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Jack C. Berenzweig

Practice Summary

Mr. Berenzweig splits his practice between patent litigation, trademark litigation and sports law. Mr. Berenzweig has been particularly active in cases protecting manufacturers against the distribution of counterfeit copies of their products, as well as representing Asian companies in the U.S. with respect to U.S. industrial property matters.

Honors/Distinctions
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  • The Best Lawyers In America, 2009-2012
  • Illinois Super Lawyers, Intellectual Property Law, 2005-2012
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009-2011
  • Who's Who Legal USA: Trademarks, 2006
  • The International Who’s Who of Trademark Lawyers, 2001-2011
  • The International Who’s Who of Business Lawyers, Mergers & Acquisitions, 2003
  • The World’s Leading Trademark Law Practitioners
  • Leading American Attorneys
  • Who’s Who in America
  • Who’s Who in the World
  • Who’s Who in American Law
Representative Matters
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  • Kennecott Corp. v. Kyocera Intern, Inc., 835 F. 2d 1419 (Fed. Cir. 1987); cert. denied, 486 U.S. 1008 (1988). A patent infringement suit relating to a ceramic product having a crystal structure of silicon carbide with submicron size grains. Our client, Kennecott, alleged that Kyocera infringed two patents. The district court found one of the patents invalid on summary judgment. On appeal, the CAFC reversed the invalidity decision of the district court. The case subsequently went to trial on both patents. A jury awarded Kennecott damages in the amount of $7,000,000 and found the infringement to be willful. The judgment was increased, in an unreported decision, to $16,000,000, on account of the willfulness and to reimburse Kennecott's attorneys' fees. The patents were later involved in two additional infringement suits with favorable but unreported decisions.
  • Munsingwear Inc. v. Jockey International Inc., 31 USPQ 2d 1146 (D.C. Minn. 1994); aff'd 39 F. 3d 1184 (8th Cir. 1994). A trademark and trade dress configuration infringement suit filed against our client, Jockey International. On summary judgment, the district court found that, as a matter of law, there could be no likelihood of confusion and hence no infringement, since the famous JOCKEY trademark was prominently displayed on the accused garment. On appeal, the Court of Appeals for the 8th Circuit, affirmed.
  • Red Baron-Franklin Park, Inc. v. Taito Corp., 883 F. 2d 275 (4th Cir. 1989). An anti-trust action brought by plaintiff against our clients, Taito Corporation and Taito America Corporation, alleging that Taito America violated the anti-trust laws by attempting to prevent the public use of "gray market" (parallel import) coin operated video games' that had been manufactured in Japan by Taito Corporation. Taito America counterclaimed for copyright infringement alleging that while the first sale doctrine allowed a purchaser of parallel imports to resell the copyrighted work, it did not give them the right to publicly perform the copyrighted work. On summary judgment, the district court found no copyright infringement because the parallel imported games were genuine and had been manufactured by a related company. On appeal, the Court of Appeals for the 4th Circuit reversed and found copyright infringement, holding that the first sale doctrine has no application to the rights of the owner of a copyright guaranteed by §106, except for the right of distribution. As a result of this decision Congress amended the Copyright Act to overturn the legal effect of this decision (17 U.S.C. §109(e)).
  • Williams & Humbert Ltd. v. Ruiz-Mateos, 18 USPQ2d 2041 (D.C.D.C. 1991). A trademark suit involving the ownership of the Dry Sack trademark. Our client, the Kingdom of Spain, had expropriated the business assets of Ruiz-Mateos, including the DRY SACK sherry federal trademark registration, allegedly, without compensation. After a trial, the district judge found that the Spanish government's expropriation satisfied the requirements of the U.S. Constitution and that the Kingdom of Spain was therefore the rightful owner of the DRY SACK trademark registration.
  • Pizzazz Pizza & Restaurant, et al. v. Taco Bell Corporation and Pepsico, Inc., et al., 642 F.Supp. 88 (N.D. Ohio 1986). A trademark infringement suit brought by plaintiff, seeking a preliminary injunction against our clients, Taco Bell and Pepsico, alleging that a menu item Pizzazz pizza infringed the plaintiff's tradename Pizzazz. After a three-day preliminary injunction hearing, the motion for a preliminary injunction was denied and the case ultimately was dismissed.
  • Jockey International, Inc. v. Burkard, 185 USPQ 201 (S.D. Ca. 1975)
  • North American Philips Corp. v. American Vending Sales Inc., 29 USPQ 2d 1817 (N.D. Ill. 1993)
  • Signode Corporation v. Weld-Loc Systems, Inc., et al., 216 USPQ 310 (N.D. Ill. 1982)
  • Signode Corporation v. Weld-Loc Systems, Inc. and Strapex AG, 00 F. 2d 1108 (7th Cir. 1983)
Publications
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  • "1997-1998 U.S. Reported Cases Decided Under The Trademark Counterfeiting Act of 1984," 26 APAA News, 147, 1999
  • "1996-1997 U.S. Reported Cases Decided Under The Trademark Counterfeiting Act of 1984," 25 APAA News, 141, 1997
  • "The Anti-counterfeiting Consumer Protection Act of 1966 and 1995-1996 Cases Involving Counterfeiting," 24 APAA News,155, 1997
  • "Seizure of Counterfeit Goods Under U.S. Law As required by the Trips Agreement, The Anti-Counterfeiting Consumer Protection Act of 1995, and 1994-1995 U.S. Cases Involving Counterfeiting," 23APAA News, 145, 1996
  • "1992-1994 U.S. Cases Involving Counterfeiting," 22 APAA News, 123, 1995
  • "1991 and 1992 U.S. Cases Decided Under the Trademark Counterfeiting Act of 1984," 20 APAA News, 109, 1993
  • "A Counterfeiting Case Study, Taito Corporation v. Red Baron, Inc.," 19 APAA News, 89, 1992
  • "United States Protection and Policy Regarding Pirate Music Tapes and Video Tapes," 18 APAA News, 83, 1991
  • "Counterfeiting Unpatented Products May Once Again Be Stopped," Vol 7, No.3 and Vol. 8, No. 1, State Bar of California Section of Patent Trademark and Copyright New Matter
  • "Note," 15 American University Law Review, 126, 1965
Presentations
  • Mr. Berenzweig has conducted numerous seminars on anti-counterfeiting.
Memberships & Affiliations
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  • American Bar Association
  • Licensing Executives Society
  • Seventh Circuit Bar Association
  • Illinois State Bar Association
  • Chicago Bar Association
  • Intellectual Property Owners Association
  • Sports Lawyers Association
  • Federation Internationale des Conseils en Propriété Industrielle
  • International Association for the Protection of Intellectual Property
  • Brand Names Education Foundation, Vice Chairman, 1995-2001
  • International Trademark Association, Past Chairman, Anti-Counterfeiting Sub-Committee
  • Asian Patent Attorneys Association Anti-counterfeiting Committee Ad hoc member
Civic Activities
  • National Hockey League Players Association
Press Releases