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Jerome Gilson

Practice Summary

Background
Jerome Gilson has practiced trademark and unfair competition law in the United States for more than 50 years. He has handled numerous trials and appeals before the United States Patent and Trademark Office Trademark Trial and Appeal Board and the federal courts, and has written and spoken widely in his specialty. He has received numerous awards and other professional recognitions, but is perhaps best known nationally and internationally as the original author of leading treatise Gilson on Trademarks (LexisNexis) (supplemented three times annually) (formerly Trademark Protection and Practice). In 2006 Mr. Gilson's daughter, Anne Gilson LaLonde, replaced him as Author, and he now acts as collaborator. View Mr. Gilson’s Wikipedia profile.

Practice
Mr. Gilson has practiced trademark and unfair competition law exclusively with the preeminent Chicago intellectual property firm Brinks Hofer Gilson & Lione, a firm that has borne his name since 1983. He graduated from Northwestern University School of Law where, as a student on the Law Review, he published his first article. He is currently admitted to practice before numerous Federal District Courts, eight Federal Courts of Appeals and the United States Supreme Court.

Gilson on Trademarks
Over the years Gilson on Trademarks has grown to 10 volumes (with three republished Patent and Trademark Office Manuals on Examining Procedure, TTAB Procedure and Identification of Goods and Services), as changes in the law and court, TTAB and UDRP domain name decisions have proliferated. The treatise is now a standard reference work in the field, cited and relied on often. At last count it had been cited in over 350 court decisions, approximately 70 by Federal Courts of Appeals and in two decisions of the United States Supreme Court.

Professional Associations
Mr. Gilson's professional association of choice has been the International (formerly the United States) Trademark Association, a membership association of trademark owners and professionals from over 180 countries. INTA has worked tirelessly in supporting and advancing trademarks and other intellectual property. He has served on its Board of Directors, chaired committees, organized and spoken on programs, and was Counsel to the Association (the highest position for private practice lawyers) for three years. He presently serves on the INTA Past Presidents and Past Counsel Committee.

He also served from 1984 to 1987 as Reporter on the Association's Trademark Review Commission, a blue ribbon group of trademark practitioners who studied and analyzed the Lanham Act (federal trademark law) for several years. The Commission's work led to enactment of the Trademark Law Revision Act of 1988, which contained revolutionary changes in the law. He testified before the United States Congress at the time and assisted in drafting the legislation. In 2001 the Association conferred on him the President's Award for Dedicated and Distinguished Service.

From 1988 to 1993 Mr. Gilson was also an Advisor on the American Law Institute project which lead to the publication of the authoritative Restatement (Third) of the Law of Unfair Competition. He belonged to the Institute, a distinguished organization of judges and lawyers, from 1989 to 2003.

Representative Clients and Trademarks
In the trademark world one is known by his or her clients, their well-known trademarks or brands, and the steps taken to create, enforce, license or otherwise protect them. Throughout his long career in the field he has been privileged to represent many such clients, occasionally in matters that have become a vital part of the commercial history of the United States. For example, early in his career he represented Standard Oil of New Jersey in protecting the ESSO gasoline brand and later in helping it to discontinue it in favor of the EXXON brand. Much later he represented Bayer AG of Leverkusen, Germany, in litigation and ultimately in restoring to it ownership of the BAYER aspirin brand that was confiscated by the United States government during World War I.

Mr. Gilson has also litigated some of the best-known consumer product trademarks in the world, including COCA-COLA, McDONALD'S and the WRIGLEY, DOUBLEMINT and JUICY FRUIT chewing gum trademarks. With others in his firm he has also protected the service marks UNITED AIRLINES and HARVARD UNIVERSITY, and the trademarks JOCKEY, UNITED STATES STEEL, JAMES BOND 007 and the cigarette brands CAMEL, WINSTON and SALEM. Most recently he was active on the trial team that won a jury award of $3,500,000 in a gray market trademark infringement case involving these cigarette brands on behalf of the R.J. Reynolds Tobacco Company (affirmed on appeal).

Mediation
Mr. Gilson has been active in alternative dispute resolution, especially mediation. He was a Panelist on the International Trademark Association's Panel of Mediators for over ten years, assisted in establishing the Lanham Act Mediation Local Rule for the U.S. District Court for the Northern District of Illinois, and has successfully mediated numerous federal court trademark infringement actions.

Honors
In 2011, Mr Gilson was honored by World Trademark Review with its Lifetime Achievement Award for his distinguished career and many achievements. He also was honored by Managing Intellectual Property in 2008 with its first Lifetime Achievement Award. In 2007 Mr. Gilson was inducted into the IP Hall of Fame, sponsored by Intellectual Asset Magazine, joining such luminaries as Thomas Jefferson, James Madison and Thomas Edison. In 1998 he was named the top trademark practitioner in the world by Managing Intellectual Property, based on an international survey of attorneys. In 2003 he was ranked one of the top five U.S. trademark practitioners in Euromoney's Best of the Best Expert Guide, receiving the most votes worldwide. He has also been listed in numerous publications, such as Who's Who in America, Who's Who in American Law, Who's Who in the World and America's Top Lawyers. Recently he was selected again as one of "The Best Lawyers in America," with special mention as having been listed for ten years or more.

With his daughter Anne he has received Burton Awards for Legal Achievement in 2003, 2005, 2006 and 2011. These awards, sponsored by the Burton Foundation, the Library of Congress and the Law Library of Congress, are given annually in competitions for the best examples of published legal writing by partners in the 1,000 largest law firms in the United States.

Law Firm
During his span of years he has served as Managing Partner, Board of Directors member, Chair of the Trademark Practice Group and a member of many firm committees. He is especially proud of revitalizing the firm's Pro Bono Group and helping make it a viable, effective public interest force in the Chicago community.

Honors/Distinctions
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  • Trademark Law Lawyer of the Year - Chicago, The Best Lawyers in America, 2012
  • Lifetime Achievement Award, World Trademark Review, 2011.
  • Lifetime Achievement Award, Managing Intellectual Property, 2008.
  • Inducted into the Intellectual Property Hall of Fame, 2007.
  • Selected as one of "The Best Lawyers in America," with special mention as one of a distinguished group of attorneys who have been listed for ten years or longer, 2005-2013.
  • PLC Which Lawyer?, Recommended Intellectual Property Lawyer in Chicago, 2010.
  • Burton Award for Legal Achievement (with Anne Gilson LaLonde), 2003, 2005, 2006, 2011.
  • Chambers USA: America's Leading Lawyers for Business, Leading Illinois Intellectual Property Lawyers, 2004-2012.
  • World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services, 2011, 2012, Tier 1, 'Individuals - Contentious,' 2013 - Luminary 
  • Illinois Super Lawyers, Intellectual Property Law, 2005-2013.
  • Leading Lawyers Network, 1999-2005, 2007, 2009-2012.
  • Ranked in top 25 in Managing Intellectual Property’s 2006 Guide to the World’s Leading Trade Mark Law Practitioners.
  • Regular appearances in Who’s Who in America, Who’s Who in American Law, Who’s Who in the World, Who's Who Legal USA: Trademarks, Who's Who Legal: Illinois, International Who’s Who of Trademark Lawyers, and International Who’s Who of Business Lawyers (1994-2012).
  • Expert Guides to the World's Leading Lawyers, Best of the Best, 2007.
  • Best of the Best Expert Guide, 2005.
  • Ranked one of the top 5 U.S. attorneys by Euromoney’s Best of the Best Expert Guide. Received the most votes worldwide, June 2003.
  • International Trademark Association President’s Award, 2001.
  • Top Trademark Lawyer in the World, Euromoney Managing Intellectual Property, 1998.
  • America’s Top Lawyers.
Representative Matters
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  • R.J. Reynolds Tobacco Company and GMB, Inc. v. Premium Tobacco Stores, Inc., d/b/a Cigarettes Cheaper, 99C1174. Jury verdict for plaintiffs federal trademark infringement, dilution and related counts. Damages of $3,560,002 awarded (May 6, 2004) (affirmed on appeal).
  • Zimmerman v. National Association of Realtors, 70 U.S.P.Q.2d 1425 (TTAB 2004).
  • Freeman v. National Association of Realtors, 64 U.S.P.Q.2d 1700 (TTAB 2002).
  • Hershy The Tin Man v. Avon Products Inc., 59 U.S.P.Q.2d 1520 (D. Mont. 2001). Affirmed and remanded for findings of fact (9th Cir. 2001).
  • MicroStrategy Inc. v. Motorola Inc., 58 U.S.P.Q.2d 1278 (4th Cir. 2001).
  • GoTo.com, Inc. v. Walt Disney Co., 53 U.S.P.Q.2d 1652 (9th Cir. 2000).
  • The BF Goodrich Company v. Tire Deals Inc., CV 2607-ODE, consent judgment (N.D. Ga. 2000).
  • Navistar International Transportation Corp. v. Freightliner Corp., 49 U.S.P.Q.2d 1116 (N.D. Ill. 1998).
  • Navistar International Transportation Corp. v. Freightliner Corp., 49 U.S.P.Q.2d 1108 (N.D. Ill. 1998).
  • Danjaq LLC v. Sony Corp., 49 U.S.P.Q.2d 1341 (C.D. Cal. 1998).
  • Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 44 U.S.P.Q.2d 1217, 122 F. 3d 1379 (11th Cir. 1997).
  • Navistar International Transportation Corp. v. Freightliner Corp., 44 U.S.P.Q.2d 1382 (N.D. Ill. 1997).
  • SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F. 3d 1325 (11th Cir.), cert. denied (1996).
Publications
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  • "Trademarks Laid Bare: Marks that May Be Scandalous or Immoral," co-author with Anne Gilson LaLonde, LexisNexis (2011)
  • "Naming Rights – and Wrongs: A Road Map to Protecting Personal Names," co-author with Anne Gilson LaLonde, LexisNexis (2010).
  • "But I'm Your Biggest Fan! Handling Trademark Problems Posed by Fan-Created Content," co-author with Anne Gilson LaLonde, LexisNexis (2009).
  • "The Zombie Trademark: A Windfall and a Pitfall," co-author with Anne Gilson LaLonde, 98 TMR 1280 (2008).
  • "In Person: Jerome Gilson," Journal of Intellectual Property Law & Practice, October 2007.
  • "Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks," co-author with Anne Gilson LaLonde, LexisNexis (2005) (Burton Award for Legal Excellence).
  • "To Arms, Citizens! Well, Not Quite. A Riposte to Keith Stolte's Response," 94 TMR 1360 (2004).
  • "Gilson on Trademarks," (LexisNexis), including supplements with co-author Anne Gilson LaLonde, ten-volume treatise (1974-).
  • "Trade Mark Law: A Practical Anatomy," book review, 94 TMR 753 (2004).
  • "Madrid Protocol Confers Mixed Blessings," Legal Media Group, Euromoney's Guide To the World's Leading Trademark Law Practitioners (2004).
  • "The Madrid Protocol: Trademark Superhero?," co-author with Anne Gilson LaLonde, LexisNexis/Matthew Bender (2004) (Burton Award).
  • "The Madrid Protocol: A Slumbering Giant Awakens At Last," co-author with Anne Gilson LaLonde, LexisNexis/Matthew Bender (2003).
  • "The International Trademark Association (1878-2003): Trademark Law Champion," 93 TMR 24 (2003).
  • "The Lanham Act: Time For A Face-Lift?," co-author with Anne Gilson LaLonde, 92 TMR 1 (2002) (Burton Award).
  • "The Anticybersquatting Consumer Protection Act: A Federal Musket in the Battle Against Trademark Cyberpirates – Avast, Ye Scurvy Dogs!," co-author with Anne Gilson LaLonde, Matthew Bender & Co. (2000).
  • "The Anticybersquatting Consumer Protection Act and The ICANN Uniform Domain Name Dispute Resolution Policy," co-author with Anne Gilson LaLonde, LEXIS Publishing (2000).
  • "A Community Trade Mark Update: The European Community Trade Mark And The Smell Of Freshly Cut Grass," co-author with Anne Gilson LaLonde, Matthew Bender & Co. (1999).
  • "Trademark Dilution Now a Federal Wrong: An Analysis of the Federal Trademark Dilution Act of 1995," co-author with Anne Gilson LaLonde, Matthew Bender & Co. (1996).
Presentations
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  • "Trade Marks: The Future of the Advertising Function," University College of London's Institute of Brand and Innovation Law, London, England, March 23, 2011.
  • "Anything Goes: The Lanham Act at 60 Spawns Sensory Trademarks," West Virginia University Research Corporation and the College of Law's conference From Coal to Content: The Role of Intellectual Property and Technology in the New Economy, Morgantown, West Virginia, September 19, 2006.
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," The Institute of Continuing Legal Education Intellectual Property Law Summer Institute, Acme, Michigan, July 22, 2006.
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Other Non-Traditional Trademarks," The Annual Massachusetts Continuing Legal Education Intellectual Property Law Conference, Boston, Massachusetts, June 7, 2006.
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Other Non-Traditional Trademarks," The John Marshall Law School 50th Annual Conference on Developments in Intellectual Property Law, Chicago, Illinois, May 26, 2006.
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," 8th Annual Richard C. Sughrue Symposium On Intellectual Property Law and Policy, Akron, Ohio, March 13, 2006.
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," Arizona State Bar Association Intellectual Property Section, Phoenix, Arizona, February 24, 2006.
  • "Ethical Issues for Trademark Practitioners," co-presenter, a distance-learning workshop in conjunction with the International Trademark Association and University of Akron School of Law, December 10, 2004.
  • "Canadian and U.S. Trademark Hot Topics: Dilution, Functionality, Fair Use, Trade Dress, Protection of Colour and Other Non-Traditional Marks," University of Victoria International Intellectual Property Law Conference, Vancouver, British Columbia, Canada, July 17, 2004.
  • "Nontraditional Trademarks: Legal and Marketing Opportunity or Just Plain Bizarre?" Arizona State Bar Association Intellectual Property Section, Phoenix, Arizona, March 26, 2004.
  • "LexisNexis: Advanced Trademark Strategies," chair and moderator, The Ritz-Carlton, Battery Park, New York, October 23-24, 2003.
  • "Copyright and Trademark Infringement, Anti-Counterfeiting, and Parallel Importation," St. Peter's Oxford/College University Summer 2003 Intellectual Property Conference, Oxford, England, July 25, 2003.
  • "LexisNexis Presents: Trademark Law: Beyond The Basics," chair and moderator, The Westin Hotel, Chicago, Illinois, April 15, 2003.
  • "Law Firm Strategies Under The Madrid Protocol," (panelist, IIT Chicago-Kent College of Law, Chicago, Illinois, March 31, 2003.
  • "Dilution Protection For Non-Traditional and Design Marks," panelist, INTA Trademark Dilution Forum, Arlington, Virginia, March 6, 2003.
  • "Copyright and Trademark Infringement, AntiCounterfeiting and Illegal Imports," panelist at the Joint International Intellectual Property Summer Program in Victoria, British Columbia, Canada, July 11, 2002.
  • "Advanced Trademark Strategies," chair and speaker, LexisNexis/Mealey Publications, a two-day program, speech "The Lanham Act: Time For A Face Lift," Chicago, Illinois, April 15-16, 2002.
  • "The United States Patent and Trademark Office Presents 2001: The Trademark Office Goes E-Commerce – A Timely Dialogue With Commissioner for Trademarks Anne H. Chasser and Other Top USPTO Officials," panelist, IIT Chicago-Kent College of Law, Chicago, Illinois, February 16, 2001.
  • "The Northern District of Illinois Trademark Mediation Program: A Panel Discussion of its Progress and Ideas for Improvements or Alternative Approaches," panelist, American Intellectual Property Law Association Spring Meeting, Chicago, Illinois, April 23, 1999.
  • "Trademarks And Countdown 2000: Is There A Limit To Protection?" Oregon Patent Law Association (OPLA) and Washington State Patent Law Association (WSPLA), Gleneden Beach, Oregon, April 9, 1999.
  • "Identifying the Identifiers: What Qualifies as a Trademark?" panelist, International Trademark Association Evolution and Revolution In Trademark Law, an Interactive Symposium for Advanced Practitioners, New York, New York, March 4, 1999.
  • "U.S. Trademark Law," Hikaku Ho Kenkyu Center, Osaka, Japan, June 6, 1997.
  • "U.S. Trademark Law," Osaka Trademark Association, Osaka, Japan, June 5, 1997.
  • "U.S. Trademark Law," Benrishi Club, Tokyo, Japan, June 3, 1997.
  • "Cyberspace And Dilution: The New Trademark Frontiers," Oregon and Washington Patent Law Associations Joint Conference, Gleneden Beach, Oregon, April 25, 1997.
  • "Global Trademark Challenges: What's New, What's Hot!," panelist, Price Waterhouse Intellectual Property Leadership Forum, Tucson, Arizona, February 13, 1997.
  • "Federal Trademark Dilution Act of 1995," Chicago Bar Association, The Young Lawyers Section, Chicago, Illinois, May 1, 1996.
  • "Staking Claims to the Future," panelist on workshop "The Consumer Survey Battle: What's Old, What's New, What Wins," Price Waterhouse Intellectual Property Leadership Forum, Phoenix, Arizona, February 16, 1996.
Memberships & Affiliations
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  • International Trademark Association
    Counsel, 1991-1994
    Board of Directors, 1978-1980
    Reporter, Trademark Review Commission of International Trademark Association, 1985-88. Negotiated and drafted portions of Trademark Law Revision Act of 1988, the first comprehensive revision of 1946's Lanham Act.
    Chairman, Ad Hoc Committee on Alternative Forms of Dispute Resolution, 1983-1985
    Publications Committee, 1980-1983
    Lawyers Advisory Committee, 1976-1978
    Federal Legislation Committee, 1975-1976
  • American Bar Association
  • Intellectual Property Owners Association
  • Mediator, CPR Institute for Dispute Resolution/INTA Alternative Dispute Resolution Joint Venture, 1994-2008
  • Advisor, American Law Institute project on the Restatement (Third) of the Law of Unfair Competition, 1986-1991
  • Admitted to practice law in U.S. Supreme Court and eight U.S. Courts of Appeals
Civic Activities

Life Trustee, Union League Civic & Arts Foundation

Life Director, Public Interest Law Initiative
 

Legal Experience

Brinks Hofer Gilson & Lione, Chicago, Illinois
1963-Present

Stevenson, Conaghan, Valde & Hackbert (now Dykema Gossett PLLC), Chicago, Illinois
1958-1963

MILITARY EXPERIENCE
United States Army, 1952-1955
Army Security Agency (Top Secret Code Word Clearance)
 

Teaching Experience

The John Marshall Law School, Chicago, Illinois
Adjunct Professor, 1960-1962
Course on Wills, Trusts and Estates.

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