Our experienced IP litigators have
unparalleled success in intellectual property litigation handling dozens of matters in Chicago and worldwide for and against
various Fortune 100 companies. Although the majority of disputes are settled prior to suit
being filed, our IP trial lawyers aggressively protect and defend our clients' interests throughout settlement negotiations,
litigation and trial, if necessary.
The following is a brief summary of some of the intellectual property
lawsuits handled throughout the country by our law firm, including cases involving some of the world's most valuable and well-known
patents, trademarks, service marks and websites.
FEDERAL AND STATE COURTS
WINDERMERE HOLDINGS, LLC v. YOUR ART CREATIONS, ANGLEA GREY, RONALD KIRKWOOD, and
DOES 1 through 10 (11 CV 2298 - U.S. District Court, Central District of Illinois)(copyright infringement, trademark/service mark infringement, dilution and unfair competition - THOMAS KINCADE artwork).
Representing Defendants in an action alleging copyright infringement, federal trademark infringement
under Title 15 U.S.C. 1125(a)(§ 43(a) of the Lanham Act); false designation of origin under Title 15 U.S.C. 1125(a)(§
43(a) of the Lanham Act); federal trademark dilution under Title 15 U.S.C. § 1125(c); common
law Illinois trademark infringement; dilution under the common law and 765 ILCS § 1036/65; unfair competition
under the Consumer Fraud and Deceptive Business Practices Act 815 ILCS 505/1, et seq.; deceptive trade practices
under the Illinois Deceptive Trade Practices Act, 815 ILCS § 510/1, et seq.; and unfair competition under the
common law of the State of Illinois; seeking injunctive relief, destruction of materials, compensatory damages, accounting
of profits, exemplary damages, attorneys' fees and costs. Obtained settlement.
INFINITI GROUP INTERNATIONAL, INC. v. ELK LIGHTING, INC. d/b/a STERLING INDUSTRIES (11 CV 7735 - U.S. District Court,
Northern District of Illinois)(trademark mark infringement, false advertising
and unfair competition - STERLING & NOBLE). Representing Plaintiff in an action alleging federal trademark
infringement under Title 15 U.S.C. § 1114 (registered mark) & 1125(a)(§ 43(a) of the Lanham
Act); false advertising and common law trademark infringement under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act, unfair competition under the Consumer Fraud and Deceptive
Business Practices Act 815 ILCS 505/1, et seq.; deceptive trade practices under the Illinois Deceptive Trade
Practices Act, 815 ILCS § 510/1, et seq.; and unfair competition under the common law of the State of Illinois; seeking injunctive
relief, compensatory damages, accounting of profits, exemplary damages, attorneys' fees and costs. Pending.
TRT TRANSPORTATION, INC., D/B/A/ CHICAGO TROLLEY CO. v. CHICAGO TROLLEY RENTALS, INC. and YILDIRIM
B. AKSOY (11 CV 3696 - U.S. District Court, Northern District of Illinois)(trademark/service
mark infringement, dilution and unfair competition - CHICAGO TROLLEY). Representing Defendants
in an action alleging federal trademark infringement under Title 15 U.S.C. § 1114 (registered mark) &
1125(a)(§ 43(a) of the Lanham Act); common law trademark infringement and trade dress infringement under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act, cybersquatting
under Title 15 U.S.C. § 1125(d)(1)(A); Illinois trademark dilution under 765 ILCS § 1036/65; unfair competition
under the Consumer Fraud and Deceptive Business Practices Act 815 ILCS 505/1, et seq.; deceptive trade practices
under the Illinois Deceptive Trade Practices Act, 815 ILCS § 510/1, et seq.; unfair competition under the common
law of the State of Illinois; passing off under the common law of the State of Illinois; and unjust enrichment under
the common law of the State of Illinois; seeking transfer of a domain name registration, injunctive relief, destruction
of materials, compensatory damages, accounting of profits, exemplary damages, attorneys' fees and costs. Pending.
EXPERIAN INFORMATION SOLUTIONS, INC. v. AUTOCHEX, LLC and PHILIP MANNING (11 CV 5020 - U.S. District Court,
Northern District of Illinois)(trademark/service mark infringement, dilution and unfair
competition - AUTOCHEX). Represented Defendant in an action alleging federal trademark
infringement, federal unfair competition and false designation of origin under Title 15
U.S.C. § 1114 (registered mark) & 1125(a)(§ 43(a) of the Lanham Act); federal trademark dilution
under Title 15 U.S.C. § 1125(c), cybersquatting under Title 15 U.S.C. § 1125(d)(1)(A), Illinois state trademark
infringement under 765 ILCS § 1036/60, Illinois trademark dilution under 765 ILCS § 1036/65, unfair
competition under the common law of the State of Illinois; and deceptive trade practices under the Illinois Deceptive
Trade Practices Act, 815 ILCS § 510/1, et seq., seeking transfer of a domain name registration, injunctive relief,
destruction of materials, compensatory damages, accounting of profits, corrective advertising, exemplary damages, punitive
damages, attorneys' fees and costs. Obtained settlement and dismissal from lawsuit with prejudice.
MCGIP,
INC. v. DOES 1-24 (11-2985 U.S. District Court, Northern District of Illinois)(copyright infringement - BitTorrent).
Represented John Doe in settlement negotiations relating to subpoena issued to Comcast ISP in a copyright infringement
case involving movies and BitTorrent peer-to-peer (P2P) communications protocol file sharing. Obtained confidential settlement
and dismissal from lawsuit with prejudice.
SELECTIVE INSURANCE COMPANY OF SOUTH CAROLINA v. B
& K TECHNOLOGY SOLUTIONS, INC., BARBARA J. EHRESMAN, KENNETH D. EHRESMAN, and MICROSOFT CORPORATION (11MR56 Circuit
Court of the Eleventh Judicial Circuit, Livingston County, Illinois)(insurance coverage - advertising injury). Representing insured
in action regarding insurance coverage for MICROSOFT CORPORATION v. B&K TECHNOLOGY SOLUTIONS INC., a/k/a ADVANCED
TECHNOLOGY REFURBISHING a/k/a ATR, BARBARA J. EHRESMAN and KENNETH D. EHRESMAN (10 CV 1413 – U.S. District Court, Central
District of Illinois)(see below). Pending.
ONLY ALL SPORTS AND GOLF GIFTS, CORPORATION d/b/a ONLY
GOLF APPAREL v. THE GOLF WAREHOUSE, INC. and REDCATS USA, INC. (11 CV 4232 - U.S. District Court, Northern District of
Illinois)(company name, domain name and service mark infringement – ONLY GOLF APPAREL and ONLYGOLFAPPAREL.COM marks).
Representing Plaintiff in an action for unfair competition under § 43(a) of the Lanham Act), service mark infringement
and unfair competition under the common law of Illinois, consumer fraud under the Illinois Consumer Fraud and Deceptive
Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, seeking permanent
injunctive relief, disgorgement of profits, damages, costs and attorneys' fees. Obtained confidential settlement.
HEARTBREAKER PRODUCTIONS, INC. v. DOES 1-71 (11-2860 U.S. District Court, Northern District of Illinois)(copyright
infringement - BitTorrent). Represented John Doe in settlement negotiations relating to subpoena issued to Comcast
ISP in a copyright infringement case involving movies and BitTorrent peer-to-peer (P2P) communications protocol file
sharing. Obtained confidential settlement and dismissal from lawsuit with prejudice.
AMERICAN FAMILY
MUTUAL INSURANCE COMPANY v. CHICAGO COMPUTER CLUB, CORP., XIADONG WANG a/k/a DANIEL WANG, and MICROSOFT CORPORATION
(11CH14304 Circuit Court of Cook County, Illinois, County Department, Chancery Division)(insurance coverage - advertising
injury). Representing insured in action regarding insurance coverage for MICROSOFT CORPORATION v. CHICAGO COMPUTER
CLUB and XIADONG WANG a/k/a DANIEL WANG (10 CV 7713 – U.S. District Court, Northern District of Illinois)(see below).
Obtained settlement and dismissal of lawsuit with prejudice.
HARD DRIVE PRODUCTIONS, INC. v.
DOES 1-1000 (10-5606 U.S. District Court, Northern District of Illinois)(copyright infringement - BitTorrent). Represented John
Doe in an attempt to dismiss case and/or quash subpoena issued to Comcast ISP in a copyright infringement case involving
movies and BitTorrent peer-to-peer (P2P) communications protocol file sharing. Obtained dismissal from lawsuit without
prejudice.
SENTINEL INSURANCE COMPANY, LTD. v. CHICAGO COMPUTER CLUB, CORP., XIADONG WANG a/k/a DANIEL
WANG, and MICROSOFT CORPORATION (11-1400 U.S. District Court, Northern District of Illinois)(insurance coverage - advertising
injury). Representing insured in action regarding insurance coverage for MICROSOFT CORPORATION v. CHICAGO COMPUTER
CLUB and XIADONG WANG a/k/a DANIEL WANG (10 CV 7713 – U.S. District Court, Northern District of Illinois)(see below).
Obtained settlement and dismissal of lawsuit with prejudice.
TAMPICO BEVERAGES v. TAMPICO FRESH MARKET,
INC.; OCAMPO ENTERPRISES, INC.; and JOSE E. OCAMPO, MARHTA OCAMPO and JUAN OCAMPO, all d/b/a SUPERMERCADO TAMPICO (10
CV 8304 - U.S. District Court, Northern District of Illinois)(trademark/service mark infringement,
dilution and unfair competition - TAMPICO). Representing Defendants in an action alleging federal trademark
infringement, federal unfair competition and false designation of origin under Title 15
U.S.C. § 1114 (registered mark) & 1125(a)(§ 43(a) of the Lanham Act); federal trademark dilution
under Title 15 U.S.C. § 1125(c), trademark dilution and unfair competition under the common law of the State of
Illinois; and deceptive trade practices under the Illinois Deceptive Trade Practices Act, 815 ILCS § 510/1, et
seq., seeking injunctive relief, impoundment, compensatory damages, accounting of profits, exemplary damages,
punitive damages, attorneys' fees and costs. Obtained confidential settlement and dismissal of lawsuit with prejudice.
MICROSOFT CORPORATION v. B&K TECHNOLOGY SOLUTIONS INC., a/k/a ADVANCED TECHNOLOGY REFURBISHING a/k/a ATR,
BARBARA J. EHRESMAN and KENNETH D. EHRESMAN (10 CV 1413 – U.S. District Court, Central District of Illinois)(Microsoft
lawsuit alleging software piracy, copyright infringement and trademark infringement - distribution of MICROSOFT WINDOWS
XP). Representing Defendants in an action alleging copyright infringement, trademark infringement, false designation
of origin, false description, and representation of packaging under § 43(a) of the Lanham Act, and Illinois common law
unfair competition, seeking constructive trust, accounting, injunctive relief, impoundment, damages, profits, attorneys'
fees and costs. Pending.
MICROSOFT CORPORATION v. CHICAGO COMPUTER CLUB and XIADONG WANG a/k/a DANIEL WANG
(10 CV 7713 – U.S. District Court, Northern District of Illinois)(Microsoft lawsuit alleging software piracy, copyright
infringement and trademark infringement - distribution of MICROSOFT WINDOWS XP). Representing Defendants in an action
alleging copyright infringement, trademark infringement, false designation of origin, false description, and representation
of packaging under § 43(a) of the Lanham Act, and Illinois common law unfair competition, seeking constructive trust,
accounting, injunctive relief, impoundment, damages, profits, attorneys' fees and costs. Obtained settlement and dismissal
of lawsuit with prejudice.
CHICAGO RESTAURANT & ENTERTAINMENT GUIDE, INC. and DAVID LISSNER v. CHICAGORESTAURANT.COM
(10 CV-1649 - U.S. District Court, Arizona)(CHICAGORESTAURANT.COM domain name). Represented Plaintiffs in an in rem action under the Anticybersquatting Consumer Protection
Act, 15 U.S.C. § 1125(d) (“ACPA”), against the domain name CHICAGORESTAURANT.COM, seeking the transfer
of the Domain Name as provided for in the ACPA, 15 U.S.C. § 1125(d)(2)(D)(i), after client lost an arbitration proceeding
under the Uniform Domain Name Dispute Resolution Policy ("UDRP") when represented by a different firm.
Obtained Judgment and Order to Transfer Domain Name.
GAITHER TOOL COMPANY v. SUMMIT TOOL
COMPANY d/b/a KEN-TOOL (09 CV 3305 - U.S. District Court, Central District of Illinois)(product design trade dress of
tire mount/demount tools). Represented Plaintiff in an action for declaratory relief of invalidity, unenforceability and non-infringement of alleged product design trade dress of tire mount/demount tools, for an order cancelling a U.S. Trademark Registration, for false advertising and unfair competition
under the Lanham Act, 15 U.S.C. § 1125, consumer fraud under
the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade
Practices Act, common law unfair competition, false patent
marking under 35 U.S.C. §292, and for injunctive relief, damages, profits, costs and reasonable attorneys' fees.
Also represented Counter-Defendant on infringement and related claims. Obtained confidential settlement and dismissal
of lawsuit.
ALBION LABORATORIES, INC., ALBION INTERNATIONAL, INC. and BRECKENRIDGE PHARMACEUTICALS, INC. v. PRUGEN,
INC. (09 CV 93 - U.S. District Court, District of Utah)(patent infringement and false advertising)(hematinic prescription
drug, generic drug substitution, and linking). Represented Defendant in an action alleging patent infringement
and false advertising under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act), including Motion for Preliminary
Injunction. Also represented Defendant in counterclaims
seeking, inter alia, declaratory judgment of invalidity, non-infringement and unenforceability of the patent-in-suit
and for damages for violations of the Clayton Act, 15 U.S.C. §§ 15 and 25, as amended, and the Sherman Act, 15 U.S.C. §§ 11 and 2, violations
of the Lanham Act, unfair competition, trade disparagement and slander. Obtained confidential settlement and dismissal of lawsuit with prejudice.
PHUSION PROJECTS, LLC v. UNITED BRANDS COMPANY, INC. (09 CV 624 - U.S. District Court, Northern District of Illinois)(trademark infringement and unfair competition - MAX family of trademarks and JOOSE
malt beverages). Represented Defendant in an action seeking declaratory relief relating to allegations of trademark
infringement, and claims for unfair competetion (disparagement). Filed counterclaims for
false designation of origin, false advertising and unfair competition under the Trademark Act of 1946, as amended, 15 U.S.C.
§ 1051 et seq. (“Lanham Act”), trademark
infringement, unfair competition, tortious interference with prospective economic advantage and disparagement under the common
law, and cancellation of a U.S. trademark registration, pursuant to 15 U.S.C. § 1119. Obtained confidential
settlement and dismissal of lawsuit with prejudice.
DESTON THERAPEUTICS, L.L.C. v. PRUGEN, INC. and TWO LABS MARKETING, L.L.C. (08 CV 717 - U.S. District
Court, Middle District of North Carolina)(false advertising and unfair competition - Auralgen and
PR Otic - prescription drug - generic drug substitution - linking). Represented Defendant in an
action alleging false advertising and unfair competition, as under Title 15 U.S.C. § 1125(a)(§ 43(a) of the
Lanham Act); unfair competition under the common law of the State of North Carolina; and unfair and deceptive trade practices under
the N.C. Gen. Stat. § 75-1.1. Filed counterclaims false advertising and unfair competition
under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act); unfair and deceptive trade practices under
the N.C.Gen.Stat. § 75-1.1, et seq.;
common law unfair competition, disparagement, tortious interference, slander and libel under the laws of state of North
Carolina, and false patent marking under 35 U.S.C. § 292. Obtained confidential
settlement and dismissal of lawsuit with prejudice.
U.S. AUTO PARTS NETWORK, INC. v. J.C.
WHITNEY & CO. (08 CV 7306 - U.S. District Court, Central District of California)(servicemark
infringement, false advertising and unfair competition - KOOL VUE). Represented Defendant in an action
alleging servicemark infringement, false advertising and unfair competition under Title 15 U.S.C. § 1125(a)(§
43(a) of the Lanham Act); service mark infringement and unfair competition under the common law of the State of California;
unfair competition under the California Bus. & Prof. Code, § 17200 et seq.
Obtained confidential settlement and dismissal of lawsuit with prejudice.
SHUTTER BOOTH, LLC v. SHUTTERBOX
ENTERTAINMENT, LLC (08 CV 6260 - U.S. District Court, Northern District of Illinois)(service
mark infringement, trade dress infringement and unfair competition - SHUTTER BOOTH and SHUTTERBOX service
marks, trade dress and logos). Represented Defendant in an action alleging service mark infringement,
trade dress infringement and unfair competition under Title 15 U.S.C. § 1114 (registered
mark) & 1125(a)(§ 43(a) of the Lanham Act); service mark infringement, trade dress infringement
and unfair competition under the common law of the State of Illinois; consumer fraud under the Illinois Consumer Fraud and
Deceptive Trade Practices Act, 815 ILCS § 505/1, et seq.; and deceptive trade practices under the Illinois Deceptive
Trade Practices Act, 815 ILCS § 510/1, et seq. Obtained dismissal of lawsuit prior to filing appearance
or answer.
LISA FRANK, INC. v. GREEN (C- 20055273 - Superior Court of Pima County, Arizona)(coporate
director and buy-sell dispute). Represented corporation in an in action by director to remove co-director,
enforce a stock buy-sell agreement among herself, co-director and corporation, and asserting a claim against co-director for
breach of fiduciary duties. Co-director filed counterclaim against director, and cross-claim against corporation. Corporation
counterclaimed against co-director, alleging he had obtained unauthorized access to corporate computers and seeking co-director's
removal. After the parties had entered a stipulated order, the Superior Court of Pima County granted corporation's motion
for sanctions against co-director, entered a default judgment against co-director in favor of corporation, and dismissed co-director's
cross-claim against corporation. Co-director appealed. The Court of Appeals held that:
(1) trial court order entering default judgment against co-director and dismissing co-director's claims
against corporation with prejudice was an appealable order, though issue of damages had been reserved; (2) if statute of limitations for contempt proceedings was applicable, corporation's motions for sanctions
were made within such limitations period; (3) corporation did not have a duty to act with reasonable diligence to have computers returned by co-director
forensically analyzed to determine if he had copied corporate intellectual property; (4) trial court's entry of default judgment against co-director and dismissal of co-director's claims against
corporation with prejudice complied with due process; (5) trial court did not abuse its discretion by dismissing co-director's claims against corporation with
prejudice and entering default judgment for corporation; (6) default judgment could not be entered for corporation on corporation's claim seeking removal of co-director
for fraud, when corporation had not pled the elements of fraud with the required factual specificity; and (7) based on corporation's allegations trial court could enter default judgment for corporation on claim
that co-director obtained unauthorized access to corporation's computers.
RIVER'S EDGE PHARMACEUTICALS
v. RHETT DANIELS, ELIZABETH TREZZA, JAMES MARK PUGH, HAROLD A. DEAS, JR. and BROOKSTONE PHARMACEUTICALS (2008-021512
Superior Court of State of Arizona - Maricopa County - 2008CV147347 Superior Court of Fulton County - State of Georgia))(Subpoena
Duces Tecum). Represented non-party PruGen, Inc. in response to Subpoena Duces Tecum for Deposition of 30(b)(6) Witness
and Production of Documents served by River's Edge Pharmaceuticals.
J.C. WHITNEY & CO. v. U.S.
AUTO PARTS NETWORK, INC. (08 CV 3565 - U.S. District Court, Northern District of Illinois)(servicemark infringement,
false advertising and unfari competition - CARPARTS and CARPARTS.COM servicemarks and logos). Represented Plainitff
in an action for service mark infringement, false advertising and unfair competition under Title 15 U.S.C. §
1114 (registered mark) & 1125(a)(§ 43(a) of the Lanham Act); servicemark infringement and unfair
competition under the common law of the State of Illinois; consumer fraud under the Illinois Consumer Fraud and Deceptive
Trade Practices Act, 815 ILCS § 505/1, et seq.; and deceptive trade practices under the Illinois Deceptive Trade
Practices Act, 815 ILCS § 510/1, et seq. Obtained confidential settlement.
STEVEN COUCH v. CVP SYSTEMS, INC. and KENNETH L. GIDEWALL (2007 MR 001532 - DuPage County,
Illinois)(declaratory relief - ownership/inventorship dispute). Represented retired employee in an action by
former employer alleging breach of fiduciary duty, breach of Invention Agreement, Tortious Interference, Conspiracy, Theft
of Corporate Opportunity, Constructive Fraud and Unjust Enrichment involving ownership/inventorship dispute.
Obtained confidential settlement and dismissal of lawsuit with prejudice.
RHT INC. d/b/a LINERS DIRECT v. REBATH,
L.L.C. (08 CV 1102 - U.S. District Court, District of Arizona)(declaratory relief – non-infringement, invalidity
and unenforceability of patent). Represented Plaintiff in an action against Re-Bath, L.L.C. for declaratory relief relating
to non-infringement, invalidity and unenforecability of a U.S. utility patent. Obtained monetary settlement and
disclaimer of patent-in-suit.
COUNTRY MUTUAL INSURANCE COMPANY v. GEORGE F. GROSS and GEORGE F. GROSS
and HANDYMAN INTEGRITY, INC. d/b/a ANGIE'S HANDYMAN (07 CH 15687 - Cook County, Illinois)(insurance coverage
- advertising injury). Represented insured in action regarding insurance coverage for BROWNSTONE PUBLISHING, LLC
d/b/a ANGIE'S LIST v. GEORGE F. GROSS and HANDYMAN INTEGRITY, INC. d/b/a ANGIE'S HANDYMAN (07 C 1558 -
U.S. District Court, Northern District of Illinois)(see below). Settled and dismissed - defense of underlying suit provided
by insurer.
PIZZERIA UNO CORPORATION v. NUMERO UNO PIZZERIA, INC. and SAM FORTINIO (07 C 3334-
U.S. District Court, Northern District of Illinois)(trademark/service mark infringement, passing off, false designation of
origin and unfair competition - PIZZERIA UNO and UNO marks). Represented Defendants in an action alleging infringement
of federally registered trademarks and service marks under the Lanham Act, false and/or misleading designations, descriptions
or representations and unfair competition under § 43(a) of the Lanham Act, and passing off under the Illinois
Uniform Deceptive Trade Practices Act, seeking corrective advertising, enhanced damages, attorneys' fees, preliminary
injunctive relief and permanent injunctive relief. Also represented Counter-Plaintiffs seeking cancellation of
U.S. Trademark Registrations. Obtained confidential settlement and dismissal of lawsuit with prejudice.
ELRAE
ENTREPRISES, INC. v. RAYMOND HELMER (07-1115 - U.S. District Court, Central District of Illinois)(declaratory relief
regarding ownership of intellectual property rights, breach of contract, tortious interference,
and cybersquatting - XTREME PEDESTAL COVER). Represented Plaintiff in an action for declaratory relief of
ownership of Invention, Patent Rights and Trademarks, for declaratory relief of no breach of contract by Plainitff, for
breach of contract by inventor/assignee, tortious interference with Plainitff's prospective economic advantage by inventor/assignee,
and for violation of the Anticybersquatting Consumer Protection Act under 15 U.S.C. 1125(d) by inventor/assignee, permeanent
injunctive and other relief. Dismissed without prejudice to refile.
BROWNSTONE PUBLISHING, LLC d/b/a
ANGIE'S LIST v. GEORGE F. GROSS and HANDYMAN INTEGRITY, INC. d/b/a ANGIE'S HANDYMAN (07 C 1558 - U.S.
District Court, Northern District of Illinois)(service mark and domain name infringement, dilution, cybersquatting, false
advertising and unfair competition). Represented Defendants in an action alleging infringement of federally
registered service marks under the Lanham Act, false and/or misleading designations, descriptions or representations and unfair
competition under § 43(a) of the Lanham Act, dilution under the Lanham Act, service mark infringement and unfair
competition under the common law of Illinois, violation of the Anticybersquatting Consumer Protection Act (cybersquatting),
seeking an accounting, damages and permanent injunctive relief. Obtained confidential settlement and dismissal
of lawsuit with prejudice.
THE INVERLAND RUSSELL CO.'S v. TOLL BROS., INC.
d/b/a/ TOLL BROTHERS HOMES, INC. (06 CV 6415 – U.S. District Court, Northern District of Illinois)(copyright infringement
- architectural works). Represented Plaintiff in an action for copyright infringement in violation of the Copyright Act
of 1976, 17 U.S.C. 101, et seq., seeking injunctive releif, an award of damages, an accounting, the imposition of a constructive
trust, attorneys fees and costs. Obtained confidential settlement.
THE CINCINNATI INSURANCE COMPANY
v. GREEN STREET INNOVATIONS, INC. (2006 07 2379 - Butler County, Ohio)(insurance coverage - advertising injury). Represented insurer
in a declaratory judgment action regarding insurance coverage for EXCEL GOLF TEE, INC. v. GREEN STREET INNOVATIONS, INC. (see
below). Settled and dismissed - defense of underlying suit provided by insurer.
MICROSOFT CORPORATION
v. CHICAGO COMPUTER CLUB and XIADONG WANG a/k/a DANIEL WANG (06 CV 3812 – U.S. District Court, Northern District of
Illinois)(Microsoft lawsuit alleging software piracy, copyright infringement and trademark infringement - distribution
of MICROSOFT Office Pro 2003 software). Represented Defendants pro bono in an action alleging copyright infringement, trademark
infringement, false designation of origin, false description, and representation of packaging under § 43(a) of the
Lanham Act, and Illinois common law unfair competition, seeking constructive trust, accounting, injunctive relief, impoundment,
damages, profits, attorneys' fees and costs. Obtained settlement and dismissal of lawsuit with prejudice.
MICROSOFT
CORPORATION v. APOLLO COMPUTER CORPORATION and JIABIN LIANG (06 CV 3811 – U.S. District Court, Northern District of
Illinois)(Microsoft lawsuit alleging software piracy, copyright infringement and trademark infringement - distribution
of MICROSOFT Windows XP Pro and MICROSOFT Office Pro 2003 software). Represented Defendants in an action by Microsoft
Corporation alleging copyright infringement, trademark infringement, false designation of origin, false description,
and representation of packaging under § 43(a) of the Lanham Act, and Illinois common law unfair competition, seeking constructive
trust, accounting, injunctive relief, impoundment, damages, profits, attorneys' fees and costs. Obtained insurance coverage, settlement
and dismissal of lawsuit with prejudice.
ACTIVE STEERING, LLC and TRANSPORTATION INVESTORS SERVICE CORPORATION
v. PAUL S. WIKE (06 CV 3305 - U.S. District Court, Northern District of Illinois). Represented Plaintiffs in an action
against their former consultant and Chief Engineer for breaches of fiduciary duties, conversion, unfair competition, breaches
of Consultant’s Work Agreements, violations of the Illinois Trade Secrets Act, violations of the federal Computer Fraud
and Abuse Act and violations of the Illinois Computer Tampering Act, seeking temporary retraining order, preliminary injunctive
relief, compensatory and punitive damages, attorneys' fees, costs, and an accounting. Obtained settlement.
SHARE HIS STORY, INC. v. ROMAN, INC. (06 CV 2922
- U.S. District Court, Northern District of Illinois) Represented Share Plaintiff in an action for false and/or misleading
designations, descriptions or representations, false advertising and related unfair competition under § 43(a) of the
Lanham Act, deceptive trade practices under the Illinois Uniform Deceptive Trade Practices Act and the Illinois Consumer
Fraud and Deceptive Business Practices Act, and common law trademark, corporate name, tradename, title, tagline and/or advertising
slogan infringement and unfair competition under Illinois law, seeking damages and permanent injunctive relief, a
Judgment that the case is exceptional within the meaning of the Lanham Act, costs and attorneys’ fees. Obtained confidential
settlement.
MICROSOFT CORPORATION v. SONNY MILLER d/b/a EASY COMPUTERS (06 CV 2411 – U.S. District
Court, Northern District of Illinois)(Microsoft lawsuit alleging software piracy, copyright infringement and trademark
infringement - distribution of MICROSOFT Windows XP Pro and MICROSOFT Windows 2000 Pro software). Represented Defendant
in an action by Microsoft Corporation alleging copyright infringement, trademark infringement, false designation of origin,
false description, and representation of packaging under § 43(a) of the Lanham Act, and Illinois common law unfair competition,
seeking constructive trust, accounting, injunctive relief, impoundment, damages, profits, attorneys' fees and costs.
Obtained insurance coverage, settlement, and dismissal of lawsuit with prejudice.
EXCEL GOLF TEE, INC. v. GREEN
STREET INNOVATIONS, INC. v. EXCEL GOLF TEE, INC. and EXCEL DOWEL AND WOOD PRODUCTS, INC. (06 CV 2052 - U.S. District Court
for the Northern District of Illinois))(trademark infringement suit - keyword advertising - ZERO FRICTION and ZERO FRICTION
GOLF TEES). Represented Defendant in an action alleging trademark infringement, dilution under §
43(c) of the Lanham Act, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, and
Illinois common law fraud, seeking declaratory relief, expedited discovery, preliminary injunctive and permanent injunctive
relief. Filed Counter-claims and Third-Party Claims for false and/or misleading designations, descriptions or representations
and unfair competition under § 43(a) of the Lanham Act), trademark infringement of the common law marks ZERO FRICTION
and ZERO FRICTION BRISTLE CAPS and unfair competition under Illinois common law, consumer fraud under the Illinois Consumer
Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, and a
violation of the Anticybersquatting Consumer Protection Act - cyberpiracy, seeking accounting, damages, cancellation
of a federal trademark registration, permanent injunctive relief; a Judgment that the case is exceptional within the meaning
of the Lanham Act, costs and attorneys’ fees. Obtained confidential settlement and dismissal of lawsuit with prejudice.
CHARLES
E. HINDS v. CENTENNIAL PRODUCTIONS, INC. (05 CV 5393 - U.S. District Court, Northern District of Illinois)(patent infringement).
Represented Plaintiff in an action against Centennial Productions, Inc. for patent infringement seeking damages, injunctive
relief, attorneys' fees and costs. Obtained Final Judgment and Permanent Injunction Upon Consent and settlement including
payment for damages, attorneys' fees and court costs.
STANDARD MUTUAL INSURANCE COMPANY v. CARLBERG GRAFIX, INC., CARLBERG
DESIGN, INC. and PRL USA HOLDINGS, INC.; CARLBERG GRAFIX, INC. and CARLBERG DESIGN, INC. v. SELECTIVE INSURANCE COMPANY (2005
MR 413 - Sangamon County, Illinois)(insurance coverage - advertising injury). Represented insureds in a declaratory judgment
action regarding insurance coverage for PRL USA HOLDINGS, INC. v. CARLBERG DESIGN, INC., d/b/a RUGBY AMERICA, LTD and CARLBERG
GRAFIX, INC. (see below) and related counterclaims for coverage and vexatious and unreasonable denial of coverage. Obtained
dismissal without prejudice - defense provided for underlying suit in the Southern District of New York.
GREGORY HILDERBRAND
v. SEAN J. COMBS, a/k/a P. Diddy, a/k/a Sean John, a/k/a/ Puffy, a/k/a Puff Daddy, SEAN JOHN CLOTHING, INC., BAD BOY ENTERTAINMENT,
INC. and CHRISTIAN CASEY, LLC (05 CV 4434 - U.S. District Court, Central District of Illinois)(unfair competition and reverse
confusion infringement of federally registered IT'S A LIFESTYLE). Represented Plaintiff in an action for infringement
of a federally registered United States trademark, and for false and/or misleading designations, descriptions or representations,
false advertising and related unfair competition under § 43(a) of the Lanham Act, as well as deceptive trade practices
under the Illinois Uniform Deceptive Trade Practices Act and the Illinois Consumer Fraud and Deceptive Business Practices
Act, common law trademark/service mark infringement and unfair competition under Illinois law. Obtained confidential
settlement.
PRL USA HOLDINGS, INC. v. CARLBERG DESIGN, INC., d/b/a RUGBY AMERICA, LTD; and CARLBERG GRAFIX, INC. (05
CV 5888 - U.S. District Court, Southern District of New York) Represented Defendants in substantial mirror-image of previously-filed
Case No. 05 CV 3151 in the U.S. District Court, Central District of Illinois (see below). Obtained dismissal of all
of Polo Ralph Lauren's claims, with prejudice, on the eve of trial, without prejudice to Carlberg's application for attorneys'
fees. Subsequently obtained confidential settlement of Carlberg's claims against PRL.
CARLBERG
DESIGN, INC. d/b/a RUGBY AMERICA, LTD. v. PRL USA HOLDINGS, INC. (05 CV 3151 - U.S. District Court, Central District of Illinois)(declaratory
relief – non-infringement and non-dilution of alleged RUGBY marks of Polo Ralph Lauren and cancellation of U.S. Trademark
Registration for RUGBY). Represented Plaintiffs in an action for declaratory relief relating to non-infringement
and non-dilution of alleged trademarks and cancellation of U.S. Trademark Registration for RUGBY. Dismissed in favor
of Case No. 05 CV 5888 in the U.S. District Court, Southern District of New York.
CARDINAL SCALE MANUFACTURING
INC. v. VICTORIA HERRMANN d/b/a DYNAMIC SCALES (04 CV 5050 - U.S. District Court, Western District of Missouri)(cyberpiracy,
trademark infringement and unfair competition – detecto.com and cardinalscales.com domain names). Represented Defendants
in an action by Cardinal Scale Manufacturing Inc. alleging registered trademark infringement, unfair competition under §
43(a) of the Lanham Act, cyberpiracy under the § 43(d) of the Lanham Act, and unfair competition under the common
law of Missouri. Obtained confidential settlement and dismissal of lawsuit with prejudice.
LINERS DIRECT, INC. v. LUXURY
BATH LINERS, INC. and LUXURY FRANCHISE CORP., d/b/a LUXURY BATH SYSTEMS, INC., ANTHONY J. KEENE, ARBORLINK, INC., d/b/a/ ARBORLINK
and ARBORLINK.COM, (04 C 0108 - U.S. District Court, Northern District of Illinois)(trademark/domain name infringement, typosquatting
and unfair competition). Represented Plaintiff in an action for false and/or misleading designations, descriptions
or representations and unfair competition under § 43(a) of the Lanham Act, trademark, service mark and tradename
infringement, and unfair competition under the common law of Illinois, consumer fraud under the Illinois Consumer Fraud
and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, violation of
the Anticybersquatting Consumer Protection Act (cybersquatting/typosquatting), seeking accounting, damages and permanent
injunctive relief. Obtained confidential settlement.
AUTOZONE, INC. and SPEEDBAR,
INC. v. MICHAEL STRICK, d/b/a OIL ZONE and WASH ZONE, and STRICK ENTERPRISES, INC., d/b/a/ OIL ZONE (03 CV 8152 - U.S. District
Court, Northern District of Illinois)(service mark and trademark infringement, tradename infringement, unfair competition,
and service mark and trademark dilution – AUTOZONE, AUTOZONE.COM and ZONE Marks versus OIL ZONE and WASH ZONE Marks).
Represented Defendants in an action alleging service mark and trademark infringement, tradename infringement, unfair
competition, and service mark and trademark dilution arising under the Federal Trademark Act, 15 U.S.C. § 1051 et seq.,
and the statutes and common law of Illinois. Filed counterclaims for an order canceling a U.S. Trademark Registration for
the ZONE mark, pursuant to 15 U.S.C. § 1119, for entry of a Judgment that Counter-Defendant Speedbar procured a U.S.
Trademark Registration for the ZONE mark by a false or fraudulent declaration or representation, for a Judgment that Counter-Plaintiffs
are entitled to damages under 15 U.S.C. § 1120 for Counter-Defendant’s procured U.S. Trademark Registration by
a false or fraudulent declaration or representation and granting Counter-Plaintiffs damages in an amount to be determined
at trial, for trademark, service mark and tradename infringement of the mark OIL ZONE, and unfair competition under the common
law of Illinois; consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices
under the Illinois Deceptive Trade Practices Act, seeking an accounting, damages, permanent injunctive relief, a
Judgment that the case is exceptional within the meaning of the Lanham Act, costs and attorneys’ fees. Obtained coverage
with insurers reassigning defense to counsel of their choice. Judgment entered in favor of Defendants; appeal pending.
THE AMETHYST CORPORATION v. DANIEL T. WILLIAMS, INTERACTIVE BUSINESS SYSTEMS, INC. and WAIB TECHNOLOGY
LLC (03 CV 7204 - U.S. District Court, Northern District of Illinois)(cyberpiracy, service mark infringement and unfair competition
– AMETHYST.COM domain name). Represented Plaintiff in an action for unfair competition under § 43(a)
of the Lanham Act), trademark infringement and unfair competition under the common law of Illinois, consumer fraud under the
Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices
Act, violation of the Anticybersquatting Consumer Protection Act, seeking accounting, damages and preliminary injunctive
relief. Control of domain name transferred by registrar to court during pendency of lawsuit. Obtained Consent Decree.
GAITHER TOOL COMPANY v. SUMMIT TOOL COMPANY d/b/a KEN-TOOL (03 CV 3198 - U.S. District Court, Central District
of Illinois)(declaratory relief – non-infringement, invalidity and unenforceability of patent). Represented Plaintiff
in an action for declaratory relief relating to non-infringement, invalidity and unenforecability of U.S. utility and
design patents and counter-claims for infringement. Obtained stipulated dismissal upon settlement.
BONNIE
FLOWER SHOPS, INC. v. BOZENA PUSKARZ d/ba BONNIES FLOWERS AND GIFTS d/b/a BONNIE'S FLOWER SHOP (03 CV 5859 - U.S. District
Court, Northern District of Illinois)(corporate name, tradename and service mark infringement – BONNIE FLOWER SHOPS,
INC. and BONNIE FLOWER SHOP marks). Represented Plaintiff in an action for unfair competition under § 43(a) of the
Lanham Act), service mark infringement and unfair competition under Illinois law, dilution under the Illinois
Anti-Dilution Law and the common law of Illinois, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices
Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, seeking accounting, preliminary
injunctive relief, damages, costs and attorneys' fees. Obtained Consent Judgment enjoining continued use of marks and cancellation
of Defendant's telephone number.
THE CERTIF-A-GIFT COMPANY v. HERBERT A. VOGT and VCP, INC. (03 CV 4339
- U.S. District Court, Northern District of Illinois)(cybersquatting – CERTIF-A-GIFT Mark). Represented The Plaintiff
in an action for violation of the Anticybersquatting Consumer Protection Act, seeking permanent injunctive relief, damages,
costs and attorneys' fees. Obtained settlement, including assignment of Defendants' domain name registration.
INTERNATIONAL
RESEARCH & RECOVERY CORPORATION v. ROBERT A. PAGE, JR. (03 CV 884 - U.S. District Court, Northern District of Illinois)(Declaratory
judgment regarding ownership of patent rights - LIFEGEM diamonds). Represented Plaintiff in an action for declaratory relief
regarding ownership of patent rights. Dismissed upon agreement without prejudice to refiling.
INZER v.
FRANTZ (03 CV 552 - U.S. District Court, Northern District of Illinois)(patent infringement suit). Represented Defnedant
in an action alleging patent infringement. Obtained dismissal with prejudice per settlement.
WESCO,
INC. v. WILLIAM S. HAAS (02 - 1181 - U.S. District Court, Central District of Illinois)(patent infringement and inventorship
dispute). Represented Defendant in an action for patent infringement and counter-claim for declaratory relief regarding
inventorship. Stipulated Judgment Order Granting Defendant's Motion for Summary Judgment of non-infringement entered after
Markman claims construction and withdrawal. Case dismissed upon settlement, including payment to Plainitff in the amount
of $55,000.00.
SUMMIT SEED, INC. v. SUPERIOR QUALITY PRODUCTS, INC. and REMINGTON ARMS COMPANY, INC. (02
CV 8379 - U.S. District Court, Northern District of Illinois)(trademark infringement and unfair competition – THE ENHANCER
Mark). Represented Plaintiff in an action for infringement of a federally registered United States trademark, false
and/or misleading designations, descriptions or representations and unfair competition under § 43(a) of the Lanham
Act, deceptive trade practices, common law trademark infringement and unfair competition under Illinois law. Obtained
confidential settlements.
PRACTICEWORKS, INC. and SOFTDENT, LLC v. DENTAL MEDICAL AUTOMATION, INC. (02
CV 1205)(U.S. District Court, Baltimore, Maryland)(declaratory judgment for software distributorship termination). Represented Defendants
in an action seeking a declaratory judgment that a dealership agreement has been terminated and/or not renewed, copyright
infringement and breach of contract, and its counter-claims for a declaratory judgment that the dealership agreement has not
been properly terminated and/or not renewed, breach of contract, disparaging, false, inaccurate and/or misleading representations
in violation of the Illinois Uniform Deceptive Trade Practices Act, a deceptive act or practice in violation of the Illinois
Consumer Fraud and Deceptive Business Practices Act, and unfair competition and trade disparagement under the common law of
Illinois, seeking a declaratory judgment that Counter-Plaintiffs can continue to provide technical support and service of
Plaintiff's products to customers pending the litigation and/or after termination of the Agreement by Plaintiff, violation
of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) for publication of false, inaccurate and/or misleading representations
related to the services of Counter-Plainitffs by Counter-Defendant to third parties, tortious interference with Counter-Plaintiff's
contracts with its customers by Counter-Defendant, tortious interference with Counter-Plaintiff's prospective economic advantage
with respect to its prospective customers by Counter-Defnedant, an accounting, and violation of the United States Antitrust
Laws (Sherman Act). Obtained confidential settlement and dismissal of lawsuit with prejudice.
PRACTICEWORKS,
INC. and SOFTDENT, LLC v. PROFESSIONAL SOFTWARE SOLUTIONS OF ILLINOIS, INC. (02 CV 1206)(U.S. District Court, Baltimore, Maryland)(declaratory
judgment for software distributorship termination). Same as Case 02 CV 1205).
SUMMIT SEED, INC. v. WADE E. WILLIAMS (02 CV 4094 - U.S. District Court,
Northern District of Illinois)(declaratory relief – trademark infringement). Represented Plaintiff in an action for
declaratory relief of non-infringement, invalidity and unenforceability of trademark, cancellation of a United States Trademark
Registration and a related claim for unfair competition under Illinois law. Obtained settlement and assignment of Defendant’s
federal registration.
INTERNATIONAL TRUCK AND ENGINE CORPORATION AND INTERNATIONAL TRUCK INTELLECTUAL PROPERTY
COMPANY, LLC v. DOW-HAMMOND TRUCKS, INC. (02 CV 3460 - U.S. District Court, Northern District of Illinois and U.S. District
Court, Northern District of California)(franchise termination/trademark infringement). Represented Defendant in an action
seeking a preliminary injunction for trademark infringement, common law trademark and tradename infringement and unfair competition,
and breach of contract. Obtained transfer of case to California. Obtained confidential settlement and dismissal of lawsuit
with prejudice.
JOSEPH WINOKUR v. SOMMER & MACA INDUSTRIES, INC., TOMASE KACZMARCZYK, and ANTO AUTO
GLASS BLACK, INC. (02-72164 - U.S. District Court, Eastern District of Michigan)(trademark infringement, unfair competition
and breach of contract). Represented Defendant Sommer & Maca Industries, Inc. in an action alleging trademark infringement
and unfair competition, and in cross-claims and counter-claims for breaches of contracts. Obtained confidential settlement
and dismissal of lawsuit with prejudice.
LINERS DIRECT, INC. v. RE-BATH, LLC (02 C 9328 - U.S. District
Court, Northern District of Illinois)(patent infringement, trademark/domain name infringement, cybersquatting and unfair competition).
Represented Plaintiff in an action against for false and/or misleading designations, descriptions or representations
and unfair competition under § 43(a) of the Lanham Act), trademark, service mark and tradename infringement, and unfair
competition under Illinois law, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive
trade practices under the Illinois Deceptive Trade Practices Act, violation of the Federal Patent Laws, violation of the Anticybersquatting
Consumer Protection Act under 15 U.S.C. § 1125(d), seeking an accounting, damages, costs, attorneys' fees and permanent
injunctive relief. Obtained settlement, including assignment of Defendant's domain name registration.
NATURE'S
OWN v. STEVE VAN HEESWYK (01 CV 7678 – U.S. District Court, Northern District of Illinois)(trademark/domain name infringement,
dilution and cyberpiracy – WHITETAILHABITAT Mark and whitetailhabitatplus.com). Represented Plaintiff in an action for
unfair competition under § 43(a) of the Lanham Act, trademark infringement and unfair competition under the common law
of Illinois, dilution under the Illinois Anti-Dilution Law and the common law of the State of Illinois, consumer fraud under
the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade
Practices Act, violation of the Anticybersquatting Consumer Protection Act, seeking accounting, damages, costs, attorneys'
fees and preliminary injunctive relief. Obtained settlement and permanent injunctive relief.
RECORDABLES,
INC. v. RISK SCIENCES GROUP, INC. and CRAWFORD AND COMPANY (01 CV 6963 – U.S. District Court, Northern District of Illinois)(copyright
infringement and breaches of contracts). Represented Plaintiff in an action for copyright infringement and related claims
for breaches of contracts (written, oral partnership, shrink-wrap and Confidential Disclosure Agreement), breach of covenant
of good faith and fair dealing, promissory estoppel, equitable estoppel, unjust enrichment, quantum meruit, unfair competition,
a violation of the Illinois Trade Secrets Act, seeking damages and an accounting. Obtained confidential settlement.
ALLENDORFER ROOFING COMPANY, LTD. v. B. ALLENDORFER ROOFING COMPANY (01 CV 5403 – U.S. District Court,
Northern District of Illinois)(domain name/service mark infringement and cyberpiracy – ALLENDORFER ROOFING COMPANY and
allendorferroofing.com). Represented Defendant in an action for false designation of origin as provided for Lanham Act,
violation of the Anticybersquatting Consumer Protection Act, violation of the Illinois Uniform Deceptive Trade Practices Act
and violation of the Illinois Consumer Fraud and Deceptive Business Practices Act. Obtained confidential settlement and dismissal
of lawsuit with prejudice.
GAITHER TOOL COMPANY v. SUMMIT TOOL COMPANY d/b/a KEN-TOOL (01 CV 4096 - U.S.
District Court, Northern District of Illinois)(trademark infringement and dilution – BEAD KEEPER mark). Represented
Plaintiff in an action for unfair competition under § 43(a) of the Lanham Act, trademark infringement and unfair
competition under Illinois law, dilution under the Illinois Anti-Dilution Law and the common law of Illinois, consumer fraud
under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive
Trade Practices Act, seeking an accounting, damages, costs and attorneys' fees and preliminary injunctive relief. Obtained
settlement and permanent injunctive relief.
KEELSHIELD, INC, SUE ROGERS-SMITH and SCOTT SMITH v. MEGAWARE
KEEL-GUARD, INC., d/b/a MEGAWARE BOAT PROTECTION PRODUCTS and DAVID L. SHUMWAY (00-1312 - U.S. District Court, Central District
of Illinois)(trademark infringement – KEELSHIELD mark in meta-tag and hidden website text, dilution, breach of contract,
tortious interference and false advertising). Represented Plaintiffs in an action for false and/or misleading designations,
descriptions or representations and unfair competition under § 43(a) of the Lanham Act), trademark infringement, dilution
and unfair competition under the common law of Illinois, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade
Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, breach of contract, tortious interference
with prospective economic advantage, trade disparagement and commercial defamation under the common law of Illinois, seeking
accounting, damages, costs, attorneys' fees and permanent injunctive relief. Obtained confidential settlement
GENERAL
CASUALTY COMPANY OF WISCONSIN v. INTELIA, INC. and INTEL CORPORATION (00 CV 8532 – Wisconsin Circuit Court)(declaratory
action for insurance coverage). Represented insurer in an action regarding indemnification and defense under the “advertising
injury” provisions of a commercial general liability policy of insurance for alleged service mark infringement. Obtained
settlement with coverage provided.
INTEL CORPORATION v. INTELIA, INC. (00 CV 1306 – U.S. District
Court, Northern District of California)(service mark infringement and dilution – INTEL marks). Represented Defendant
in an action alleging service mark infringement and dilution action. Obtained confidential settlement and dismissal of
lawsuit with prejudice.
AMM'S LIMOUSINE SERVICE, INC. v. O’HARE-MIDWAY EXECUTIVE, INC. d/b/a/AMM'S LIMOUSINE SERVICE
EXECUTIVE and DIMITRE N. KOTCHEV (00 CH 2702 – Cook County Circuit Court)(service mark infringement – AMM’S
mark). Represented Defendants in an action by Amm's Limousine Service, inc. alleging service mark infringement action. Obtained
confidential settlement and dismissal of lawsuit with prejudice.
DATABURST, LLC v.
CHECKFREE CORPORATION (00 CV 7944 - United States District Court, Northern District of Illinois)(patent infringement). Represented
Plaintiff in an action for patent infringement seeking damages, injunctive relief, attorneys' fees and costs. Summary
judgment of non-infringement. Appealed adverse judgment to the United States Court of Appeals for the Federal Circuit. Judgment
sustained.
PHOENIX DEVELOPERS, L.L.C. v. CHARLES D. SHARP and SHARP HOMES, INC. v.
PHOENIX DEVELOPERS, L.L.C. and LAWRENCE A. CAPISTA (00 CV 7179 - U.S. District Court, Northern District of Illinois)(copyright
infringement and trade dress infringement – architectural designs). Represented Defendants in an action alleging infringement
of copyright and trade dress relating to architectural designs. Brought counterclaims for declaratory relief and for violation
of the Copyright Protection and Management System Act. Obtained confidential settlement.
AMERICASH
JEWELERS, Inc., v. AMERICASH LOANS, L.L.C. (00 CV 1902 - U.S. District Court, Northern District of Illinois)(service mark
infringement, trade dress infringement and dilution – AMERICASH mark). Represented Plaintiff in an action for
service mark infringement and unfair competition under § 43(a) of the Lanham Act, service mark and trade dress infringement
and unfair competition under the common law of Illinois and under the Illinois Trademark Registration and Protection Act,
dilution under the Illinois Anti-Dilution Law and the common law of the State of Illinois, consumer fraud under the Illinois
Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act,
seeking accounting, damages, costs, attorneys' fees and permanent injunctive relief. Obtained confidential settlement.
BUDGET RENT A CAR CORPORATION, v. BUDGET SELF STORAGE, INC. (00 CV 526 - U.S. District Court,
Northern District of Illinois)(breach of contract - alleged trademark assignment). Represented Defendant in an alleged breach
of contract action by Budget Rent A Car Corporation arising out of settlement negotiations in a pending Trademark Opposition
Proceeding before the TTAB. Obtained dismissal based on lack of jurisdiction.
EXCALIBUR
CHICAGO, INC. v. VITAL PRODUCTIONS, INC. (99 CV 3983 - U.S. District Court, Northern District of Illinois)(service mark infringement
and dilution – CLUB X mark). Represented Plainitff in an action for unfair competition under § 43(a)
of the Lanham Act), service mark infringement and unfair competition under the common law of Illinois, dilution under the
Illinois Anti-Dilution Law and the common law of Illinois, consumer fraud under the Illinois Consumer Fraud and Deceptive
Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, seeking an accounting, damages,
costs, attorneys' fees and preliminary injunctive relief. Obtained settlement and temporary and permanent injunctive relief.
LUXURY BATH LINERS, INC. and LUXURY FRANCHISE CORP. v. MARK C. SMITH, CONRAD SHOWER ENCLOSURES
and LINERS DIRECT, INC. (99 CV 0045 - U.S. District Court, Northern District of Illinois)(patent infringement and breach of
contract). Represented Defendants in an action alleging patent infringement and breach of contract action.
Obtained confidential settlement and dismissal of lawsuit with prejudice.
GEORGE
ZELINSKI, JR. and PIN BREAKER, INC. v. COLUMBIA 300, INC. (98 CV 1059 - U.S. District Court, Central District of Illinois)(trademark
infringement – PINBREAKER mark). Representing Plaintiffs in an action for trademark infringement and dilution.
Obtained jury verdict in the amount of $70,000.00 in compensatory damages and $710,000.00 in punitive damages. Liability and
compensatory damages award affirmed on appeal.
COMPUTER PROGRAMS UNLIMITED, INC.
v. BOARD OF EDUCATION OF THE CITY OF CHICAGO, GRADY C. JORDAN and LOLETTA R. MCDOWELL (98 CV 1096 - U.S. District Court, Northern
District of Illinois)(copyright infringement). Represented Plaintiff in an action for copyright infringement of computer software
program. Obtained confidential settlement.
TELEION CORP. v. TELEIN, INC. (98 CV 1048
- U.S. District Court, Northern District of Illinois)(service mark infringement and dilution – TELEION mark). Represented Defendant
in an action alleging federal trademark/service mark infringement under the Lanham Act, service mark infringement
and unfair competition under the common law of Illinois, dilution under the Illinois Anti-Dilution Law and the common law
of Illinois, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices
under the Illinois Deceptive Trade Practices Act, seeking injunctive relief. Final Judgment Upon Consent.
AMERICAN NATIONAL RED CROSS v. HELP AT HOME, INC. (97 CV 8166 - U.S. District Court, Northern District of Illinois)(service
mark infringement and statutory violation – Greek Red Cross design). Represented Defendant in an action alleging
service mark infringement. Obtained confidential settlement and dismissal of lawsuit with prejudice.
ANTENNAS AMERICA, INC., JASCO PRODUCTS CO., INC., and MITO CORPORATION v. TERK TECHNOLOGIES CORPORATION, NEIL TERK,
TOM JENSEN & ASSOCIATES, TOM JENSEN, and ROBERT A. HODGE, JR. (97 CV 5597 - U.S. District Court, Northern District of
Illinois)(false advertising, tortious interference and breach of contract). Represented Plaintiffs in an action against
for false and/or misleading representations in violation of § 43(a) of the Lanham Act, consumer fraud under the
Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices
Act, and tortious interference with prospective economic advantage, unfair competition, breach of contract and trade disparagement
under Illinois common law. Obtained confidential settlement.
NOVARTIS FINANCE CORPORATION,
NOVARTIS PHARMACEUTICALS CORPORATION and CIBAVISION CORPORATION v. CENTRAL ILLINOIS BENEFITS ADMINISTRATORS, INC. (97 CV 2644
- U.S. District Court, Northern District of Illinois)(service mark infringement and dilution – CIEBA mark). Represented Defendant
in an action alleging trademark infringement, false designation of origin, false description and misrepresentation in commerce,
and dilution of trademarks, all arising under the trademark laws of the United States, dilution of trade names and trademarks,
arising under Illinois law, deceptive trade practices arising under Illinois law and related claims arising under the common
law of unfair competition. Obtained confidential settlement and dismissal of lawsuit with prejudice.
GAITHER TOOL COMPANY v. TIRE SERVICE EQUIPMENT MFG., INC. and WES SPRUNK (96 CV 8094 - U.S. District Court, Northern
District of Illinois)(declaratory relief – non-infringement of patent, false advertising and tortious interference).
Represented Gaither Tool Company in an action for declaratory relief and false and/or misleading representations in violation
of § 43(a) of the Lanham Act, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act,
deceptive trade practices under the Illinois Deceptive Trade Practices Act, and tortious interference with prospective economic
advantage, unfair competition and trade disparagement under Illinois common law. Obtained confidential settlement.
JANMARK, INC. v. JAMES T. REIDY and DREAMKEEPER, INC. (96 C 7206 - U.S. District Court, Northern
District of Illinois)(declaratory relief - copyright infringement and trademark infringement and tortious interference). Represented
Plaintiff in an action for declaratory relief of non-infringement of copyrights and trade dress and for tortious interference
with prospective economic advantage. Obtained reversal of dismissal for lack of personal jurisdiction on appeal to Seventh
Circuit and confidential settlement.
S.T.R. INDUSTRIES, INC. v. PALMER INDUSTRIES,
INC., PALMER AMERICA, INC. and PETER CHUANG (96 CV 4251 - U.S. District Court, Northern District of Illinois)(copyright infringement).
Represented Plaintiff in an action against for copyright infringement and illegal importation under the laws of
the United States, consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices
under the Illinois Deceptive Trade Practices Act, common law unfair competition under Illinois law, and an accounting.
Obtained confidential settlement.
ITALIAN EXPRESS FRANCHISE CORPORATION v. JULIUS GIANAKOS d/b/a
DAIRY EMPORIUM (96-1436 - U.S. District Court, Northern District of Illinois)(service mark and trade dress infringement).
Represented Defendant in an action seeking an injunction pursuant to violation of the federal laws on service mark infringement
and unfair competition, the Illinois common law of service mark infringement and unfair competition, the Illinois Deceptive
Trade Practices Act, and the Illinois Consumer Fraud and Deceptive Business Practices Act. Obtained confidential settlement
and dismissal of lawsuit with prejudice.
ICANN/UDRP
DOMAIN NAME ARBITRATION PROCEEDINGS
DAVID LISSNER v. MICHAEL SNELL, NAF
Proceeding No. FA1103001380965. Representing Complainant in an arbitration proceeding initiated in the National
Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy (UDRP) regarding a registered domain name.
Obtained Order transferring domain name to Complainant.
J.C. WHITNEY & COMPANY v. DOMAINS
BY PROXY, NAF Proceeding No. FA061002001308149. Represented Complainant in an arbitration proceeding initiated
in the National Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy (UDRP) regarding a registered
domain name. Obtained Order transferring domain name to Complainant.
PLANET ENTERTAINMENT,
INC. v. ALAN KNIGHT, NAF Proceeding No. FA06110000855505. Represented Complainant in an arbitration proceeding
initiated in the National Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy (UDRP) regarding
a registered domain name. Obtained Order transferring domain name to Complainant.
WEBMD CORPORATION
v. FEROTECH SOLUTION SERVICES - NAF Proceeding No. FA0508000549226. Represented Respondent in an arbitration proceeding
initiated in the National Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy (UDRP) regarding
a registered domain name. Transfer of domain name to Respondent ordered.
BRECHBUHLER SCALES, INC.
v. DYNAMIC SCALES, et al. NAF - Proceeding No. FA0306000164564. Represented Respondent in NAF arbitration under the
UDRP regarding eight registered domain names. Settled.
AMF BOWLING WORLDWIDE, INC. v. DAVID FREWING
& U.S. BOWLING CORP. - NAF Proceeding No. FA0304000155464. Represented Respondent in NAF arbitration under the UDRP regarding
seven registered domain names. Settled.
PATENT INTER PARTIES
REEXAMINATION PROCEEDINGS
Representing Patent Owner in Inter Parties Reexamination
Proceeding Control No. 95/000,129 brought by Motorola Inc. regarding United States Patent No. 6,377,179. Pending.
TRADEMARK TRIAL AND APPEAL BOARD PROCEEDINGS
MOTION RESEARCH, LLC. v. ISLANDS ON-LINE LTD. - TTAB Opposition No. 91192165 (EGIRL application).
Represented Opposer. Judgment entered against applicant, sustaining the notice of opposition and refusing registration.
DAVID LISSNER v. MATTHEW G. BAIRD - TTAB Cancellation No. 92051573 (THE FOOD DUDE registration). Represented
Petitioner. Judgment entered against registrant, granting the petititn for cancellation and cancelling
the registration.
PA TREND, INC. v. LISA FRANK, INC. - TTAB Cancellation No. 92048535
(ANGEL PUPPY registration). Represented Registrant. Dismissed without prejudice upon withdrawal of the opposition by opposer.
NO FEAR, INC. v. LISA FRANK, INC. - TTAB Opposition No. 91174854 (FEARLESS 5 application). Represented Applicant.
Application withdrawn.
LOS ANGELES DODGERS, L.L.C. v. LISA FRANK, INC. - TTAB Opposition
No. 91167986 (BROOKLYN application). Represented Applicant. Dismissed without prejudice upon withdrawal of the opposition
by opposer, with Applicant's consent.
OMS INVESTMENTS, INC. v. PELLETIZED STRAW, LLC. -
TTAB Opposition No. 91178190 (MAX MATRIX application). Represented Applicant. Application withdrawn.
RED
HOT GROOVE, L.L.C.. v. FLORENTINE GARDENS CORPORATE DINING, LLC. - TTAB Opposition No. 91173188 (IN THYME CAFE and design
application). Represented Opposer. Judgment entered against applicant, sustaining the notice of opposition and refusing
registration.
KELLOGG NORTH AMERICA COMPANY. v. JUST OFF MELROSE, INC. - TTAB Opposition No. 91165195
(JUST CROUTONS application). Represented Applicant. Dismissed without prejudice upon withdrawal of the opposition by opposer,
with Applicant's consent.
PRL USA HOLDINGS, INC. v. CARLBERG GRAFIX, INC.- TTAB Opposition No.
91165055 (RUGBY GIRL application). Representing Applicant. Dismissed with prejudice.
STRICK
ENTERPRISES, INC. v. AUTOZONE PARTS INC. - TTAB Opposition No. 91161248 (OILZONE). Representing Opposer. Stayed pending outcome
of suit in federal court.
STRICK ENTERPRISES, INC. v. SPEEDBAR, INC (AutoZone) - TTAB Cancellation
No. 92043103 (ZONE). Representing Petitioner. Stayed pending outcome of suit in federal court.
BUDDHA
BAR, INC. v. GEORGE RESTAURANT (S.A.) CORPORATION - TTAB Opposition No. 91124298 (LITTLE BUDDHA CAFÉ). Represented
Opposer. Dismissed with prejudice.
BUDDHA BAR, INC. v. GEORGE RESTAURANT (S.A.) CORPORATION -
TTAB Cancellation No. 92040265 (BUDDHA BAR). Represented Petitioner. Dismissed with prejudice.
CONSECO,
INC. and CONSECO SERVICES, LLC v. CENTRAL ILLINOIS BENEFITS ADMINISTRATORS, INC. - TTAB Opposition No. 92032121 (CONSOCIATE
CARE application). Represented Registrant. Dismissed with prejudice.
CONSECO SERVICES, LLC v.
CENTRAL ILLINOIS BENEFITS ADMINISTRATORS, INC. - TTAB Opposition No. 91119691 (CONSOCIA+E GROUP and design application). Represented
Applicant. Dismissed with prejudice.
INTEL CORPORATION v. INTELIA, INC. - TTAB Opposition No.
91114785 (INTELIA and INTELIA (Stylized) applications). Represented Applicant. Sustained per settlement.
AMERICAN NATIONAL RED CROSS v. HELP AT HOME, INC. - TTAB Opposition No. 91112318 (HELP AT HOME and design application).
Represented Applicant. Dismissed with prejudice upon settlement.
RENT A CAR CORPORATION v. BUDGET
SELF STORAGE - TTAB Opposition No. 91111773 (BUDGET SELF STORAGE application). Represented Applicant. Dismissed without prejudice
upon withdrawal of the opposition by opposer, with Applicant's consent.
THE SUMMIT PUBLISHING
GROUP, INC. v. TRAVEL PUBLISHING GROUP, INC. - TTAB Cancellation No. 92028500 (THE SUMMIT GROUP registration). Represented
Petitioner. Registration cancelled.
JEWISH FAMILY AND CHILDREN'S SERVICES v. HELP AT HOME, INC.-
TTAB Opposition No. 91111735 (HELP AT HOME and design application). Represented Applicant. Dismissed with prejudice upon settlement.
HERMAN MILLER, INC. v. ERGOBILT, INC. TTAB Opposition No. 91107200 (ERGOBILT application). Represented Applicant.
Dismissed without prejudice upon settlement.
SUMMIT SEED, INC. v. CAUDILL SEED COMPANY, INC. -
TTAB Cancellation No. 92026593 (3D registration). Represented Petitioner. Dismissed with prejudice upon settlement.