Most Highly Regarded Firms: Illinois 2006 - Trademarks

Intellectual property is an increasingly important consideration in the global marketplace. Corporations are becoming more aware of the possibilities provided through effective brand management and the trademark lawyer plays an increasingly important role in helping to protect what often represents an organisation’s most valuable asset.

This chapter identifies 21 experts from 9 firms that are eminently qualified to assist companies in fully utilising brand equity as well as to aid with its protection and enforcement. These lawyers were all consistently recommended for their expertise in various areas of trademark law whether this be counterfeiting, grey market goods, false advertising, cybersquatting, domain name administrative proceedings or the prosecution and maintenance of marks. 

Looking at the findings it is evident that specialist IP firms dominate the Illinois market. One such example is Pattishall McAuliffe Newbury Hilliard & Geraldson LLP, which provides an outstanding seven lawyers for the final chapter. Since the firm’s beginnings in 1883 it has concentrated on the core areas of IP law and now has one of the largest trademark practices in the US. The firm has an exceptionally diverse client base drawn from industries such as pharmaceuticals, automobiles, toys, computers, clothing, beer and alcohol, and food and sporting goods, to name but a few. The “exceptional” Robert Sacoff served as chair of the American Bar Association section of intellectual property law from 2003 to 2004 and has one of the chapter’s most highly nominated practitioners. Sacoff was recommended to researchers as an “exceptional litigator” and is joined in the upper ranks of the research by partner Raymond Geraldson. Geraldson’s litigation skills were also consistently recommended and he was praised as “among the very best in the state”. He is a past president of the Intellectual Property Law Association of Chicago. David Hilliard, senior partner of the firm, continues Pattishall McAuliffe’s strong showing in the research. Hilliard is a past president of the Chicago Bar Association and has tried cases for client suchs as PepsiCo, Ford Motor Company and the American Medical Association. Mark Partridge is said to be “a prolific author” and on the litigation side he has successfully appealed a registration dispute regarding the name of an ATM network. Partridge is also known for his work relating to corporate transactions and serves as a World Intellectual Property Organisation (WIPO) panellist for ICANN (Internet Corporation for Assigned Names and Numbers) disputes. Jeremiah McAuliffe is an “experienced practitioner” and is joined in the following pages by Joseph Welch whose litigation and transactional expertise were praised. The inclusion of Janet Marvel emphasises the strength in depth on offer at the firm and its pre-eminent position for trademark work.

Brinks Hofer Gilson & Lione maintains a similarly elevated position within the market. Founded in the early twentieth century Brinks Hofer has built up a reputation as “one of the go to firms in the state” for complex IP advice. Jerome Gilson emerges from the research with more nominations than any other listed lawyer. As “one of the luminaries of the trademark bar” Gilson was compared in terms of experience and gravitas to the pre-eminent Thomas McCarthy at Morrison & Foerster LLP in San Francisco. Gilson’s excellent reputation led one respondent to remark: “he’s up there on Mt Olympus as one of the trademark Gods.” Gilson influential treatise, Trademark Protection and Practice, was consistently recommended to researchers as one of the reference sources for the profession. Gilson has also worked for some “very well respected and high-profile clients” such as Coca-Cola, McDonald’s and Wrigley. Partner Gary Ropski also attracted nothing but praise. An “outstanding litigator”, Ropski is also known for his patent work. Jack Berenzweig’s litigation expertise was also brought the attention of researchers and he is said to be “excellent for counterfeiting”. Jeffery Handelman concludes Brinks Hofer’s strong line up in the chapter and he currently chairs the firm’s trademark practice group. Since 2000 Handelman has worked for clients including FAO Schwarz, the National Association of Realtors, Kimberly-Clark Corporation and Quixtar Investments. 

With seven and four inclusions apiece, Patishall McAuliffe and Brinks Hofer clearly lead the research in terms of numbers. When taking into account individual recommendations however, it is clear that James Amend, Kirkland & Ellis LLP’s sole nominee, deserves serious consideration as one of the leaders in the state. Mr Amend is a member of the International Trademark Association’s (INTA) panel of neutrals and was consistently recommended to researchers as “an outstanding litigator and counsellor”, “a very fine lawyer”, “very strong” and “first rate”. Mark Feldman of DLA Piper LLP is similarly well regarded with one prominent respondent referring to him as “one of the leading trademark lawyers in Illinois”. Feldman was formerly senior trademark counsel at GD Searle & Co where he put in place the NutraSweet trademark’s worldwide branded ingredient strategy. In keeping with DLA Piper’s world-class reputation for franchise work, Feldman has advised franchised restaurants on the protection of distinctive interior and exterior designs. Partner Keith Medansky, who works on both contentious and transactional IP matters, joins him in the final chapter. Medansky is said to be “excellent for domain name disputes” and has represented manufacturers, retailers, franchisors and distributors. 

Schiff Hardin LLP also provides two lawyers for our list thanks to the strong showing of Adam Weiss and Thomas White. Weiss teaches a course at IIT/Chicago- Kent College of Law on advanced legal research and drafting in the IP area and was frequently recommended to researchers. He has a broad practice with a particular speciallity in offering M&A related IP advice. White currently directs the firm’s trademark prosecution practice. Welsh & Katz Ltd maintains an “excellent reputation” as a “fantastic firm” for trademark work – both Julie and Sidney Katz are nominated for inclusion in the final chapter. Sidney Katz’s practice is wide-ranging, encompassing trademarks, copyright and patents, his work in the computer gaming and programming industries was noted to researchers. Julie Katz is “extremely well known” and among other matters she has been involved in trademark litigation to protect the BEANIE BABIES® mark for Ty Inc. 

Susan Somers Neal co-founded the firm Neal & McDevitt in 1998 having previously headed up the trademark group at McDermott Will & Emery LLP. Neal, “a highly respected attorney”, has a client base drawn from the commercial, financial and industrial sectors. Neal is also a member of INTA’s distinguished panel of neutrals and an adjunct professor of advanced trademark law at DePaul University College of Law. Floyd Mandell was also endorsed and is currently national co-chair of the intellectual property practice at Katten Muchin Rosenman LLP. Mandell has served as lead trial counsel for clients such as Fruit of the Loom, Allstate Insurance, Planet Hollywood, Universal Music Group and the Chicago White Sox. The inclusion of Freeborn & Peters LLP’s Andrew Goldstein further emphasises the choice on offer to those seeking trademark expertise in the state.

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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.

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