Andrew J. Avsec
Shareholder
Overview

"It takes a collaborative relationship with clients and a deep understanding of their business to take advantage of opportunities to expand and leverage their intellectual property portfolios, and deliver pragmatic, cost-effective solutions when those assets are challenged."

Andrew Avsec is co-chair of the firm’s Trademark Practice Group. Andrew partners with clients to provide practical legal advice tailored to achieving business goals. Andrew advises clients on complex brand protection, copyright, advertising, trade secret, and social media issues. 

As a litigator, Andrew represents clients in district court litigation, arbitration proceedings, Trademark Trial and Appeal Board oppositions and cancellation actions, advertising disputes in the National Advertising Division, and domain name disputes under the Uniform Dispute Resolution Policy. 

Andrew’s counseling practice includes prosecuting trademarks and copyrights, implementing global trademark protection and enforcement programs, analyzing trademark searches, advising on brand expansion projects, developing global trademark filing strategies, and conducting advertising clearance. Andrew also works with companies to conduct intellectual property audits and develop customized corporate IP policies. His practice also includes providing advice on intellectual property transfers, preparing licenses, and conducting due diligence. Andrew leverages his experiences from working with a diverse client base from some of the world’s top brands to start-up companies, across a wide variety of industries. 

Andrew is recognized in the 2014 edition of Legal 500 for his experience in handling trademark issues in the social media context. He regularly assists clients in combatting a wide-range of web-based infringement issues. 

Andrew volunteers at Legal Prep Charter Academies, Chicago’s first and only legal-themed charter high school. He is a member of the Young Professionals Board of LAF, an organization that provides free legal assistance for people living in poverty in the Chicago area.

Education
  • J.D.,
    The George Washington University Law School, 2007
  • A.B., Bioethics
    Princeton University, 2004
Bar Admissions
  • Illinois Supreme Court
  • U.S. Dist. Court, E.D. Michigan
  • U.S. Dist. Court, N.D. Illinois
Area of Focus
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, 2016-present
Associate, 2007-2015
Summer Associate, 2006

Forward Thinking
alert
June 21, 2016

The U.S. Supreme Court’s recent unanimous decision in Kirtsaeng v. John Wiley & Sons Inc. (Kirtsaeng II) gives a district court broad discretion when awarding attorney’s fees under the statutory fee-shifting provision of the Copyright Act, 17 U.S.C. § 505...

in the media
January 20, 2016
On January 20, 2016 Brinks new Shareholders were mentioned in CDLB. Click here to read more.
alert
August 04, 2015
On July 29, the Ninth Circuit held that a stock photo company qualifies as an exclusive licensee and therefore has standing to sue under the Copyright Act. Minden Pictures, Inc. v. John Wiley & Sons, Inc., No. 14-15267 (9th Cir. July 29, ...
alert
January 22, 2015
On Wednesday, January 21, 2015, the Supreme Court issued its decision in Hana Financial, Inc. v. Hana Bank , No. 13-1211, holding that trademark “tacking” is a question to be decided by a jury. “Tacking” is a principle in ...
in the media
October 24, 2014
On October 24, 2014, Chicago Daily Law Bulletin mentioned Scott J. Slavick and Andrew J. Avsec in their “In the News” section regarding their panel, “Expand Your Brand: Strategies for Navigating Brand Expansion Worldwide,” at ...
in the media
May 08, 2014
Jeffery A. Handelman and Andrew J. Avsec were mentioned as counsel for Little Caesars in the Law360 article, 'Little Caesars Claims Ex-Manager Stole Trade Secrets,' on May 8, 2014.
publication
January 03, 2013
Scott J. Slavick and Andrew J. Avsec penned “Pinterest Spurs Online Sales — And Trademark Risks” for Law360 on January 2, 2013. Click here to read more.
publication
March 01, 2011
Andrew J. Avsec penned 'Trademark on Supplemental Register Cancelled on Functionality Grounds,' for the March 1, 2011, issue of World Trademark Review Daily. This article first appeared in issue 29 of World Trademark Review, published by The IP ...
Presentations
  • "Trademark and Advertising Pitfalls in Social Media," Illinois Paralegal Association Annual Conference, Chicago, IL, November 20, 2014
  • "Expand Your Brand: Strategies for Navigating Brand Expansion Worldwide," ACC, New Orleans, October 31, 2014
  • "Pinning Your Company's Hopes on Pinterest," Podcast with Scott Slavick, December 3, 2012
  • “Emerging Trends in Business: Intellectual Property.” Chicagoland Chamber of Commerce, Panel Discussion, April 12, 2011
  • “Go Green or Go Home: The FTC's Proposed Updated Green Guides,” Brinks Gilson & Lione CLEarKnowledge Now Webinar, February 15, 2011
  • “The FTC Green Guides: Analyzing Environmental Marketing Claims” Midwest Clean Tech 2010 Conference, Speaker, September 14, 2010
Representative Matters
Federal Court Cases

  • Little Caesar Enterprises, Inc. and LC Trademarks, Inc. v. Piara Pizza LLC, Case No. 2:15-cv-6943 (C.D. Cal. 2015) Pending.
  • Georgia-Pacific Consumer Products LP v. Soundview Paper Holdings LLC, Case No. 15-cv-01182 (N.D. Ga. 2015) Settled.
  • Little Caesar Enterprises, Inc. and Bravo Food Service, LLC v. Ready To Go Pizza, Inc. and Ward, No. 1:14-cv-1365 (N.D. Ga. 2014).  Representing Little Caesar in trade secret misappropriation action against former managerial employee who opened a competing pizza restaurant. Consent judgment entered.
  • Grupo Bimbo S.A. B. de C.V. v. Snak-King Corp., 13-cv-02147 (C.D. Cal. 2013) Representing Plaintiffs in trademark and trade dress dispute. Settled.
  • CVG-SAB, LLC v. Facebook, Inc., 12-cv-14521 (E.D. Mich. 2012) Representing Plaintiff in trademark dispute. Pending.
  • American Airlines, Inc. v. Marquez, 12-cv-03364 (N.D. Ga. 2012) Representing Plaintiff in trademark infringement dispute. Consent judgment entered against defendant.
  • Alticor Inc. et al. v. Schirle et al., (W.D. Mich. 2012) Representing Plaintiffs. in action asserting trademark infringement, false association, tortious interference, fraud, and unfair competition. Settled.
  • Little Caesar Enter., Inc. v. Rooyakker, 11-cv-13474 (E.D. Mich. 2011) Representing Plaintiffs in trademark infringement action relating to HOT-N-READY mark. Settled.
  • Vaughan & Bushnell Mfg. Co. v. Estwing Mfg. Co., Inc., 10-CV-6430 (N.D. Ill. 2010). Representing Plaintiff in trade dress infringement action. Settled.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., Georgia-Pacific brought suit against Kimberly-Clark for trademark infringement based on its alleged rights in the “Quilted Diamond Design” embossed on its QUILTED NORTHERN toilet paper. Georgia-Pacific’s infringement claims were directed against Kimberly-Clark’s use of allegedly similar embossed designs appearing on the surface of its COTTONELLE ULTRA and SCOTT toilet paper. Seventh Circuit affirmed grant of summary judgment in Kimberly-Clark’s favor.
  • 749 F. Supp.2d 787 (N.D. Ill. 2010)
  • 647 F.3d 723, 99 USPQ2d 1538 (7th Cir. 2011)
  • Bally Total Fitness Holding Corp. v. Kim2Bfit, LLC and Kim J. Garcia, Civil Action No. 8:10-cv-01108-SDM-TBM (M.D. Fla. 2010). Representing plaintiff in dispute over use of and application to register KIM2BFIT for fitness services. Settled.
  • American Airlines, Inc. v. American Assist Travel Services, Inc., and Gerardo Villafane, No. 08 23476 (S.D. Fla. 2008). Representing plaintiff in infringement action directed against infringement of the marks AA and AMERICAN AIRLINES. Consent Judgment entered against defendants.
  • Progressive Casualty Insurance Company v. Donald Clark, et al., No. 08 CV 2213 (N.D. Ohio 2008). Representing declaratory judgment plaintiff in suit regarding the phrase “National Catastrophe Response Team”. Case settled.
  • The National Spiritual Assembly of the Baha’is of the United States of America Under the Hereditary Guardianship, Inc. v. National Spiritual Assembly of the Baha’is of the United States of America, Inc., No. 08-230 (7th Cir. 2008).
Press Releases & Events
January 11, 2016

CHICAGO—Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has elected eight attorneys ...

July 09, 2014
CHICAGO—Brinks Gilson & Lione has been recognized by The Legal 500 for the sixth consecutive year as one of the top U.S. firms for patent prosecution in utility and design, and for the first time the firm ranks as a top U.S. firm for ...
Honors
  • Emerging Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2016
Affiliations
  • American Bar Association
  • Chicago Bar Association 
  • Princeton Club of Chicago
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