CONFIDENTIAL FREE INITIAL PHONE CONSULTATIONS

EXPERIENCED IP TRIAL LAWYER

FEDERAL AND STATE COURTS

U.S. PATENT AND TRADEMARK OFFICE

ICANN/UDRP DOMAIN NAME ARBITRATIONS

Unparalleled success in commercial, intellectual property, and infringement litigation, including being lead counsel in over one hundred lawsuits in Chicago, Michigan, Arizona, and worldwide for and against various Fortune 100 companies. Although the majority of disputes are settled prior to suit being filed, I aggressively protect and defend 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 me, including cases involving some of the world's most valuable and well-known patents, trademarks, service marks and websites.

FEDERAL AND STATE COURTS

FAMA TECHNOLOGY, INC. v. NASA MACHINE TOOLS, INC. (18-CV-688 - U.S. District Court, Northern District of Illinois)(copyright ownership). Local counsel for Defendant NASA MACHINE TOOLS, INC., in a virtually mirror-image action of an earlier-filed case in New Jersey State Court alleging the following causes of action: (i) breach of contract; (ii) tortious interference with an existing contract; (iii) tortious interference with a prospective economic relationship; (iv) unfair trade practices; (v) misappropriation of confidential and proprietary information; (vi) misappropriation of trade secrets; (vii) fraudulent misrepresentation; (viii) unjust enrichment; and (ix) punitive damages. Motion to Stay granted.

DAVID SEIDE and DEFINED SPACE, INC. v. LEVEL-(1) GLOBAL SOLUTIONS, LLC, STEADFAST NETWORKS LLC, ORBIT MEDIA STUDIOS, INC. and NOZONE, INC. (16-CV-2975 - U.S. District Court, Northern District of Illinois)(copyright infringement and breach of contract). Representing Defendant ORBIT MEDIA STUDIOS, INC. in an action alleging: copyright infringement under 17 U.S.C. 501, et seq., violation ofthe Digital Millenium Copyright Act, and breach of contract, seeking injunctive relief, damages, attorneys' fees, interest and costs. Obtained confidential settlement and dismissal of lawsuit with prejudice.

LIQUITECH, INC. v. ENRICH PRODUCTS, INC. (15-CV-10537 - U.S. District Court, Northern District of Illinois)(trademark infringement and unfair competition - Google AdWords - Dynamic Keyword Insertion). Representing Defendant ENRICH PRODUCTS, INC in an action alleging: infringement of federally registered trademark in violation of 15 U.S.C. 1114(1); unfair competition arising out of the use of false designations of origin and false and misleading descriptions and representations in violation of 15 U.S.C. 1125(a); for statutory deceptive trade practices in violation of 815 ILCS 510/1 et seq.; for statutory consumer fraud and decpetive business practices in violation of 815 ILCS 505/1; and for unfair competition in violaiton of the common law of the State of Illinois, seeking injunctive relief, damages, attorneys' fees, interest and costs. Also representing ENRICH PRODUCTS, INC. for counter-claims alleging false and misleading descriptions and representations in violation of 15 U.S.C. 1125(a); for statutory deceptive trade practices in violation of 815 ILCS 510/1 et seq.; for statutory consumer fraud and decpetive business practices in violation of 815 ILCS 505/1; and for unfair competition in violaiton of the common law of the State of Illinois, seeking injunctive relief, damages, attorneys' fees, interest and costs. Obtained confidential settlement and dismissal of lawsuit with prejudice.

RAM INTERNATIONAL I, L.L.C. and SCHAUMBURG 95, L.L.C. v. THE STADIUM LLC and SALI ZECIRI (15-CV-10434 - U.S. District Court, Northern District of Illinois)(trademark/service mark infringement and unfair competition - restaurant). Representing Defendants SCHAUMBURG 95, L.L.C.v. THE STADIUM LLC in an action alleging infringement of Illinois state and federally registered trademarks and and unfair competition under § 43(a)&(c) of the Lanham Act, common law trademark/service mark infringement, and deceptive trade practices under the Illinois Consumer Fraud and Deceptive Trade Practices Act and Uniform Deceptive Trade Practices Act, seeking injunctive relief, damages, attorneys' fees, interest, and costs. Obtained confidential settlement.

AMERICAN BEVERAGE CORPORATION v. FLORIDA FRUIT JUICES, INC. (15 C 1018 - U.S. District Court, Western District of Pennsylvania)(trade dress infringement, trade dress dilution and unfair competition - beverage products and packaging). Representing Defendant FLORIDA FRUIT JUICES, INC. in an action alleging infringement of federally registered trade dress, trade dress infringement, dilution, false advertising and and unfair competition under § 43(a)&(c) of the Lanham Act, state and common law trade dress dilution, unfair competition and passing off, seeking an accounting, damages, profits, attorneys' fees, restitution, punitive damages, interest, and costs. Obtained confidential settlement and dismissal of lawsuit with prejudice.

PARIS PRESENTS INCORPORATED v. RUCCI, INC. and TJX COMPANIES, INC. d/b/a TJ MAXX (14 C 1962 - U.S. District Court, Northern District of Illinois)(copyright infringement, trade dress infringement, trade dress dilution and unfair competition - cosmetic brush line). Representing Defendants RUCCI, INC. and TJX COMPANIES, INC. d/b/a TJ MAXX in an action alleging infringement of federally regsitered trade dress, trade dress infirngment, dilution, false advertising and and unfair competition under § 43(a) of the Lanham Act, state and common law trade dress dilution and passing off under the Illinois Consumer Fraud and Deceptive Trade Practices Act and Uniform Deceptive Trade Practices Act, and copyright infringement, seeking an accounting, damages, profits, attorneys' fees, impoundment, and injunctive relief. Obtained confidential settlement.

AIRCRAFT GEAR CORPORATION v. TRAIL GEAR, INC. (14 C 50069 - U.S. District Court, Northern District of Illinois)(declaratory judgment, trademark infringement, false advertising and unfair competition - LONGFIELD brand). Representing Defendant in an action seeking declaratory judgment and alleging trademark infringement, false advertising and and unfair competition under § 43(a) of the Lanham Act, and state and common law unfair competition and deceptive trade practices under the Illinois Consumer Fraud and Deceptive Trade Practices Act and Uniform Deceptive Trade Practices Act, seeking declaratory relief, an accounting, damages, profits, attorneys' fees, and injunctive relief. Obtained confidential settlement..

TIRE SERVICE EQUIPMENT MFG. CO. v. GAITHER TOOL CO. (13 CV 2996 - U.S. District Court, District of Minnesota)(alleged infringement of patent). Representing Defendant/Counter-Plaintiff in an action alleging infringement of U.S. utility patent and counter-claims for declaratory judgments of invalidity and noninfringement and for false patent marking. Obtained settlement.

COACH, INC. and COACH SERVICES, INC. v. J & H TOP SPORTSWEAR, INC., JUNHO YANG, and Unknown Defendants 1-10 (JOHN DOES) (13-cv-736 - U.S. Dist. Court, Western District of Michigan)(Coach trademarks, trade dress and copyrights). Representing Defendants in an action alleging counterfeiting, trademark infringement, trade dress infringement, trademark dilution, false designation of origin and false advertising under the Lanham Act (15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c)); copyright infringement under the United States Copyright Act (17 U.S.C. § 501 et seq.); unfair business practices under the Michigan Consumer Protection Act (Mich. Comp. Laws § 445.903); and unfair competition and unjust enrichment under the common law of Michigan. Defense assumed by insurance carrier and reassigned to panel counsel.

SLEP-TONE ENTERTAINMENT CORPORATION v. KARAOKE YOU, INC. and DENNIS BURDA (13 C 4355 - U.S. Dist. Court, Northern District of Illinois)(trademark infringement - SOUND CHOICE trademark and trade dress). Representing Defendants in an action for alleged federal trademark and trade dress infringement and unfair competition involving claims arising under the Trademark Act of the United States commonly known as the Lanham Act 15 U.S.C. §§ 1051 et seq. Obtained confidential settlement and dismissal of lawsuit with prejudice.

GOODEJUICE LLC, d/b/a Goodejuice and goodejuice.com v. TEAM SAM, LLC, d/b/a Wicked Good eJuice and wickedgoodejuice.com, and SAMUEL J. PANICE III (13 C 4948 - U.S. District Court, Northern District of Illinois)(service mark and domain name infringement, cybersquatting, false advertising, unfair competition, and fraud/identity fraud/identity theft/credit card hijacking - GOODEJUICE and WICKERGOODEJUICE). Representing Plaintiff in an action for infringement of federally registered service mark under the Lanham Act, unfair competition under § 43(a) of the Lanham Act, service mark infringement and unfair competition under the common law of Illinois, violation of the Anticybersquatting Consumer Protection Act (cybersquatting), consumer fraud under the Illinois Consumer Fraud and Deceptive Trade Practices Act, deceptive trade practices under the Illinois Deceptive Trade Practices Act, and fraud/identity fraud/identity theft/credit card hijacking, seeking an accounting, damages attorneys' fees, transfer of a domain name, and injunctive relief. Resolved and dismissed and domain name transferred to Plaintiff.

MIDLAND DISTRIBUTION GROUP, INC. v. CEDAR GARDEN FOOD IMPORT & EXPORT, INC. (12 CV 9742 - U.S. District Court, Northern District of Illinois)(trademark infringement ? BALANDA (Design mark)). Represented Defendant in an action for alleged federal trademark infringement, unfair competition involving claims arising under the Trademark Act of the United States commonly known as the Lanham Act 15 U.S.C. §§ 1051 et seq.; and for common law trademark infringement, injury to business reputation, deceptive trade practices, deceptive business practices and unfair competition under the laws of the State of Illinois, involving claims arising under the Deceptive Trade Practices Act 815 505/2 et seq., and 510/2 et. Seq., and the common law. Defense assumed by insurance carrier and reassigned to panel counsel.

ALLIANCE LABS, L.L.C. v. STRATUS PHARMACEUTICALS, INC. and SONAR PRODUCTS, INC. (12 CV 927 - U.S. District Court, District of Arizona)(false advertising and unfair competition - Enemeez, Enemeez Plus and Docusol - Vacuant and Vacuant Plus). Representing Defendant Stratus Pharmaceuticals, Inc. in an action alleging false advertising and unfair competition under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act); trademark infringement under Title 15 U.S.C. § 1114 (§ 32 of the Lanham Act); trademark infringement and unfair competition under the common law of the State of Arizona; copyright infringement; and unjust enrichment. Also representing Stratus Pharmaceuticals, Inc. for counter-claims alleging false advertising and unfair competition under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act); trademark infringement under Title 15 U.S.C. § 1114 (§ 32 of the Lanham Act); and unfair competition and unjust enrichment under the common law of the State of Arizona. Obtained confidential settlement and dismissal of lawsuit with prejudice.

CINCINNATI INSURANCE COMPANY v. GOLDEN HEALTH PRODUCTS, INC. and MARY FAITH HUNT (13 CV 3019 - U.S. District Court, Northern District of Illinois)(insurance coverage - advertising injury). Represented insureds in action regarding insurance coverage for NATURAL WELLNESS CENTERS OF AMERICA, INC. v. GOLDEN HEALTH PRODUCTS, INC. (12 CV 5586 - U.S. District Court, Northern District of California)(see below). Obtained settlement and dismissal of lawsuit with prejudice.

NATURAL WELLNESS CENTERS OF AMERICA, INC. v. GOLDEN HEALTH PRODUCTS, INC. (12 CV 5586 - U.S. District Court, Northern District of California)(trademark infringment, unfair competition and dilution - PRO-BIOTICS PLUS). Representing Defendants in an action alleging infringement of a federally registered trademark under 15 U.S.C. §1114, et seq., violations of California state law of unfair competition under Cal. Bus. & Prof Code §17200 et seq., and dilution of trademarks under 15 U.S.C. § 1125(a), seeking an accounting; damages; costs; attorneys? fees; and injunctive relief. Obtained 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 in 2001. Motion for an Order to Show Cause Why Defendant, Summit Tool Company, Should Not be Held in Contempt, and to Enforce the Consent Judgment filed in 2012. 2012 Motion for Contempt granted and client awarded attorneys' fees and costs, plus an accounting of defendant's profits generated from violation of the Consent Judgment.

GAITHER TOOL COMPANY v. SUMMIT TOOL COMPANY, d/b/a KEN TOOL (12 CV 5764 - U.S. District Court, Northern District of Illinois)(Rubberhead BEADKEEPER tire changing tool trade dress). Representing Plaintiff in an action for false advertising and unfair competition under the laws of the United States, as provided for by Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act); 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.; deceptive trade practices under the Illinois Deceptive Trade Practices Act, 815 ILCS § 510/1, et seq.; seeking an accounting; damages; costs; profits; attorneys? fees; and injunctive relief. Obtained confidential settlement.

ALLIANCE LABS, L.L.C. v. STRATUS PHARMACEUTICALS, INC. and SONAR PRODUCTS, INC. (12 CV 927 - U.S. District Court, District of Arizona)(false advertising and unfair competition - Enemeez, Enemeez Plus and Docusol - Vacuant and Vacuant Plus). Representing Defendant Sonar Products, Inc. in an action alleging false advertising and unfair competition under Title 15 U.S.C. § 1125(a)(§ 43(a) of the Lanham Act); trademark infringement under Title 15 U.S.C. § 1114 (§ 32 of the Lanham Act); trademark infringement and unfair competition under the common law of the State of Arizona; copyright infringement; and unjust enrichment. Obtained early dismissal based on Motion to Dismiss.

DEPARTMENT 28, INC. v. SAZERAC COMPANY, INC. (12 CV 1828 - U.S. District Court, Northern District of Illinois)(alleged trademark infringement -TRAVELLER vodka). Representing Plaintiff in an action seeking declaratory relief relating to allegations of trademark infringement. Obtained confidential settlement.

ADDICTION & DETOXIFICATION INSTITUTE, LLC, v. RAPID DRUG DETOX CENTER (11 CV 7992 - U.S. District Court, Northern District of Illinois)(patent infringement)(detoxification process)(local counsel). Represented Defendant in an action alleging patent infringement. Also represented Defendant in counterclaims seeking, inter alia, declaratory judgment of invalidity and non-infringement of the patents-in-suit. Obtained transfer to the Eastern District of Michigan.

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. Obtained confidential settlement and entry of Consent Decree and Order.

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). Represented 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. Obtained settlement.

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). Settled.

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. Settled.

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. Motion for an Order to Show Cause Why Defendant, Summit Tool Company, Should Not be Held in Contempt, and to Enforce the Consent Judgment filed in 2012. Motion for Contempt granted and client awarded attorneys' fees and costs, plus an accounting of defendant's profits generated from violation of the Consent Judgment.

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 Third Party Requester in Ex Parte Reexamination Proceeding No. 90013203 regarding United States Patent No. 6,179,033. Request granted. All Reexamination Claims rejected. Appeal pending.

Represented Patent Owner in Inter Parties Reexamination Proceeding Control No. 95/000,129 brought by Motorola Inc. regarding United States Patent No. 6,377,179. Reexamination Certificate Issued.

TRADEMARK TRIAL AND APPEAL BOARD PROCEEDINGS

MUHAMMAD SALMAN - TTAB Cancellation (COUPON REFUND registration). Representing Petitioner. Supsended pending disposition of civil action.

SCREENSAFE, INC. v. EKEHOLM AND ASSOCIATES, LLC - TTAB Cancellation (SCREENSAFE registration). Representing Petitioner. Settled.

BOUNCE HOLDINGS, LLC v. JARED LYONS - TTAB Opposition No. 91207157 (BOUNCE MUSIC FESTIVAL). Representing Applicant. Dismissed with prejudice upon Motion.

SAZERAC COMPANY, INC. v. DEPARTMENT28, INC. - TTAB Opposition No. 91203988 (TRAVELLER28 VODKA application). Represented Applicant. Withdrawal of Application.

SAZERAC COMPANY, INC. v. DEPARTMENT28, INC. - TTAB Opposition No. 91203879 (TRAVELLER BLACK EDITION VODKA application). Represented Applicant. Withdrawal of Application.

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 petition 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.

Protection of Trademarks, Service Marks, Tradenames and Domain Names

Trademarks, service marks, tradenames and domain names need not be registered to be protectable against infringement. However, registration offers important benefits and advantages.

Benefits And Advantages Of Prompt Federal Registration

Federal registration creates constructive notice and constructive use of the mark nationwide. As a result, it acts as a deterrent to subsequent use of the mark by others as it places them on notice that exclusive rights to use are being claimed by the registered owner. Federal registration also grants the owner the right to display an "®" with the mark. Significantly, federal registration prior to infringement allows the owner to recover statutory damages, even if actual damages cannot be proven, and attorneys' fees in certain cases. In addition, certain presumptions arise in favor of the trademark owner in the event of litigation to enforce or protect the mark if the mark was previously registered. In particular, the registration is prima facie evidence of the validity of the registration, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the mark in commerce on the goods or services specified therein. Additionally, a federal registration may become incontestable after a period of time. Significantly, registration of a mark with the U.S. Trademark Office establishes the registrant's rights in the mark in a domain name dispute under the Uniform Dispute Resolution Policy. Federal registration also entitles a registrant to request Customs to stop the importation of infringing articles into the U.S.

Definition of a Trademark or Service Mark

A trademark is a word, name, symbol or device used to identify and distinguish the goods of one entity from the goods of others, and to indicate the source of the goods. Likewise, a service mark is a word, name, symbol or device used to identify and distinguish the services of one entity from the services of others, and to indicate the source of the services. Trademarks and service marks may be referred to simply as marks.

The Function of Trademarks and the Objectives of Trademark Law

Trademarks identify one seller's goods or services and distinguish them from the goods or services sold by others. Trademarks make it possible for consumers to choose between various goods and services offered for sale.

Trademark laws exist for three reasons: (1) to prevent confusion among consumers as to the source of goods or services; (2) to permit the trademark owner to control the products' or services' reputation; and (3) to protect the good will that the trademark owner has built up in his products or services.

Trademark Rights

If a business owns a trademark, then it has the exclusive right to use the mark. No other person can use the same or similar trademark in any manner that would be likely to cause confusion, mistake, or deception among consumers.

Trademark Rights Extend to Related Goods and Services

The law gives a trademark owner protection against the use of its mark not only on the same goods or services on which it uses its trademark, but also on any other product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner. That is, the parties do not have to be direct competitors in order to find that concurrent use of marks is likely to cause confusion.

Trademark Infringement Generally

"Trademark infringement" occurs when anyone, without the consent of the owner, uses a trademark or service mark in connection with the sale, or the offering for sale, of goods or services in a manner that is likely to cause confusion, mistake or deception as to (1) the affiliation, connection, or association of such person with another person, or as to (2) the origin, sponsorship, or approval of his goods or services or commercial activities by another person.

Federal Trademark Registration

A mark may be registered with the United States Patent and Trademark Office. A federal registration entitles a registrant to three presumptions: 1) the registration is presumed to be valid; 2) the registrant is presumed to be the owner of the mark; and 3) the registrant is presumed to have the exclusive right to use the mark in commerce in connection with the services specified in the certificate. Once a valid registration is obtained, no person can acquire any additional rights superior to those of the registrant.

Constructive Notice

After a federal trademark registration is granted, the registration becomes part of the trademark register of the United States, and the United States Patent and Trademark Office issues a Certificate of Registration to the trademark owner. Copies of the certificates of registration are available to anyone.

By law, registration provides what is called "constructive notice" of the registrant's claim of ownership of the mark. That is, even though someone else may not have actual notice of the existence of a registered mark, he is conclusively presumed to have knowledge of the mark and knowledge of the fact that it is registered and appears on the trademark register.

A person who infringes the registered mark of another cannot escape liability by showing that he was unaware of the registration as a result of his failure to conduct a search of the records at the Patent and Trademark Office.

Infringement

To succeed on a claim of trademark infringement, a Plaintiff must prove by a preponderance of the evidence that it is the owner of a mark, that the Defendant has used a similar mark without the Plaintiff's consent in connection with the sale of its good or services, and that the Defendant's use of the similar mark is likely to cause confusion, mistake, or deception among ordinary consumers of the relevant products or services:
1. as to the affiliation, connection, or association with the relevant products or services;
2. as to the origin, sponsorship, or approval of Defendant's goods, services, or commercial activities by the Plaintiff.

Likelihood of Confusion

In determining infringement, the critical issue is "likelihood of confusion." To assess whether a likelihood of confusion exists, one should consider the following factors:
1. Similarity of the marks
2. Similarity of the services
3. Area and manner of concurrent use
4. Degree of care likely to be exercised by consumers of the relevant products or services
5. Strength of Plaintiff's mark
6. Actual confusion
7. Intent of Defendant to "palm off services as those of another"

Not all of these factors must be present to find a likelihood of confusion. Furthermore, no one factor by itself is conclusive. Different factors will weigh more heavily than others, depending the particular facts and circumstances of this case.

Similarity of the Marks

In assessing the first factor, similarity of the marks, one must compare the Defendantl's use of the allegedly infringing mark to Plaintiff's mark. If one word or feature of the Defendant's mark is the prominent part of the mark, it may be given greater weight than the surrounding elements. One must compare the parties marks in light of what happens in the marketplace. When the public does not encounter the two marks together, it is inappropriate to focus on minor stylistic differences to determine if confusion if likely.
A side-by-side comparison of the marks is not the proper test. One must determine the consumer's state of mind when faced with the marks individually.

Noncompetition Does Not Avoid Infringement

The second factor is similarity of the Plaintiff's and the Defendant's services. A person can still infringe a trademark even if he uses the mark to sell goods or services that are different from those of the owner of the mark. That is, the infringing party does not have to be in direct competition with the owner of the mark. Trademark infringement exists if a party uses a mark to sell or advertise a product or service which, in the mind of the ordinary purchaser, is sufficiently related to or associated with the services or products of the trademark owner, so that confusion as to the source, sponsorship, or affiliation of that service or product is likely to result. The mark owner needs only to show that its products or services are similar to the extent that they are the single source.

Degree of Care Exercised by Consumers

The fourth factor, the degree of care likely to be exercised by consumers should be assessed not only at the time that the consumer is purchasing the product or service, but also at a time when the company is rendering its services, for example, when the consumer is contacting the company to make a claim or when the consumer is paying a premium.

Third-Party Uses Effect on Strength of the Mark

With respect to the fifth factor, strength of the Plaintiff's mark, the Plaintiff's mark may be weakened by uses of the mark by third parties. In this factor, keep in mind that, even if a third party does use the Plaintiff's mark without authority, this infringement by a third party is not a defense to trademark infringement. That is, the Defendant is not allowed to infringe the Plaintiff's mark just because someone else may be doing the same thing.

Actual Confusion Is Not Required

The sixth factor that you are to consider is actual confusion. A Plaintiff does not have to prove that instances of actual confusion have occurred in order to prevail on its claim of trademark infringement. Actual confusion is just one factor in this inquiry; the likelihood of confusion is issue that you must resolve.

Actual confusion is, however, strong proof that a likelihood of confusion exists. In addition, while very little proof of actual confusion would be necessary to prove the likelihood of confusion, an almost overwhelming amount of proof of no likelihood of confusion would be necessary to refute proof of actual confusion.

Intent to Confuse

The seventh and final likelihood of confusion factor to consider is the Defendant's intent to "palm off services as those of another." Said another way, one should determine whether the Defendant intended to confuse customers.

Likelihood of Confusion Survey

Another means by which a Plaintiff may attempt to demonstrate a likelihood of confusion is through the introduction of a survey. In considering a survey, one must assess its reliability and credibility, and ascribe its weight accordingly.
In assessing the weight to give the survey, one should consider whether:
1. the proper universe was selected and examined;
2. a representative sample was drawn from that universe;
3. a fair and correct method of questioning was used;
4. the persons conducting the survey were recognized experts;
5. the data gathered was accurately reported;
6. the sample, the questionnaire and the interviewing were in accordance with generally accepted standards of objective procedure and statistics in the field of such surveys;
7. the sample and the interviews were conducted independently of the attorneys in the case; and
8. the interviewers were adequately trained in the field and had no knowledge of the litigation purposes for which the survey was to be used.

Even if the survey does not meet all of these criteria, one may still consider the results of the survey and give them whatever weight one determines is appropriate.

Defendant Has Duty to Avoid Confusion

The Defendant, as the second users of a mark, has a duty to select a name or trademark that would avoid confusion by the consuming public as to the source of its goods and services.

Defendant's Belief in His Right to Use Mark is Not a Defense

The fact that a Defendant believes that it has a right to use a mark has no relevance whatsoever to the questions of whether the Defendant has infringed a valid service mark and whether damages should be awarded to the Plaintiff.

Two Types of Monetary Relief

A judge or jury may award a Plaintiff two non-exclusive types of money damages: the Plaintiff's actual damages and the Defendant's profits.

Plaintiff's Actual Damages

The purpose of providing a prevailing Plaintiff with its damages is to make the plaintiff whole. That is, to put the Plaintiff in the same position it would have been in had it not been for the Defendant's wrongful conduct. Actual damages consists of lost sales or profits, a loss of good will, and other specific compensating damages proven to be necessary to make the Plaintiff whole.

Plaintiff's Lost Sales or Profits

A judge or jury may consider whether the Plaintiff has lost any sales or profits as a result of the Defendant's actions. The Plaintiff is not required to prove the amount of these damages with absolute certainty. A judge or jury may measure the amount of the lost sales or profits by evidence that they believe establishes a just and reasonable estimate of the amount of such lost sales or profits.

Plaintiff's Loss of Good Will

A judge or jury may also compensate the Plaintiff for the loss of its good will. The good will of a company is an intangible business value that reflects the basic human tendency to do business with a company that offers products and services of the type and quality that customers desire and expect. Service to customers and a willingness to stand behind representations and warranties concerning the quality of the products and services sold by the company are all factors in the good will of a business.
If a judge or jury finds that Plaintiff's good will has been damaged, they may assess such damages as they find to be just and reasonable in light of the evidence.

Cost of Corrective Advertising

To justify damages to pay for corrective advertising, Plaintiff must show two things: (1) that the confusion caused by Defendant's use of the mark injured Plaintiff, and (2) that repair of Plaintiff's old trademark, rather than adoption of a new one, is the least expensive way to proceed.

Entitlement to Actual Damages

In order for the Plaintiff to be entitled to its actual damages, it must establish the following requirements: (1) There was at least one instance of actual confusion; (2) the Plaintiff was actually damaged as a result of the Defendant's conduct; and (3) What the amount of damages are.

Certainty of Damages

While the burden of proving actual damages is on the Plaintiff, difficulty or uncertainty in measuring the precise amount of actual damages does not preclude recovery.

A judge or jury must find that there is some evidence from which they can reasonably ascertain the amount of damage suffered by the Plaintiff. A judge or jury must not award a specific dollar amount of damages based upon mere speculation or guesswork. However, the Plaintiff is not required to prove the amount of damage with mathematical precision. It is only required that the Plaintiff present such evidence as might be reasonably expected to be available under the circumstances. Accordingly, if a judge or jury is able to make a just and reasonable estimate of the damages from the evidence presented to them, they may find that the Plaintiff has suffered that amount of damages. If, on the other hand, a judge or jury finds that the Plaintiff has suffered an injury but that there is no evidence to establish a reasonable basis to ascertain the amount of those damages for that injury, they may return a verdict for the Plaintiff in some nominal amount such as one dollar.

Defendant's Profits

The second type of money damages that a judge or jury can award to Plaintiff is the Defendant's profits on the sales of its services using the mark. A judge or jury may award this type of monetary damages even if they do not think that the Plaintiff is entitled to its actual damages or that any person was actually confused.
In assessing the amount of Defendant's profits, Plaintiff is only required to prove the amount of Defendant's sales of its services using the mark. The burden of proof then shifts to the Defendant to prove proper costs and reductions from those sales. If a judge or jury decides to award the Defendant profits, they are to compute them by taking the Defendant's gross sales, as proved by the Plaintiff, and deducting those expenses that the Defendant has proved are fairly attributable to the Defendant's sale of its services using the mark.

Exceptional Case

Treble damages and attorneys' fees may be awarded by the court in exceptional cases.  An "exceptional case" is simply one that stands out from others with respect to the substantive strength of a party’s litigation position (considering both the governing law and facts of the case) or the unreasonable manner in which the case was litigated.

Trademark Bullies or Trademark Bullying
Our trademark lawyers have significant experience defending individuals and small businesses against so-called "trademark bullies" or "trademark bullying." As the United States Trademark Office has stated, a trademark bully "could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow." Trademark bullies are considered such a problem that legislation has been passed and the United States Trademark Office has begun studies to address trademark bullying and the litigation tactics of trademark bullies. Indeed, the Trademark and Technical Conforming Amendment of 2010 directs the Secretary of Commerce to "study and report" to Congress on "The extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner."

WHY SHOULD YOU CONSIDER USING THE SERVICES OF AN EXPERIENCED TRADEMARK ATTORNEY TO FILE TRADEMARK APPLICATIONS?

A recent study indicates that hiring an experienced trademark attorney statistically gives you a much greater chance of successfully registering your trademark or service mark.
In "Do Trademark Lawyers Matter?" University of North Carolina School of Law faculty members Jon McClanahan and Deborah Gerhardt studied applications filed from 1985 to 2010 to determine whether having a trademark attorney makes a difference in getting your application approved by the USPTO. The study concluded that yes, in fact, it does. "These data suggest that the presence of a lawyer made a meaningful difference," the researchers wrote.

The study found that inexperienced, non-attorney applicants' chances for registration would have increased by 50 percent if they had used an attorney to file their application.

CANNABIS TRADEMARKS, CANNABIDOIL TRADEMARKS, CBD TRADEMARKS, and HEMP TRADEMARKS

On May 2, 2019, the U.S. Patent and Trademark Office (“USPTO”) issued new guidance for examiners on how to handle cannabis and cannabis-related trademark applications. 

With passage of the 2018 Farm Bill, Hemp was removed from the Controlled Substances Act (“CSA”). Until then, the USPTO refused to register anything derived from Cannabis sativa L. Now, the USPTO is allowing trademarks for legalized products and services.

The guidance provides as follows:

Marijuana is still prohibited from U.S. trademark registration.  Trademark applications for hemp products must have an effective filing date of after December 20, 2018.  Trademark applications for CBD products must state that they are derived from hemp.  Trademark applications for CBD products must also state that the products contain less than .3% THC.

Trademark applications for CBD products will still be refused for anything governed by the Federal Food Drug and Cosmetic Act (“FDCA”), namely, foods, beverages, dietary supplements, and pet treats containing CBD, regardless of the CBD source, unless approved by the FDA – but the FDA has not issued new guidance.

Trademark applications for hemp cultivation/production, will require evidence of licensure according to a USDA-approved plan – but the USDA has not issued new guidance.

In short, the USPTO will likely allow hemp trademarks for textiles and topicals.  The USPTO will not allow trademarks for dietary supplements or edibles.  The USPTO will not allow trademarks on anything containing more than .3% THC or any cannabis product that was not derived from hemp.  It is unclear whether the USPTO will allow trademarks on hemp production yet.

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