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When you're serious about intellectual property... UseBrinks

Howard S. Michael

Practice Summary

Howard joined Brinks Hofer Gilson & Lione in 1998 and has been repeatedly recognized by his peers as a Leading Lawyer in the fields of intellectual property law, advertising and media law, and trade secrets/unfair competition law. Howard is also often asked to speak concerning current intellectual property topics.

Within his primary practice area of intellectual property law, Howard focuses on trademark, unfair competition, trade dress, dilution, false advertising, copyright, trade secret and licensing matters. He also is involved in Internet-related litigation and counseling. His particular areas of expertise include implementing trademark enforcement programs, global trademark dispute resolution, Internet advertising issues, genericness issues, trade dress and product configuration issues; trademark dilution, trademark priority disputes, trademark abandonment issues, false advertising claims, counterfeiting issues and Trademark Trial and Appeal Board practice and procedure.

Howard has represented a wide variety of trademark clients in many industries. These clients have included worldwide or nationwide companies engaged in the following activities: Internet search engines; aerospace and defense; television programming and movies; manufactured steel; medical waste disposal; numerous consumer goods; infection control and compliance; pharmaceuticals; heating/cooling; home appliances; food and food packaging; insurance; restaurants; robotics; waste disposal; alternative energy providers; ball bearings; food and beverages; magazines; and kitchen/household utensils.

Honors/Distinctions
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2010, 2011
Representative Matters
Federal Court Cases
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  • Consumers Digest Communications, LLC v. Avaya Media, LLC, et al., Case No. 1:10 -cv-2698. Represented leading magazine provider as lead counsel in trademark infringement action. Final judgment in favor of client.
  • Dazzlesmile, et al. v. Yahoo! Inc., et al., Case No. 2:09-cv-11043 (D. Utah). Represented Yahoo! in trademark infringement ligation. Case dismissed in favor of client.
  • NTN Corporation, et al., George J. Mandas, et al., Case No. 2:10-cv-00257(D. Arizona). Represented NTN Corporation in action directed to illegal importation of counterfeit ball bearings. Final judgment in favor of client.
  • NTN Corporation and NTN Bearing Corporation of America v. Juan Olivas, Case No. 3:11-CV-00182 (D. Texas). Represented NTN in action directed to illegal importation of counterfeit ball bearings. Secured temporary restraining order, permanent injunction and ex parte seizure order in favor of client.
  • Mary Kay Inc. v. Yahoo! Inc., Case No. 3:09-cv-01278-M (N.D. Tex). Represented Yahoo! in trademark infringement litigation.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., et al., Case No. 09-cv-2263 (N.D. Ill). Represented Kimberly-Clark in trade dress infringement case. Case dismissed on summary judgment in favor of client.
  • Yahoo! Inc. v. National Football League Players Association, Inc., et al., Case No. 09-cv-01272-PJS-FLN (D. Minn.). Successfully represented Yahoo! Inc. in declaratory judgment action relating to right of publicity and fantasy football game.
  • Heartbrand Beef Inc. v. Yahoo!, et al., Case No. 6:08-cv-00062 (S.D. Tex). Successfully represented Yahoo! against Lanham Act false designation claim. Dismissed.
  • International Information Systems Security Certifications Consortium v. Yahoo!, et al., Case No. 2:07-cv-1195 (S.D. Ohio). Successfully represented Yahoo! against motion for temporary restraining order in trademark suit concerning Yahoo! message boards. Dismissed.
  • Tyco Healthcare Group LP et al. v. Kimberly-Clark Corp. et al., Case No. 06-11809-JLT (D. Mass.). Successfully represented Kimberly-Clark against motion for preliminary injunction in trademark suit concerning feminine hygiene product.
  • 800-JR Cigar, Inc. v. Goto.com, Inc. (now Yahoo!) et al., Case No. 00 CV 03179 (D. N.J.). Successfully represented Overture Services, Inc., an Internet search engine, as defendant in trademark infringement suit concerning bidding on search terms that comprise trademarks of plaintiff.
  • Government Employees Insurance Company v. Google, Inc. and Overture Services, Inc., (now Yahoo!). Case No. 1:04cv 607 (E.D. Va.). Successfully represented Overture Services, Inc., an Internet search engine, as defendant in trademark infringement suit concerning bidding on search terms that comprise trademarks of plaintiff.
  • Procter & Gamble v. Randy Haugen and Amway Corporation (D. Ut. 1995-2003). Successfully represented Amway against P&G's claims based on the Lanham Act, defamation per se, tortious interference with business relations and vicarious liability. All of P&G's claims were dismissed at the pleading stage or by summary judgment. The 10th Circuit affirmed.
  • American Red Magen David for Israel v. Magen David Adom, U.S.A., Inc. v. Magen David Adom in Israel, Case No. 02 CV 8876 (S.D. N.Y.). Successfully represented Magen David Adom, U.S.A., Inc. in trademark infringement case involving MAGEN DAVID ADOM service mark. Settled.
  • Hardee's Food Systems, Inc. v. Hartee's Driving Range, Inc., and Thomas E. Hartman, Jr., individually and d/b/a Hartee's Mini Golf, Case No. 99 1312 (W.D. Pa.). Successfully represented Hardee's in trademark infringement suit regarding HARDEE'S trademark.
  • Intermatic Incorporated v. Salesmakers, Inc., Case No. 01 C 8601 (N.D. Ill.). Represented Intermatic in trademark infringement case regarding INTERMATIC timers. Dismissed.
  • Chicago Human Rhythm Project v. Gina Barrera d/b/a Projection Rhythm Productions, Case No. CV 04C 0619 (N.D. Ill.). Successfully represented CHRP in trademark infringement action to prevent use of PROJECT RHYTHM service mark for use with tap dance workshops.
Trademark Trial and Appeal Board (TTAB) Cases
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., et al., Cancellation No. 92051438 (T.T.A.B.). Representing Kimberly-Clark in cancellation proceeding involving several Georgia-Pacific trademark registrations.
  • Fox Broadcasting Company v. Steve Dahl & Co., Opposition No. 91166194 (T.T.A.B.). Successfully represented Fox Broadcasting Company in opposition concerning TRADING SPOUSES.
  • East West Bank v. United States Steel Corporation, Opposition Nos. 91177674 and 91177809 (T.T.A.B.). Successfully represented U. S. Steel in opposition proceeding concerning ROSS BRIDGE mark. Settled.
  • Autodesk, Inc. v. Dassault Systemes S.A., Opposition No. 158,625 (T.T.A.B.) Successfully represented Dassault Systemes S.A. in opposition proceeding concerning DS Design mark. Settled.
  • Bally Total Fitness Holding Corp. v. Vectra Fitness, Inc., Opposition No. 91122839 (T.T.A.B.). Successfully represented Bally in TTAB opposition proceeding regarding PINNACLE mark. Dismissed.
State Court Matters
  • Gregg Harris v. Cassandra Hunt-Parker d/b/a Clowns2go, Inc., Case No. 01 CH 20644 (Cir. Ct. Ill.). Successfully represented defendant as lead counsel in trademark infringement action. Dismissed on summary judgment.
  • Discover Financial Services, Inc. v. Mary Catherine Taylor, Case No. 01 CH 19239 (Cir. Ct. Ill.). Successfully defended Ms. Taylor in trade secret misappropriation case. Dismissed.
Uniform Domain-Name Dispute Resolution Policy (UDRP) Cases
  • Bally Total Fitness, Inc. v. Mike Torres, d/k/a Dallas Internet Service, a/k/a Global media Consulting, Case No. D2001-0546 (WIPO). Secured transfer of domain name ballyfitness.com.
  • The Rival Company v. DVO Enterprises, Case No. D2002-0265 (WIPO). Secured transfer of domain name crock-potrecipes.net.
Publications
Presentations
  • "Hot Topics in IP Law: Techniques for Protecting Weak Trademarks," Association of Corporate Counsel, Chicago Chapter, Chicago, IL, January 19, 2012
Memberships & Affiliations
  • International Trademark Association
  • American Intellectual Property Law Association
  • Chicago Bar Association
  • Intellectual Property Owners Association
Non-Legal Experience
  • Unique Business Services, Inc., Southfield, Michigan
    Authorized Trainer, Instructor and Technical Support Manager for Peachtree Accounting Software System, May 1992-1996