: Defending Against Counterfeiting," InsideCounsel.com, May 3, 2011
- "Keyword Advertising," InsideCounsel.com, April 19, 2011
- "Nominative Fair Use and Domain Names," InsideCounsel.com, October 12, 2010
- "Nontraditional Trademarks," InsideCounsel.com, September 14, 2010
- "Social Networking Sites May Present Difficult Intellectual Property Issues," InsideCounsel.com, August 17, 2010
- Corporate Compliance Series: Designing An Effective Intellectual Property Compliance Program, Thomson-West. Author of Corporate Copyright Compliance chapters in 2006 and author of Trademark Compliance chapters from 2007 through present
- "Fits Over Counterfeiting: Legislative Accomplishments and Directions," 27 AIPLA Q.J. 233, 1999
- "1997-1998 U.S. Cases Decided Under The Trademark Counterfeiting Act of 1994," co-author with Jack C. Berenzweig and Joseph V. Norvell, Asian Patent Attorney's Association News, Vol 26, No.147, 1999
Memberships & Affiliations
- Intellectual Property Law Association of Chicago
- International Trademark Association
Young Practitioners Committee - Marques - The Association of European Trade Mark Owners
- Brinks Hofer Gilson & Lione, Chicago, Illinois
Shareholder, 2006-Present Litigation Practice Group, Subcommittee on Best Practices, 2009-2011 Hiring Committee Chair, 2007-Present Hiring Committee Vice-Chair, 2006-2007 Recruiting Committee Chair, 2006-2007 Associate, 1999-2005 Summer Associate, May 1998-August 1998 - City of Chicago, Mayor's Office of Inter-Governmental Affairs
Law Clerk, 1997-1999
- Chicago-Kent College of Law
Adjunct Professor of Advanced Legal Research & Writing for Intellectual Property, 2006-Present
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