Trademark Litigation

As one of your most valuable business assets, your brand sets your products and services apart from others. So, there is understandably great concern and aggravation over any unauthorized use of your name, logo or likeness. Add a digital, global economy to the mix, and the problem only worsens. While you are hard at work building and advancing your business, someone else in a distant corner of the globe (or right in your own backyard) may be using your intellectual property online, or worse yet, producing and selling product knockoffs. Such mischief can deliver a serious blow to the public’s perception of your business. Our team of trademark attorneys can help fight back.

Our firm aids in the protection of some of America’s most well-known brands by providing a full package of first-rate trademark counsel. Guided by its impressive roster of clients, experience and successes, Neal Gerber Eisenberg’s Intellectual Property practice group deploys a streamlined system of efficiencies and strategies to manage even the most expansive domestic and international trademark portfolios. We counsel on all stages of the trademark protection process, including:

  • Trademark Selection & Clearance
  • Trademark Registration
  • Enforcement & Litigation
  • Policing/Anti-Counterfeiting

As part of this process, we review preliminary and full-search reports and provide written clearance opinions. We also handle oppositions, cancellations and ICANN proceedings and litigation before the Trademark Trial and Appeal Board as well as in state and federal courts throughout the country. For these reasons, we have received significant national recognition. U.S. News-Best Lawyers’ “Best Law Firms” survey gives Neal Gerber Eisenberg a national Tier 1 ranking for Trademark Law. Chambers USA also recognizes the firm’s IP practice and its co-chairs as among the best IP counsel in Illinois.

Our highly skilled trademark practitioners have litigated a multitude of oppositions and cancellations before the TTAB, addressing issues such as likelihood of confusion, dilution, fraud, abandonment and genericism. With 38 attorneys, our IP practice is one of the fastest growing in Chicago and provides representation on all realms of IP law, including counseling, litigation and prosecution matters that involve patents, trademarks, service marks, domain names, trade dress, trade secrets, copyrights and advertising claims.

We police trademarks and coordinate anti-counterfeiting campaigns to curb counterfeit and grey market goods. In addition to prosecuting and defending lawsuits in courts nationwide, we conduct seminars on trademark registrations to the United States Customs Service at ports throughout the country to educate officials on how to spot counterfeit goods. Additionally, working with private investigators, we arrange covert purchases and sting operations.

Lettuce Entertain You Enterprises, Inc. v. Talk of the Town Restaurants, Inc. and Ron Woodsby (U.S. Dist. Court, M.D., Florida) 
Obtained a jury verdict for Lettuce Entertain You Enterprises finding that Talk of the Town Restaurants infringed Lettuce’s rights in the trademark WILDFIRE, and violated section 32 and 43(a) of the Lanham Act, when it rebranded its well-known Orlando-area CHARLEY’S STEAKHOUSE to CHARLEY’S WILDFIRE GRILLE. 

Adam’s Apple Distributing, L.P. and Philip Morris, Inc., v. Panaria, Inc. (U.S. Dist. Court, S.D.N.Y.) 
Represented plaintiffs in counterfeit seizure action focusing on original artwork owned by Adam’s Apple and the Marlboro cigarette box trade dress owned by Philip Morris. 

ALCAR, Inc. v. Corporate Performance Systems, Inc. (U.S. Dist. Court, N.D. Ill.) 
Prosecuted a trademark infringement action on behalf of a financial instruments software developer against a former distributor turned cybersquatter to reclaim an Internet domain name composed of Alcar’s registered trademark. 

AOL Inc. v., Inc. (U.S. Dist. Court, E.D. Va. and C.D. Cal.) 
Obtained a preliminary injunction on behalf of AOL based on significant confusion affecting one of the client’s leading brands. 

Republic Technologies v. Shenzhen Jieshibo Technology Co., Ltd. (Trademark Trial and Appeal Board) 
Won an opposition to the registration of the mark JSB on the grounds that it was likely to cause confusion with the mark JOB.