Jeffery A. Handelman
Practice Summary

Jeffery A. Handelman has practiced law for more than 25 years at Brinks Hofer Gilson & Lione, one of the largest intellectual property specialty firms in the country with approximately 150 attorneys. Mr. Handelman has served as co-chair of Brinks’ Litigation Department and chair of the Trademark Practice Group. Mr. Handelman joined Brinks in 1984 after receiving his law degree from Georgetown University Law Center.

Within his primary practice area of intellectual property law, Mr. Handelman focuses on trademark, unfair competition, trade dress, dilution, false advertising, copyright, licensing, trade secret, and Internet-related matters. His clients are throughout the United States and in several foreign countries.

Mr. Handelman litigates before U.S. Courts of Appeals and U.S. District Courts around the country. Moreover, Mr. Handelman practices extensively before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. He is a member of the Trial Bar of the U.S. District Court for the Northern District of Illinois and the Mediation Panel of the U.S. District Court for the Northern District of Illinois.

Mr. Handelman is the author of Guide to TTAB Practice, a two-volume treatise published by Aspen Publishers. Guide to TTAB Practice was a co-winner of the 2008 Burton Award for Legal Achievement in the category of Best Law Firm Compendium. The Burton Awards recognize major accomplishments in the legal profession and are given in association with the Library of Congress in Washington, D.C. This treatise provides in-depth analysis of the procedural and substantive issues that arise in trademark cases. There is also extensive coverage of trademark appeals filed with the U.S. Court of Appeals for the Federal Circuit, and the Federal Circuit’s leading decisions in trademark cases. The treatise includes a Foreword by the Honorable Pauline Newman, who has served as a Judge on the Federal Circuit since being nominated by President Reagan in 1984.

In addition to his litigation practice, Mr. Handelman counsels clients on a variety of matters relating to intellectual property. Mr. Handelman has conducted trademark audits, developed trademark-filing strategies, prepared trademark compliance manuals, and assisted clients in managing domestic and international trademark portfolios.

Mr. Handelman is a frequently-invited speaker on intellectual property topics. He has given speeches for organizations such as the American Law Institute–American Bar Association Committee on Continuing Professional Education, Practising Law Institute, the American Bar Association Section of Intellectual Property Law, the International Trademark Association, LexisNexis, the University of Chicago Graduate School of Business, Northwestern University School of Law, and Kellogg School of Management, Northwestern University.

Honors/Distinctions
  • Illinois Super Lawyers, Intellectual Property Litigation, 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, 2008
Representative Matters
Litigation
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  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 99 USPQ2d 1538 (7th Cir. 2011). Lead counsel in case in which the U.S. Court of Appeals for the Seventh Circuit addressed the impact that a utility patent can have on a claim of trademark infringement. Georgia-Pacific brought suit against Kimberly-Clark for trademark infringement based on its alleged rights in the “Quilted Diamond Design” embossed on its QUILTED NORTHERN toilet paper. Georgia-Pacific’s infringement claims were directed against Kimberly-Clark’s use of allegedly similar embossed designs appearing on the surface of its COTTONELLE ULTRA and SCOTT toilet paper. Kimberly-Clark moved for summary judgment against Georgia-Pacific on the basis that Georgia-Pacific’s asserted designs are claimed in several utility patents and are functional in that they improve the performance of toilet paper in several respects. Citing the many admissions contained in the utility patents, the Court of Appeals concluded as a matter of law that the asserted designs are functional and therefore not entitled to trademark protection. 
  • Amway Corp. v. The Himalaya Drug Co., Civil Action No., 1:09-cv-835 (W.D. Mich. 2009). Lead counsel for Amway in declaratory judgment action seeking declaration that Amway's use of the phrase "Garlic Heart Care Formula" as a product descriptor in connection with its NUTRILITE dietary supplements is a fair use and does not infringe or dilute any alleged rights of adverse party. The declaratory judgment action resulted in a settlement agreement in which the parties agreed that Amway's use of the disputed phrase did not violate any rights of Himalaya in the U.S. or abroad.
  • American Airlines, Inc. v. American Assist Travel Services, Inc. and Gerardo Villafane, No. 08-23476-CIV-HUCK (S.D. Fla. 2008). Lead counsel for American Airlines in trademark infringement action directed against infringement of the marks AA and AMERICAN AIRLINES. The lawsuit resulted in the entry of a Consent Judgment prohibiting defendants from engaging in further infringing activity.
  • Wizard Publications, Inc. v. Kimberly-Clark Corp. and Kimberly-Clark Global Sales, Inc., Civil Action No. CV-06-11-BU-SEH (D. Mont. 2006). Lead counsel for Kimberly-Clark in a copyright infringement suit that was tried to a jury. A graphic designer sold Kimberly-Clark a print for use on its GOODNITES disposable underwear product. Although the designer warranted and represented that the print was original with him and thus did not infringe the rights of others, the print in fact infringed plaintiff's rights in a copyrighted photograph. The trial focused mainly on damages: to what extent did Kimberly-Clark's use of the infringing design increase its sales of the GOODNITES product? The jury awarded the copyright holder only a small portion of the money damages that were requested.
  • Tyco Healthcare Group LP and Tyco Healthcare Retail Group, Inc. v. Kimberly-Clark Corp., Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales, Inc., Civil Action No. 1:06-cv-11809-JLT (D. Mass. 2006). Lead counsel for Kimberly-Clark in an action filed by Tyco Healthcare alleging infringement of the trademark FLEXI-WINGS, a mark licensed by Tyco Healthcare to Proctor & Gamble for use on ALWAYS sanitary pads. Tyco Healthcare sought a preliminary injunction against Kimberly-Clark's use of the mark COMFORT FLEX in conjunction with the term "Wings" in connection with KOTEX sanitary pads. The court found that "Wings" is a generic term that refers to the protruding tabs on the side of a sanitary pad. Finding that Kimberly-Clark's use of "COMFORT FLEX Wings" was protected under the fair use doctrine and also did not give rise to any likelihood of confusion, the court denied Tyco Healthcare's motion for a preliminary injunction.
  • 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., 628 F.3d 837, 97 USPQ2d 1543 (7th Cir. 2010). Lead counsel in case in which the U.S. Court of Appeals for the Seventh Circuit addressed an important aspect of the law of injunctions – the extent to which a non-party is bound by an injunction on the basis of privity. The issue arose in the context of a civil-contempt proceeding brought by the National Spiritual Assembly of the Baha'is of the United States ("NSA"), a religious organization, alleging violations of an injunction entered over 40 years ago. The injunction prohibited defendant, a dissident religious group, from infringing the marks of the NSA. The Court of Appeals held that the alleged contemnors – individuals and religious groups who were not parties to the original lawsuit – were not in privity with the defendant in the underlying action and therefore not bound by the injunction.
  • Lockheed Martin Corp. v. Raytheon Co., Opposition Nos. 91167189 and 91174152 (TTAB 2011). Lead counsel in dispute between premier defense contractors over rights in the term “Paveway” used for laser-guided bombs. Raytheon was the exclusive supplier of Paveway laser-guided bombs for more than 30 years. Claiming that the term had become generic, Lockheed Martin began using Paveway to identify competing laser-guided bombs after being qualified by the Government as a second source. Lockheed Martin opposed Raytheon’s applications to register the Paveway mark in the U.S. and internationally. The Trademark Trial and Appeal Board held that Paveway had become generic in the United States, whereas several foreign tribunals found Paveway to be a valid mark entitled to protection. 
  • Crosstex International, Inc. v. Kimberly-Clark Corp., 04 CV 5313 (E.D.N.Y. 2004). Lead counsel for Kimberly-Clark in a declaratory judgment action in which plaintiff Crosstex sought a declaration that it was not infringing Kimberly-Clark's trademark rights in the color orange for disposable medical face masks. Kimberly-Clark filed counterclaims asserting trademark infringement, trademark dilution and related claims. The case was successfully resolved based on a settlement agreement pursuant to which Crosstex acknowledged the validity of Kimberly-Clark's asserted trademark rights and discontinued its use of the color orange in association with medical face masks.
  • Roder Zeltsysteme und Service AG v. Roder and Roder Hts Hocker America, LLC, Civil Action No. 3:04-CV-0193 (S.D. Ind. 2004). Lead counsel for defendant Heinz Roder, a German citizen, in a case involving the client's right to use his own surname as a trademark and trade name. Mr. Roder sold his company "Roder Zeltsysteme und Service AG" along with the right to use the name "Roder" in connection with the business. Mr. Roder also agreed to a five-year non-compete period. Shortly after the non-compete period expired, Mr. Roder began operating a competing business under the name "Roder Hts Hocker America, LLC." The purchaser of the original business sued for trademark infringement, claiming that, with the sale of his company, Mr. Roder relinquished his right to use RODER as a trademark and trade name. The dispute was successfully resolved pursuant to a settlement agreement permitting the client to use his full name "Heinz Roder" in accordance with specified usage guidelines.
  • Discover Financial Services, Inc. v. Mary Catherine Taylor, No. 01-CH-19239 (Cir. Ct. Ill. 2001). Lead counsel for Mary Catherine Taylor, a former employee of Discover Financial Services, in a trade secret case in which Discover Financial sought a temporary restraining order and preliminary injunction prohibiting Ms. Taylor from working on an identity-theft protection product offered by G.E. Financial Assurance Partnership Marketing Group. Ms. Taylor had access to Discover Financial's confidential and proprietary information while serving as the marketing manager for a competing product offered to holders of Discover Credit cards. Discover Financial claimed that Ms. Taylor would "inevitably disclose" its trade secrets if allowed to work in her new position for G.E. Financial Assurance. In ruling on Discover Financial's motion for a preliminary injunction, the court found that plaintiff was not likely to succeed in showing that Ms. Taylor had disclosed or used any of plaintiff's trade secrets or that she invevitably would do so during the course of her employment with G.E. Financial Assurance.
  • Jacob Zimmerman v. National Association of Realtors, Cancellation Nos. 32,360 and 40,141 (TTAB 2001). Lead counsel for National Association of Realtors ("NAR") in a case that upheld the validity of the collective service marks REALTOR and REALTORS. The TTAB rejected petitioner's genericness claim, holding that the primary significance of the REALTOR mark is that of a proprietary term indicating membership in NAR. A consumer survey submitted on behalf of NAR showed that over 80% of real estate agents and brokers recognized that the term REALTOR does not refer to all real estate agents, but rather refers only to those who are members of NAR or one of its local or state associations. The TTAB observed that real estate professionals "should be permitted to continue making knowledgeable and informed decisions based on the source-indicating functions of these marks."
  • RDV Sports, Inc. v. Logo Connections, Inc., No. 6:99-CV-1346-Orl-22B (M.D. Fla. 1999). Lead counsel for RDV Sports, Inc., the owner of the Orlando Magic of the National Basketball Association and the Orlando Solar Bears of the International Hockey League, in an action involving the client's right to use the name, mark, logo and mascot of the Orlando Solar Bears professional ice hockey team. The adverse party Logo Connections asserted trademark infringement, copyright infringement and related claims, seeking an injunction and money damages against RDV Sports. The case was successfully resolved, with Logo Connections acknowledging that the client's use of the mark ORLANDO SOLAR BEARS and Design did not infringe any of the asserted trademark or copyright rights.
  • Quixtar Investments, Inc. v. Brian Seifert individually and d/b/a Information Technologies, No. 1:99-CV-614 (W.D. Mich. 1999). Lead counsel for Quixtar Investments, Inc., a related company of Amway Corporation, in an action involving claims of fraud and unfair competition relating to the QUIXTAR mark. As Quixtar's multi-million dollar Internet business was being launched, defendant Mr. Seifert claimed to have prior rights in the QUIXTAR mark seeking a settlement in the amount of $2,500,000. Quixtar responded by asserting claims of fraud and unfair competition against defendant. The Court entered judgment in favor of Quixtar, declaring that Quixtar's use of the QUIXTAR mark does not violate any rights of defendant, and permanently enjoining defendant from using the QUIXTAR mark or any confusingly similar mark.
  • Fort James Corporation v. Kimberly-Clark Tissue Company, No. 98-C-7834 (N.D. Ill. 1998). Lead counsel for Kimberly-Clark in an action brought by Fort James alleging trademark infringement, copyright infringement and design patent infringement based on Kimberly-Clark's use of an embossed design appearing on the surface of bathroom tissue. Kimberly-Clark filed counterclaims against Fort James and petitioned to cancel the trademark registrations covering the embossed designs asserted in the lawsuit. The case was successfully resolved based on a confidential licensing agreement reached between the parties.
  • Arleen Freeman v. National Association of Realtors, Cancellation Nos. 27,885 and 28,047 (TTAB 1998). Lead counsel for National Association of Realtors ("NAR"), the nation's largest professional association, in a cancellation proceeding involving the defense of licensee estoppel. The petitioner, Ms. Freeman, had been a member of NAR for over twenty years when she terminated her affiliation and created a competing real estate association. Petitioner then filed petitions seeking to cancel NAR's registrations covering the REALTOR and REALTORS marks on genericness grounds. The TTAB held that, because Freeman was a member of NAR for many years and was authorized as a licensee to use the REALTOR marks, Freeman was precluded by the doctrine of licensee estoppel from challenging the validity of those marks. Dismissing on that ground, the Board did not reach the merits of the genericness claim.
  • Yamaha Corporation of America v. Everett Piano Company, Opposition No. 108,787 (TTAB 1997). Lead counsel for applicant Wrightwood Enterprises in an abandonment case involving the trademark EVERETT for pianos. The Board held that opposer Yamaha Corporation of America, a leader in the piano market, abandoned the mark EVERETT for pianos several years after its acquisition of the Everett Piano Company. Yamaha therefore lacked superior rights in the mark and could not prevail on its claim of priority.
  • Sloppy Joe's International, Inc. v. Kentucky Textiles, Inc., No. 96-10043-CIV-KING (S.D. Fla. 1996). Lead counsel for Kentucky Textiles, Inc., a clothing manufacturer, in a declaratory judgment action filed by Sloppy Joe's International, Inc., the owner of the historic "Sloppy Joe's" restaurant and bar in Key West, Florida. The main issue in the case concerned the territorial extent of the right of each party to use the mark SLOPPY JOE'S for apparel products. Kentucky Textiles owned an incontestable federal registration that was granted in 1985 covering the mark SLOPPY JOES for apparel. Sloppy Joe's International had been promoting its restaurant and bar in Key West, Florida by selling promotional SLOPPY JOE'S apparel products since long prior to the issuance of Kentucky Textiles' federal registration. Contending that Sloppy Joe's International was not entitled to use the SLOPPY JOE'S mark in connection with apparel sold outside the limited area of Key West, Kentucky Textiles objected when Sloppy Joe's International expanded its business and began selling SLOPPY JOE'S apparel at new franchised locations around the country. The case was successfully resolved pursuant to an agreement under which the client granted Sloppy Joe's International a license to use the SLOPPY JOE'S mark on clothing products sold outside Key West, Florida.
  • Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., No. 93-2076, 43 F.3d 922, 33 USPQ 2d 1481 (4th Cir. 1995). Lead counsel for Lone Star Steakhouse & Saloon, a national restaurant chain, in a trademark infringement action against a local restaurant business using the LONE STAR mark in Virginia and Maryland. The U.S. Court of Appeals for the Fourth Circuit affirmed the district court's granting of summary judgment and issuance of a permanent injunction in favor of Lone Star Steakhouse & Saloon. As the senior owner of a federal trademark registration, Lone Star Steakhouse & Saloon was awarded priority over the local junior user. Moreover, the Court found that the LONE STAR mark had "achieved a high level of recognition in the restaurant field" and that issuance of an injunction "would serve the public interest by preventing future consumers from being misled."
  • Continental Airlines Inc. v. United Air Lines, Inc., Opposition No. 98,459, (TTAB 1995). Lead counsel for United Air Lines, Inc. in a case involving the question whether the term E TICKET functions as a valid mark for computerized reservation and ticketing of transportation services. The TTAB held that no single air carrier is entitled to exclusive rights in the E TICKET designation; rather, the term E TICKET is generic and should be available for all carriers to use in association with electronic-ticketing services.
  • Bally Schuhfabriken AG and Bally, Inc. v. Bally Manufacturing Corporation, No. 92-C-0312 (N.D. Ill. 1992). Represented Swiss-based Bally Schuhfabriken, owner of the trademark BALLY for prestigious apparel products and accessories, in infringement action against Bally Manufacturing's use of the mark BALLY'S in connection with low-cost apparel items sold in its casino hotels. The case was successfully resolved based on a settlement agreement that placed restrictions on defendant's use of the challenged mark.
  • Basic Books Inc. v. Kinko's Graphics Corp., No. 89 CIV 2807 (CBM), 748 F. Supp.1522, 18 USPQ 2d 1437 (S.D.N.Y. 1991). Represented Kinko's Graphics in a copyright infringement action brought by a group of major book publishers. The lawsuit challenged Kinko's practice of copying excerpts from books and compiling them into course packets sold to college students. After a bench trial, the court found copyright infringement. Although the copying in question promoted education, the court concluded that the copyright fair use defense did not apply given Kinko's commercial motive and the relatively large size of the excerpts that were taken.
  • Vitaline Corporation v. General Mills, Inc., No. 89-1397, 891 F. 2d 273, 13 USPQ 2d 1172 (Fed. Cir. 1989). Lead counsel for General Mills, Inc. in a cancellation proceeding involving the issue of claim preclusion. The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's grant of summary judgment in favor of General Mills. The court held that the claim asserted against General Mills in the cancellation proceeding could have been brought in a prior proceeding between the parties and therefore was barred.
  • The Coca-Cola Company v. Lakeside Products Company, No. 89-C-7171 (N.D. Ill. 1989). Represented The Coca-Cola Company in an action against Lakeside's sale of "can-wrap" products designed to be placed around cans of beer in order to conceal the beer label from view and make them look like cans of COCA-COLA soft drinks. Each can wrap was red-and-white in color and displayed the designation CACO-CALO in the familiar COCA-COLA Script, together with the Dynamic Ribbon design. The court permanently enjoined the sale of the infringing can wraps, stating that the COCA-COLA and Dynamic Ribbon design trademarks "have become among the most famous trademarks in the world."
  • The Coca-Cola Company v. Alma-Leo U.S.A., Inc., No. 89-C-6045, 719 F. Supp. 725, 12 USPQ2d 1487 (N.D. Ill. 1989). Represented The Coca-Cola Company in an action alleging trademark dilution and related claims based on defendant's marketing and sale of "Magic Powder," a bubble gum product sold in a plastic container resembling a Coca-Cola bottle. The district court granted The Coca-Cola Company's motion for a temporary restraining order, finding that the Coca-Cola bottle design "represents the archetypical distinctive mark." The court found likely injury to The Coca-Cola Company's business reputation, noting that the "Magic Powder" bubble gum consisted of a white powder that looked like cocaine.
  • Schutt Athletic Sales Company and Athletic Helmet, Inc. v. Riddell, Inc., No. 89-C-5560 (N.D. Ill. 1989). Represented Schutt Athletic Sales Company, a manufacturer of football helmets, in an antitrust action directed against an agreement between the National Football League and Riddell, Inc., the largest manufacturer of football helmets in the United States. The agreement at issue stated that, in return for providing free helmets, pads and jerseys to each NFL team, Riddell would receive the exclusive right to have its brand name displayed on helmets worn by players during NFL games. While NFL players remained free to wear helmets made by other companies, the Agreement required that brand names other than Riddell's had to be covered during league play. The Court found that the appearance of a manufacturer's trademark on helmets used during NFL games was not essential to Schutt's ability to compete effectively. Noting that other avenues of advertising were available to Schutt, the Court found no violation of the antitrust laws.
  • Jockey International, Inc. v. Mallory & Church Corp., Opposition No. 81,508 (TTAB 1989). Lead counsel for Jockey International, Inc. in a case in which Jockey asserted its prior rights in the mark ELANCE for underwear against applicant's requested registration of the mark ELAAN (stylized) for neckties. Because Jockey's registration covered ELANCE in typed capital letters, the TTAB considered all reasonable manners in which the mark could be depicted, including a script form similar to that used by applicant. Finding confusion between the marks to be likely, the TTAB sustained the opposition.
  • General Mills, Inc. v. Kellogg Company, No. 87-5190, 824 F. 2d 622, 3 USPQ 2d 1442 (8th Cir. 1987). Represented General Mills in an action in which Kellogg Company sought a preliminary injunction against General Mills' use of the mark OATMEAL RAISIN CRISP for a new breakfast cereal. The U.S. Court of Appeals for the Eighth Circuit affirmed the district court's denial of the preliminary injunction motion, finding that General Mills' use of OATMEAL RAISIN CRISP did not infringe Kellogg's rights in the mark APPLE RAISIN CRISP, also for breakfast cereal. The court noted that the differences in overall packaging precluded any likelihood of confusion: "Acknowledging that there are some similarities between the marks, the district court nevertheless found, after comparing the respective color schemes, lettering styles, and box designs, that the two marks likely are different enough to avoid consumer confusion. In properly focusing on the total effect conveyed by both marks, the district court did not clearly err in finding no confusing similarity between them."
  • Jockey International, Inc. v. Donnie T. Butler, Opposition No. 70,575 (TTAB 1984). Represented Jockey International, Inc. in an opposition against registration of a "Jockey on Horseback" design mark for clothing products. The TTAB ruled in Jockey's favor based on the confusingly similar commercial impressions projected by the marks, noting that the record "establishes beyond any doubt that the JOCKEY word and design marks are famous trademarks in the field of clothing."
Federal Court Cases
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  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corporation, Kimberly-Clark Global Sales, Inc., and Kimberly-Clark Worldwide, Inc., Nos. 09-CV-07157 and 09-CV-2263 (N.D. Ill 2009) (related cases)
  • Amway Corp. v. The Himalaya Drug Co., Civil Action No., 1:09-cv-835 (W.D. Mich. 2009)
  • American Airlines, Inc. v. American Assist Travel Services, Inc. and GerardoVillafane, No. 08-23476-CIV-HUCK (S.D. Fla. 2008)
  • Wisconsin Cheese Group, Inc. v. V&V Supremo Foods, Inc., Civil Action No. 07-C-0219-C (W.D. Wisc. 2007), appeal from final TTAB decision, V&V Supremo Foods, Inc. v. Wisconsin Cheese Group, Inc., Cancellation No. 92044301 (TTAB 2005)
  • Kimberly-Clark Corp. and Kimberly-Clark Worldwide, Inc. v. Medline Industries, Inc., Civil Action No. 07 CV 03121 (N.D. Ill. 2007)
  • Wizard Publications, Inc. v. Kimberly-Clark Corp. and Kimberly-Clark Global Sales, Inc., Civil Action No. CV-06-11-BU-SEH (D. Mont. 2006)
  • Tyco Healthcare Group LP and Tyco Healthcare Retail Group, Inc. v. Kimberly-Clark Corp., Kimberly-Clark Worldwide, Inc. and Kimberly-Clark Global Sales, Inc., Civil Action No. 1:06-cv-11809-JLT (D. Mass. 2006)
  • 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)
  • V&V Supremo Foods, Inc. v. Hawthorn Mellody, Inc. and Hawmell, LLC, Civil Action No. 1:05-cv-01518 (N.D. Ill. 2005)
  • Crosstex International, Inc. v. Kimberly-Clark Corp., 04 CV 5313 (E.D.N.Y. 2004)
  • Roder Zeltsysteme und Service AG v. Roder and Roder Hts Hocker America, LLC, Civil Action No. 3:04-CV-0193 (S.D. Ind. 2004)
  • Viridian Packaging Solutions, LLC v. Zila, Inc. and Zila Swab Technologies, Inc., Civil Action No. 03C-3285 (N.D. Ill. 2003)
  • Zila Swab Technologies, Inc. v. Van Dyke and GMP Products, LLC, Civil Action No. 01 C 8729 (N.D. Ill. 2001)
  • Kimberly-Clark Corp. v. Allegiance Healthcare Corp., Civil Action No. 1:01-CV-3684 (N.D. Ga. 2001)
  • Cynthia Tripp Kampf and Tripp Design, Ltd. v. FAO Schwarz, Inc., et al., No. 03-C-8086 (N.D. Ill. 2003)
  • Proquest Information & Learning Company v. Proquest Limited, No. 03-CV-71407 (E.D. Mich. 2003)
  • National Association of Realtors v. Gregory Tyll, No. 1:02-CV-8261 (N.D. Ill. 2002)
  • Sage Products, Inc. v. Kimberly-Clark Corporation, No. 02-C-126 (N.D. Ill. 2002)
  • V&V Supremo Foods, Inc. v. Castro Cheese Company, Inc., No. 02-C-8573 (N.D. Ill. 2002)
  • Discover Financial Services, Inc. v. Mary Catherine Taylor, No. 01-CH-19239 (Cir. Ct. Ill. 2001)
  • Pro-Line International, Inc. v. Kimberly-Clark Corporation, No. 3:01-CV-0965-G (N.D. Tx. 2001)
  • Lumenos, Inc. v. ESC Medical Systems, Ltd. and ESC Medical Systems, Inc., No. 01-10781-REK (Dist. Ma. 2001)
  • Safe-T Products, Inc., Classroom Products, Inc., and Extra Measures, Inc. v. Learning Resources, Inc. and A.Daigger & Co., Inc., No. 01-C-9498 (N.D. Ill. 2001)
  • Zila Swab Technologies, Inc. v. Darrell W. Van Dyke and CMP Products, LLC, n/k/a Viridian Packaging Solutions, LLC, No. 01-C-8729 (N.D. Ill. 2001)
  • Kimberly-Clark Corporation v. American Threshold Industries, Inc., No. 1:00-CV-1446 (N.D. Ga. 2000)
  • Amway Corporation v. General Nutrition Companies, Inc., No. 1:00-CV-203 (W.D. Mich. 2000)
  • Quixtar Investments, Inc. v. Solitary Enterprises, Inc., No. 1:00-CV-200 (W.D. Mich. 2000)
  • Jennifer Berman v. Big Dog USA, Inc., No. 00-CV-4303 (N.D. Ill. 2000)
  • Quixtar Investments, Inc. v. Motto Enterprise and Eric Motto, No. 1:02-CV-54 (W.D. Mich. 2000)
  • RDV Sports, Inc. v. Logo Connections, Inc., No. 6:99-CV-1346-Orl-22B (M.D. Fla. 1999)
  • Ty, Inc., v. Treasure Yesterday, Inc., No. 4:99-CV-25-DJS (E.D. Mo. 1999)
  • Amway Corporation v. Pharmanex, Inc. and Nu Skin Enterprises, Inc., No. 1:99-CV-155 (W.D. Mich. 1999)
  • Signature Financial/Marketing, Inc. v. Jason Wiseman and Holden Corporation d/b/a efox.com, No. 99-CV-2499 (N.D. Ill. 1999)
  • Sprint Communications Company L.P. and Sprintcom, Inc. v. SBBS Software and Consulting, Inc.and Scott L. Gordon, No. 99-1022-CV-W-6 (W.D. Mo. 1999)
  • Quixtar Investments, Inc. v. Michael Brown and Xamo Entertainment, Inc., No. 1:99-CV-891 (W.D. Mich. 1999)
  • Quixtar Investments, Inc. v. Brent M. Leger a/k/a Brent L., individually and d/b/a B-C Media, No. 1:99-CV-680 (W.D. Mich. 1999)
  • Quixtar Investments, Inc. v. Brent Reeves, No. 1:99-CV-677 (W.D. Mich. 1999)
  • Quixtar Investments, Inc. v. Thomas Ford, individually and d/b/a Residualincomes, No. 1:99-CV-676 (W.D. Mich. 1999)
  • Quixtar Investments, Inc. v. Brian Seifert individually and d/b/a Information Technologies, No. 1:99-CV-614 (W.D. Mich. 1999)
  • Quixtar, Inc. v. Brian Smith, No. 1:99-CV-426 (W.D. Mich. 1999)
  • Finazzle Corp. USA v. Kimberly-Clark Corp., No. 1:98-CV-3217-ODE (N.D. Ga. 1998)
  • Ty Inc. v. Randy J. Thyberg d/b/a Trading Cards International, No. CV 98-7001RWSL (C.D. Calif. 1998)
  • Toys “R” Us, Inc. v. Kam Toys & Novelty Manufacturing Ltd., No. 98-C-7247 (N.D. Ill. 1998)
  • Fort James Corporation v. Kimberly-Clark Tissue Company, No. 98-C-7834 (N.D. Ill. 1998)
  • Ty Inc. v. Enor Corporation, No. 98-C-6314 (N.D. Ill. 1998)
  • Long John Silver’s, Inc. v. Hester Industries, Inc., No. 97-409 (E.D. Ky. 1997)
  • Spree.com Corporation v. Sprint Communications Company L.P. and Sprint Communications Corporation, No. 97-CV-5456 (CW) (E.D. Pa. 1997)
  • Sprint Communications Company L.P. v. Websprint Communications, Inc., No. C-97-20699-JW (N.D. Calif. 1997)
  • Emerson Electric Co. v. United Air Lines, Inc., No. 4:97-CV-00206-MLM (E.D. Mo. 1997)
  • Amway Corporation v. Euro-Flex, Inc., No. 1:97-CV-696 (W.D. Mich. 1997)
  • Signature Financial/Marketing, Inc. v. Shop at Home, Inc., No. 97-C-3649 (N.D. Ill. 1997)
  • Sloppy Joe’s International, Inc. v. Kentucky Textiles, Inc., No. 96-10043-CIV-KING (S.D. Fla. 1996)
  • Amway Corporation v. Cosmetech International, Inc., No. 95-1488 (Fed. Cir. 1996)
  • Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., Nos. 94-8700, 95-8656 and 95-8767, 122 F. 3d 1379, 44 USPQ 2d 1217 (11th Cir. 1997)
  • Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., No. 93-2076, 43 F. 3d 922, 33 USPQ 2d 1481 (4th Cir. 1995)
  • Kraft General Foods, Inc. v. Borden, Inc., No. 92-CIV-4593 (RPP) (S.D. N.Y. 1992)
  • Bally Schuhfabriken AG and Bally, Inc. v. Bally Manufacturing Corporation, No. 92-C-0312 (N.D. Ill. 1992)
  • Kraft General Foods, Inc. v. Borden, Inc., No. 91-C-0532 (N.D. Ill 1991)
  • The Coca-Cola Company v. Jack Piotrowski d/b/a Mr. Neon, No. 90-C-6752 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Pat McQuire, No. 90-C-6751 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Custom Time Company, No. 90-C-6735 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Bob Dittmann, No. 90-C-6734 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Quinn Enterprises and Ross Quinn, No. 90-C-6733 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Hofstra, McArthur & Belgrave, No. 90-C-6732 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Steve Yadon, No. 90-C-6731 (N.D. Ill. 1990)
  • The Coca-Cola Company v. 1800’s Company and Rod Haynes, No. 90-C-6730 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Chrome Plating and Craig Bierman, No. 90-C-6728 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Jim Dougan, R & A Screen Printing, Inc., Ray J. Doneluck and Augustine R. Smarrelli, No. 90-C-6725 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Bill Pilger and Linda Pilger, No. 90-C-6724 (N.D. Ill. 1990)
  • The Coca-Cola Company v. Daniel A. Cooney d/b/a Cooney Island Antiques, No. 90-C-6723 (N.D. Ill. 1990)
  • Basic Books Inc. v. Kinko’s Graphics Corp., No. 89 CIV 2807 (CBM), 748 F. Supp.1522, 18 USPQ 2d 1437 (S.D. N.Y. 1991)
  • Vitaline Corporation v. General Mills, Inc., No. 89-1397, 891 F. 2d 273, 13 USPQ 2d 1172 (Fed. Cir. 1989)
  • The Coca-Cola Company v. Lakeside Products Company, No. 89-C-7171 (N.D. Ill. 1989)
  • The Coca-Cola Company v.Alma-Leo U.S.A., Inc., No. 89-C-6045, 719 F.Supp. 725, 12 USPQ2d 1487 (N.D. Ill. 1989)
  • Schutt Athletic Sales Company and Athletic Helmet, Inc. v. Riddell, Inc., No. 89-C-5560 (N.D. Ill. 1989)
  • General Mills, Inc. v. Kellogg Company, No. 87-5190, 824 F. 2d 622, 3 USPQ 2d 1442 (8th Cir. 1987)
  • Tree Traven Products, Inc. v. ConAgra, Inc., No. 86-156 (CMW), 640 F.Supp. 1263, 231 USPQ 260 (Dist. Del. 1986)
  • Wm. Wrigley Jr. Company v. Storck USA L.P., No. 86-C-5264 (N.D. Ill. 1986)
  • Lowe’s Inc. v. Mid-Florida Mining Company and Eagle Super Saver Store #520, No. 85-0384 (N.D. Ind. 1985)
  • Pizzazz Pizza and Restaurant and John J. Spiccia and Marie B. Spiccia v. Taco Bell, Inc. and Pepsico, Inc., No. C85-2543 (N.D. Ohio 1985)
  • Illinois Tool Works, Inc. v. Fastec Industrial Corporation, No. 85-C-9083 (N.D. Ill. 1985)
  • Extel Corporation, v. Crown Zellerbach Corporation and Eczel Corporation, No. 85-C-4467 (N.D. Ill. 1985)
  • Tempco Electric Heater Corporation v. Omega Engineering, Inc., No. 85-3068, 819 F. 2d 746, 2 USPQ2d 1930 (7th Cir. 1985)
  • A.J. Canfield Company v. Vess Beverages, Inc., No. 85-C-4368, 796 F. 2d 903, 230 USPQ 441 (7th Cir. 1986)
  • Dana Corporation v. Racal Electronics Public Limited Company and Racal-Dana Instruments, Inc., No. 85-C-428 (N.D. Ill. 1985)
  • Midwest Express Airlines, Inc. v. Midway Airlines, Inc. and Midway Express, Inc., No. 84-C-8503 (N.D. Ill. 1984)
Trademark Trial and Appeal Board (TTAB) Cases
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  • Alticor Inc. v. G&H Nutrition LLC, Opposition No. 91194688 (TTAB 2010)
  • Kimberly-Clark Corporation v. Georgia-Pacific Consumer Products LP, Cancellation No. 92051438 (TTAB 2009)
  • American Airlines, Inc. v. Applied Card Systems, Inc., Opposition No. 91188811 (TTAB 2009)
  • American Airlines, Inc. v. Consumer Benefit Services, Inc., Opposition No. 91188607 (TTAB 2009)
  • American Airlines, Inc. v. Youbet.com, Inc., Opposition No. 91187983 (TTAB 2008)
  • National Association of Realtors v. Korpa, Opposition No. 91187313 (TTAB 2008)
  • Kimberly-Clark Worldwide, Inc. v. Keystone Scent Company, Inc., Opposition No. 91184693 (TTAB 2008)
  • American Airlines, Inc. v. Holiday Systems International of Nevada, Opposition No. 91188056 (TTAB 2008)
  • American Airlines, Inc. v. American Apparel, Inc., Opposition No. 91184941 (TTAB 2008)
  • American Airlines, Inc. v. American Apparel, Inc., Opposition No. 91184480 (TTAB 2008)
  • American Airlines, Inc. v. FIA Card Services, Opposition No. 91183943 (TTAB 2008)
  • FCH Enterprises, Inc. v. Douvris, Cancellation No. 92047334 (TTAB 2007)
  • MHM Resources, Inc. v. Take Care Health Systems, LLC, Opposition No. 91167509 (TTAB 2005)
  • National Association of Realtors v. The Realteers LLC, Opposition No. 91183346 (TTAB 2008)
  • American Airlines, Inc. v. Affinion Publishing, Inc., Cancellation No. 92047076 (TTAB 2007)
  • American Airlines, Inc. v. Kirkpatrick Bank, Opposition No. 91177970 (TTAB 2007)
  • Oneworld Alliance LLC v. One World Incentives, Inc., Opposition No. 91180901 (TTAB 2007)
  • V&V Supremo Foods, Inc. v. Corporative Brandings and Investments, S.A. de C.V., Opposition No. 91176139 (TTAB 2007)
  • FCH Enterprises, Inc. v. Douvris, Cancellation No. 92047334 (TTAB 2007)
  • Fuel Freedom International, LLC v. Alticor Inc., Cancellation No. 92047543 (TTAB 2007)
  • American Airlines, Inc. v. Affinion Publishing, Inc., Opposition No. 91170154 (TTAB 2006)
  • American Airlines, Inc. v. DVS Shoe Co., Inc., Opposition No. 91170862 (TTAB 2006)
  • American Airlines, Inc. v. Motivation Advantage, Inc., Opposition No. 91170098 (TTAB 2006)
  • American Airlines, Inc. v. Motivation Advantage, Inc., Cancellation No. 92045355 (TTAB 2006)
  • Reno Air Racing Association, Inc. v. American Airlines, Inc., Cancellation No. 92045922 (TTAB 2006)
  • American Airlines, Inc. v. Visual Data Systems, Inc., Opposition No. 91171635 (TTAB 2006)
  • V&V Supremo Foods, Inc. v. Wisconsin Cheese Group, Inc., Cancellation No. 92044301 (TTAB 2005)
  • V&V Supremo Foods, Inc. v. Fromageries F. Paul-Renard, Opposition No. 91167084 (TTAB 2005)
  • American Airlines, Inc. v. Affinitas Corp., Opposition No. 91165978 (TTAB 2005)
  • American Airlines, Inc. v. American Media Operations, Inc., Opposition No. 91167582 (TTAB 2005)
  • Lockheed Martin Corp. v. Raytheon Co., Opposition Nos. 91167189 and 91174152 (TTAB 2005) (consolidated)
  • CP Acquisition, LLC v. Madison Restaurant Acquisition Corp., Concurrent Use No. 94002130 (TTAB 2005)
  • Jockey International, Inc. v. Sara Lee Corp., Opposition No. 91161521 (TTAB 2004)
  • Alticor Inc. v. Body Wise International, Inc., Opposition No. 91161155 (TTAB 2004
  • National Association of Realtors v. Solio, Opposition No. 118,735 (TTAB 2004
  • Novartis AG v. Alticor Inc., Opposition No. 91157433 (TTAB 2003)
  • Safeskin Corp. v. Quantum Labs, Inc., Opposition No. 91151020 (TTAB 2002)
  • National Association of Realtors v. Realtorcountry.com, Opposition No. 91125020 (TTAB 2001)
  • Ansell Protective Products, Inc. v. Safeskin Corp., Opposition No. 91119666 (TTAB 2000)
  • Royal Paper Coverting, Inc. v . Kimberly-Clark Corporation, Cancellation No. 42,514 (TTAB 2003)
  • Safeskin Corporation v. Quantum Labs, Inc., Opposition No. 151,020 (TTAB 2002)
  • President and Fellows of Harvard College v. Herstellungs-und Vertriebsgesellschaft, Richter & Hoffmann and Harvard Dental - GmbH, Opposition No. 150,854 (TTAB 2002
  • Alticor Inc. v. Ives Health Company, Opposition No. 154,469 (TTAB 2002)
  • Jacob Zimmerman v. National Association of Realtors, Cancellation Nos. 32,360 and 40,141 (TTAB 2001)
  • Sprint Communications Company L.P. v. International Telcom Ltd., Cancellation No. 31,980 (TTAB 2001)
  • Jay B. Lipe, d/b/a/ Emerge Marketing v. Emerge, Inc., Cancellation No. 32,033 (TTAB 2001)
  • Kimberly-Clark Corporation v. Avalanche Publishing, Inc., Opposition No. 121,201 (TTAB 2000)
  • Star Alliance v. United Air Lines, Inc., Opposition No. 120,963 (TTAB 2000)
  • Sprint Communication Company L.P. v. Mattel, Inc., Opposition No. 120,117 (TTAB 2000)
  • Ansell Protective Products, Inc. v. Safeskin Corporation, Opposition No. 119,666 (TTAB 2000)
  • Sprint Communications Company L.P. v. Atari Games Corporation, Opposition No. 119,089 (TTAB 2000)
  • Sprint Communications Company L.P. v. The Southern Company, Opposition No. 117,093 (TTAB 1999)
  • Sprint Communications Company L.P. v. David Lamn, Opposition No. 116,455 (TTAB 1999)
  • Sprint Communications Company L.P. v. Enron Energy Services, Inc., Opposition No. 116,374 (TTAB 1999)
  • Sprint Communications Company L.P. v. David Lamm, Opposition 116,191 (TTAB 1999)
  • Sprint Communications Company L.P. v. Motive Communications, Inc., Opposition No. 116,151 (TTAB 1999)
  • Sprint Communications Company L.P. v. GHR Systems, Inc., Opposition No. 115,641 (TTAB 1999)
  • Sprint Communications Company L.P. v. The Southern Company, Opposition No. 115,377 (TTAB 1999)
  • Sprint Communications Company L.P. v. Kabushiki Kaisha Bandai, Opposition No. 115,038 (TTAB 1999)
  • Sprint Communications Company L.P. v. GTE Service Corporation, Opposition No. 115,036 (TTAB 1999)
  • Sprint Communications Company L.P. v. GTE Service Corporation, Opposition No. 114,857 (TTAB 1999)
  • Montgomery Ward & Co., Inc. v. KingKraft, Inc., Opposition No. 113.818 (TTAB 1999)
  • Cord Moving and Storage Co. v. The File Room, Inc., Concurrent Use No. 94001163 (TTAB 1999)
  • Arleen Freeman v. National Association of Realtors, Cancellation Nos. 27,885 and 28,047 (TTAB 1998)
  • Sprint Communications Company L.P. v. Mediashare Corporation, Opposition No. 110,062 (TTAB 1998)
  • Sprint Communications Company L.P. v. Equinox International Corporation, Opposition No. 109,745 (TTAB 1998)
  • Yamaha Corporation of America v.Everett Piano Company, Opposition No. 108,787 (TTAB 1997)
  • Kimberly-Clark Tissue Company v. Disposable Products Company, Inc., Opposition No. 108,535 (TTAB 1997)
  • Amway Corporation v. Cartilife Products, Inc., Opposition No. 107,911 (TTAB 1997)
  • The Scott Fetzer Company v. Kimberly-Clark Tissue Company, Cancellation No. 26,510, et al. (TTAB 1997)
  • Amway Corporation v. AmeriChem Distributors, Inc., Opposition No. 107,048 (TTAB 1997)
  • Sprint Communications Company L.P. v. Communications TeleSystems International, Opposition No. 104,790 (TTAB 1997)
  • Shred-It, Inc. v. Shred-It Franchise Inc., Cancellation No. 25,259 (TTAB 1996)
  • Cablevision Systems Corporation v. Sprint Communications Company, L.P., Opposition No. 102,332 (TTAB 1996)
  • Amway Corporation v. Howe Laboratories, Inc., Opposition No. 101,524 (TTAB 1996)
  • Amway Corporation v. Horizon-West Marketing Corp., Opposition No. 101,294 (TTAB 1996)
  • Amway Corporation v. Lancome Parfums Et Beaute & CIE, Opposition No. 100,675 (TTAB 1995)
  • Amway Corporation v. Craig Keeland d/b/a The Craig Keeland Children’s Trust and Graham & Buffet Partners, Inc., Opposition No. 98,877 (TTAB 1995)
  • Frankenmuth Bavarian Inn, Inc. and Zehnder’s of Frankenmuth, Inc. v. Frankenmuth Fundraising Corporation, Opposition Nos. 98,857, 101,699 and 104,554 (TTAB 1995)
  • Continental Airlines Inc. v. United Air Lines, Inc., Opposition No. 98,459 (TTAB 1995)
  • Amway Corporation v. Melaleuca, Inc., Opposition No. 98,346 (TTAB 1995)
  • Kenneth E. Hough v. Motels of America, Inc., Cancellation No. 23,694 (TTAB 1994)
  • The Cherry Corporation v. ASTI “Cherry Computer”, Opposition No. 95, 489 (TTAB 1994)
  • Lone Star Steakhouse & Saloon, Inc. v. Cedar Hills Ribs, Inc., Opposition No. 94,671 (TTAB 1994)
  • Kimberly-Clark Tissue Company v. The Scott Fetzer Company, Opposition No. 94,387 (TTAB 1994)
  • Amway Corporation v. Lucky, Ltd., Opposition No. 93,831 (TTAB 1994)
  • Nabisco, Inc. v. Wm. Wrigley Jr. Company, Cancellation No. 21,187 (TTAB 1992)
  • The File Room, Inc. v. Cord Moving and Storage Co., Cancellation No. 20,448 (TTAB 1992)
  • Canadian Tire Corporation, Limited v. Cooper Tire & Rubber Company, Opposition No. 86,446 (TTAB 1991)
  • Kraft General Foods, Inc. v. Borden, Inc., Opposition No. 84,046 (TTAB 1990)
  • The Quaker Oaks Company v. Curtice-Burns Foods, Inc., Cancellation No. 18,878 (TTAB 1990)
  • Borden, Inc. v. Quality Chekd Dairy Products Association, Opposition Nos. 81, 702 and 82,021 (TTAB 1989)
  • Jockey International, Inc. v. Mallory & Church Corp., Opposition No. 81,508 (TTAB 1989)
  • Abbott Laboratories v. Igen, Inc., Opposition No. 80,904 (TTAB 1989)
  • The Quaker Oaks Company v. Curtice-Burns Foods, Inc., Cancellation No. 17,792 (TTAB 1989)
  • Maytag Corporation v. Alternative Pioneering Systems, Inc., Opposition No. 79,915 (TTAB 1989)
  • Quantum Management, Inc. v. Quantum Resources Corporation, Opposition No. 78,466 (TTAB 1988)
  • United Foods, Inc. v. United Air Lines, Inc., Cancellation No. 17,245 (TTAB 1988)
  • Jockey International, Inc. v. John V. Brooks, Opposition No. 78,121 (TTAB 1988)
  • Signaturecard, Inc. v. ITT Life Insurance Corporation, Cancellation No. 16,268 (TTAB 1987)
  • Curtiss-Burns, Inc. v. Allied Foods, Inc., Opposition No. 76,725 (TTAB 1987)
  • Centel Corporation v. Centex Telemanagement Inc., Opposition No. 76,110 (TTAB 1987)
  • Saks & Company v. Montgomery Ward & Co., Inc., Opposition No. 76,004 (TTAB 1987)
  • Telecommunications Service Bureau, Inc. v. TSB International, Inc., Opposition No. 75,647 (TTAB 1987)
  • Sealy, Inc. v. USA Bedding Corp., Opposition No. 75,182 (TTAB 1986)
  • Jockey International, Inc. v. David L. Keiter, Opposition No. 72,542 (TTAB 1985)
  • J.I. Case Company v. F.L. Industries, Inc., Opposition No. 70,765 (TTAB 1985)
  • Jockey International, Inc. v. Dutch Valley Mills, Inc., Opposition No. 70,577 (TTAB 1984)
  • Jockey International, Inc. v. Donnie T. Butler, Opposition No. 70,575 (TTAB 1984)
  • ConAgra, Inc. v. Jose Luis Saavedra, Cancellation No. 13,949 (TTAB 1983)
  • Jockey International, Inc. v. Sirco International Corp., Opposition No. 66,747 (TTAB 1982)
Publications
  • Mr. Handelman is the author of the two-volume treatise, Guide to TTAB Practice, published by Aspen Publishers. The treatise provides in-depth coverage of the cases that come before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office: (a) opposition proceedings, (b) cancellation proceedings, (c) concurrent use proceedings, and (d) ex parte appeals. The book is intended both for newcomers to the field, who can become familiar with the nuances of Board practice, and for the more experienced, who can keep up with new decisions, rule changes, and other developments.
  • “Stretching Trademark Laws to Protect Product Design and Packaging,” Landslide, January/February 2012
Presentations
View All
  • “Business Law for Entrepreneurs: Overview of Trademark and Copyright Law,” Kellogg School of Management, Northwestern University, Evanston, Illinois, October 6, 2011
  • “Understanding Trademark Law in the Global Marketplace 2011," Program Chair, Practising Law Institute, University of Chicago Gleacher Center, Chicago, Illinois, June 17, 2011. Presented "Overview of Basic Principles of Trademark Law and Unfair Competition"
  • “Understanding Trademark Law 2010," Program Chair, Practising Law Institute, University of Chicago Gleacher Center, Chicago, Illinois, June 18, 2010. Presented "Overview of Basic Principles of Trademark Law and Unfair Competition"
  • "Understanding Trademark Law 2009," Program Chair, Practising Law Institute, University of Chicago Gleacher Center, Chicago, Illinois, June 12, 2009. Presented "Overview of Basic Principles of Trademark Law and Unfair Competition"
  • “Tips on TTAB Practice,” The 19th All Ohio Annual Institute on Intellectual Property, Cleveland, Ohio, September 15, 2009; Cincinnati, Ohio, September 16, 2009
  • "How to Handle Ex Parte Appeals Successfully," American Intellectual Property Law Association, 2008 Annual Meeting, Washington, D.C., October 24, 2008
  • "Tiffany v. eBay: Roadmap for Avoiding Liability or Short Detour for Trademark Owners?" Faculty Member, American Law Institute–American Bar Association Telephone Seminar/Audio Webcast, August 6, 2008
  • "Avoiding Fraud in Trademark Cases," Brinks Hofer Gilson & Lione, Intellectual Property Law Seminar, Glenview, Illinois, June 24, 2008
  • "Understanding Trademark Law 2008," Program Chair, Practising Law Institute, University of Chicago Gleacher Center, Chicago, Illinois, June 20, 2008. Presented "Overview of Basic Principles of Trademark Law and Unfair Competition"
  • “Understanding Trademark Law 2007,” Program Chair, Practising Law Institute, University of Chicago Gleacher Center, Chicago, Illinois, June 5, 2007
  • “Trademarks and the Supreme Court,” IP Day in Chicago, Chicago Intellectual Property Alliance, Loyola University of Chicago School of Law, February 7, 2007
  • “Non-Traditional Trademarks,” International Intellectual Property Law Symposia, University of Victoria, Vancouver, British Columbia, Canada, July 14, 2006
  • "New Frontiers for Trademarks, Non-Traditional Trademarks," Loyola Law School, Los Angeles, California, February 2006
  • "Going Global: Key Trademark Issues," International Intellectual Property Law Symposia, St. Peter’s College, University of Oxford, Oxford, United Kingdom, June 2005
  • "Litigating Trademark, Domain Name, and Unfair Competition Cases," ALI-ABA Course of Study, Washington, D.C., May 2005
  • "Trademark Law," presenter, Perspectives on U.S. IP Law and Practices in 2004, Smart & Biggar, Ottawa, Ontario, Canada, December 22, 2004
  • "Ethical Issues," American Law Institute–American Bar Association Committee on Continuing Professional Education, Chicago, Illinois, April 2004
  • "Trademark Issues Confronting Small Businesses," Northwestern University School of Law, Chicago, Illinois, October 2003
  • "Consumer Surveys: Is There an Unbiased Survey?" LexisNexis Advanced Trademark Strategies, Chicago, Illinois, April 2002
  • "Oral Argument in a Contested TTAB Proceeding," Practising Law Institute, San Francisco, California, February 2002
  • "Federal Court and Trademark Trial and Appeal Board Practice," International Trademark Association Forum, Arlington, Virginia, September 2000
  • "Internet Policing and Enforcement," International Trademark Association Forum, Arlington, Virginia, September 2000
  • "Innovation @ the Speed of E-Commerce: Strategic Business and Intellectual Property Perspectives," Symposium hosted by the University of Chicago Graduate School of Business, Chicago, Illinois, September 2000
  • "Computer, Telecommunications and Financial Services Industry Focus Session," International Trademark Association Annual Meeting, Denver, Colorado, May 2000
  • "Motion Practice Before the Trademark Trial and Appeal Board," International Trademark Association Forum, Washington, D.C., September 1998
  • "International Challenges in Trademark Trial and Appeal Board Proceedings," International Trademark Association Forum, Arlington, Virginia, September 1997
  • "Dilution of Famous Trademarks Under U.S. Law," International Trademark Association Annual Meeting, San Antonio, Texas, May 1997
  • "Proceedings Before the Trademark Trial and Appeal Board," International Trademark Association Forum, Arlington, Virginia, September 1995
  • "The Most Significant Court Decisions and Legislation," ABA Section of Intellectual Property Law, Arlington, Virginia, April 1994
Memberships & Affiliations
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  • Chicago Bar Association
  • International Trademark Association
  • The Lawyers Club of Chicago
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association
  • Intellectual Property Law Association of Chicago
  • The Georgetown Club of Chicago
  • Georgetown University Alumni Association
  • University of Illinois Alumni Association
  • Mediation Activities
    INTA – CPR Panel of Neutrals
    U.S. District Court for the Northern District of Illinois
    Neutral for Lanham Act Mediation Program
    Involved in numerous cases successfully resolved through mediation
Civic Activities
  • Commissioner, Little League Baseball
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    Shareholder, January 1990-Present
    Associate, June 1984-December 1989
  • Management Positions
    Board of Directors
    Executive Committee
    Long Range Strategic Planning Committee
    Conflicts Committee
Teaching Experience
  • Georgetown University Law Center
    Instructor, Legal Research and Writing, 1983 - 1984
Press Releases
© 1998-2012 Brinks Hofer Gilson & Lione. All Rights Reserved.