Most Highly Regarded Firms: Illinois 2008 - Trademarks
Trademarks have become global currency, and defending a brand's distinctiveness has never been more important in an increasingly globalised, homogeneous marketplace.
Nineteen experts from eight firms are identified in this chapter, recommended for their strategic advice, enforcement and protection, and litigation expertise. These lawyers specialise in a range of issues, such as counterfeiting, grey market goods, false advertising, cybersquatting, domain name, administrative proceedings and the prosecution and maintenance of marks, in the US and abroad.
Our findings illustrate the dominance of specialist IP firms in the market. Pattishall McAuliffe Newbury Hilliard & Geraldson LLP, boasts an outstanding seven nominees in this edition. Since the firm's beginnings in 1883 it has concentrated on the core areas of IP law, and now has one of the largest trademark practices in the US, representing brands such as PepsiCo, Ford, Deutsche Wurlitzer, Nike and Bayer. "The éminence grise of Illinois trademarks", David Hilliard is a senior partner of the firm and a past president of the Chicago Bar Association. Involved in numerous "bet-the-company" cases, he has represented clients including Encyclopedia Britannica, BASF and the American Medical Association. Robert Sacoff is a "wonderfully astute" trademarks practitioner, appearing in the upper reaches of this year's research. He served as chair of the American Bar Association section of intellectual property law from 2003 to 2004. Highlights include successfully representing Gateway Computers in the defence of its cow spots brand and advertising motif. A "star in the courtroom", Raymond Geraldson's practice encompasses infringement, trade dress, false advertising, dilution and cyberpiracy. He is a past president of the Intellectual Property Law Association of Chicago. Joseph Welch is a "seasoned litigator" whose transactional skills were also praised. Mark Partridge has "unrivalled expertise" in internet issues, as well as traditional trademark disputes for clients such as food and beverage, health care, toy and sporting goods manufacturers as well as hedge funds, financial transactions and credit card services. With over 50 years' experience in the field, Jeremiah McAuliffe "has seen everything" and is joined on the following pages by Janet Marvel.
Brinks Hofer Gilson & Lione is the "Rolls-Royce of IP firms", according to one admiring competitor. Others rated it as "the place to go" for complex trademark cases, with a host of blue-ribbon clients. Jerome Gilson is "a star of the trademarks scene", performing litigation of every type, as well as applications, clearance, protection and counselling. His influential treatise Gilson on Trademarks was consistently recommended to researchers as one of the reference sources for the profession. Gilson's high-profile clients include Coca-Cola, Wrigley and United States Steel. He recently won a substantial jury award in a grey market infringement case involving Camel, Winston and Salem cigarettes for RJ Reynolds. Jack Berenzweig is "an excellent litigator", according to respondents, who recommended him for cases such as his defence of the Jockey trademark. Partner Gary Ropski was consistently recommended for "outstanding litigation skills", and Jeffery Handelman completes Brinks Hofer's representation in this edition. Co-chair of the litigation department and chair of the trademark practice group, his clients include companies such as Kimberly-Clark and Big Dog USA.
Welsh & Katz Ltd is home to the most highly nominated practitioner in the chapter, Sidney Katz. Interviewees placed him "right in the top category" and rate his expertise as an engineering technician and a patent examiner as "key elements that go to make up a great IP lawyer". His practice is wide-ranging, encompassing trademarks, copyrights and patents. His work in the computer gaming and programming industries was noted to researchers. Julie Katz is a highly rated litigator and has been involved in protecting the Beanie Babies trademark in litigation around the world.
Mark Feldman of DLA Piper LLP is considered "a leading light" of the trademark Bar. An expert in trademark counselling, selection and enforcement, his international practice also encompasses litigation. His clients include prominent franchise and internet companies. He has recently represented Amgen and Google. Keith Medansky, who works on both contentious and transactional IP matters, is "exceptional for dilution cases" and has recently represented Nike in such a matter. He represents a great number of multinationals, coordinating their trademark portfolios.
James Amend at Kirkland & Ellis LLP's litigation and counselling expertise is well respected within the state. A member of the International Trademark Association's (INTA) panel of expert neutrals, he was recommended as a "leader in the field". Co-chair of Katten Muchin Rosenman LLP's intellectual property practice, Floyd Mandell has served as lead counsel in litigation involving brands such as Fruit of the Loom, Planet Hollywood and the Chicago Bulls.
Susan Somers Neal co-founded the firm Neal & McDevitt in 1998, having previously headed up the trademark group at McDermott Will & Emery LLP. A "pre-eminent" practitioner, she represents industrial, financial and commercial enterprises such as Ford, Sara Lee and Tyco. Neal is also a member of INTA's distinguished panel of neutrals and an adjunct professor of advanced trademark law at DePaul University College of Law. Freeborn & Peters LLP's Andrew Goldstein completes the chapter, recommended for his experience in the entertainment industry as well as internet and computer matters.