Howard Michael
Shareholder
Overview

“Because my practice features more than one discipline, I consider a broad spectrum of different issues that could arise when I’m counseling my clients.”

Howard is a chair of the firm's Trademark Practice Group. With nearly 20 years experience in intellectual property law, Howard has helped protect trademarks, copyrights, advertising and trade secrets for many of the world’s largest companies. A seasoned courtroom veteran who also provides transactional and prosecution counseling, he represents clients in a wide range of industries including social media, Internet search, finance, aerospace, pharmaceuticals, robotics, alternative energy, food and beverage, steel, waste disposal, and numerous home and consumer goods.

Howard has a particular focus on high-stakes, fast-moving trademark counterfeiting matters. He works closely with U.S. Customs and Border Protection and the U.S. Marshals Service to stop counterfeit goods from entering the country, obtains injunctive relief and coordinates the ex parte seizures of such goods where possible.  

His many other cases involve virtually every area of intellectual property—including trademark, copyright and patent infringement, false advertising, unfair competition, trademark dilution and abandonment, and trade dress. He appears regularly in federal court and before the Trademark Trial and Appeal Board. He also is asked to regularly speak on topical trademark issues.

Clients often look to Howard for advice on worldwide trademark and technology licensing. Applying a litigation perspective, he is able to think forward to identify and avoid potential pitfalls and areas of controversy.

Education
  • J.D.,
    Boston University School of Law, 1998
  • B.A., Political Science
    University of Michigan, 1993
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, 2nd Circuit
  • U.S. Court of Appeals, 7th Circuit
  • U.S. Dist. Court, N.D. Illinois
Experience | Overview
  • Represents Earthgrains Baking Companies in trademark infringement litigation involving the national launch of a product line and issues including fair use and geographic rights.
  • To combat the illegal importation of counterfeit ball bearings into the United States, helped NTN Corporation obtain temporary restraining orders, preliminary injunctions, ex parte seizure orders and final judgments against several defendants.
  • Protected trademark registrations for Groupon, Inc. in several opposition proceedings before the Trademark Trial and Appeal Board.
  • Represented Kimberly-Clark in response to motion for preliminary injunction directed to client’s trade dress and production configuration.
  • Assisted a not-for-profit client in developing and licensing a groundbreaking online course for Chicago public school students.
Experience | Legal
Brinks Gilson & Lione, Chicago, Illinois
Shareholder, May 1997-Present
Forward Thinking
alert
June 22, 2017

This past Monday, June 19, the Supreme Court unanimously ruled that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the First Amendment.  Matal v. Tam, No. 15-1293, 582 U.S. ___ (2017).  Section 2(a), often referred to as the “disparagement clause”...

alert
May 24, 2017

On May 16, 2017, the Ninth Circuit affirmed the district court’s finding that the GOOGLE trademark had not become generic, providing guidance on preventing genericide.  Elliott et al. v. Google, Inc., No. 15‑cv-15809, 2017 US App. LEXIS 8583 (9th Cir. May 16, 2017)...

in the media
March 15, 2017
On March 15, 2017, the Chicago Daily Law Bulletin mentioned Howard Michael for his participation as a presenter at the Centerforce Second Annual Trademark and Copyright Summit.  He spoke on “The Decision: Balancing Trademark Enforcement ...
alert
September 29, 2016

On September 29, 2016, the U.S. Supreme Court agreed to decide a case challenging the constitutionality of ...

publication
January 23, 2006
On Oct. 11, in Century 21 Real Estate Corp. v. LendingTree Inc., 425 F.3d 211 (3d Cir. 2005), the 3d U.S. Circuit Court of Appeals became only the second circuit, joining the 9th Circuit, to analyze and expressly adopt the nominative fair use ...
Presentations
  • "Protecting Weak Trademarks," Intellectual Property Law Section of the Utah State Bar's annual IP Summit, Salt Lake City, UT, February 17, 2012
  • "Hot Topics in IP Law: Techniques for Protecting Weak Trademarks," Association of Corporate Counsel, Chicago Chapter, Chicago, IL, January 19, 2012
Representative Matters
Federal Court Cases
  • Flowers Bakeries Brands LLC v. Earthgrains Baking Companies Inc., et al, Case No. 7:13-cv-00138 (M.D. Georgia). Representing Earthgrains in trademark infringement lawsuit involving bread and baked goods.
  • VoiceFill LLC v. Blue Cross and Blue Shield of Texas, Case No. 2:13-CV-00072 (E.D. Texas). Representing Blue Cross and Blue Shield Of Texas in patent infringement litigation.
  • NTN Corporation, et al. v. Thomas et al., Case No. 3:13-cv-461 (W.D. North Carolina). Represented NTN Corporation in action directed to illegal importation of counterfeit ball bearings. Attained temporary restraining order, preliminary injunction and ex parte seizure. Final judgment in favor of client.
  • NTN Corporation, et al. v. George J. Mandas, et al., Case No. 2:10-cv-00257(D. Arizona). Represented NTN Corporation in action directed to illegal importation of counterfeit ball bearings. Final judgment in favor of client.
  • NTN Corporation and NTN Bearing Corporation of America v. Juan Olivas, Case No. 3:11-CV-00182 (D. Texas). Represented NTN in action directed to illegal importation of counterfeit ball bearings. Secured temporary restraining order, permanent injunction and ex parte seizure order in favor of client.
  • Consumers Digest Communications, LLC v. Avaya Media, LLC, et al., Case No. 1:10 -cv-2698. Represented leading magazine provider as lead counsel in trademark infringement action involving CONSUMERS DIGEST BEST BUY Certification Mark. Final judgment in favor of client.
  • ComPsych Corporation v. Health Champion LLC, Case No. 3:12-cv-692. Defeated motion for preliminary injunction directed to client's use of the HEALTHCHAMPION trademark.
  • Dazzlesmile, et al. v. Yahoo! Inc., et al., Case No. 2:09-cv-11043 (D. Utah). Represented Yahoo! in trademark infringement ligation. Case dismissed in favor of client.
  • Mary Kay Inc. v. Yahoo! Inc., Case No. 3:09-cv-01278-M (N.D. Tex). Represented Yahoo! in trademark infringement litigation.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., et al., Case No. 09-cv-2263 (N.D. Ill). Represented Kimberly-Clark in trade dress infringement case. Case dismissed on summary judgment in favor of client.
  • Yahoo! Inc. v. National Football League Players Association, Inc., et al., Case No. 09-cv-01272-PJS-FLN (D. Minn.). Successfully represented Yahoo! Inc. in declaratory judgment action relating to right of publicity and fantasy football game.
  • Heartbrand Beef Inc. v. Yahoo!, et al., Case No. 6:08-cv-00062 (S.D. Tex). Successfully represented Yahoo! against Lanham Act false designation claim. Dismissed.
  • International Information Systems Security Certifications Consortium v. Yahoo!, et al., Case No. 2:07-cv-1195 (S.D. Ohio). Successfully represented Yahoo! against motion for temporary restraining order in trademark suit concerning Yahoo! message boards. Dismissed.
  • Tyco Healthcare Group LP et al. v. Kimberly-Clark Corp. et al., Case No. 06-11809-JLT (D. Mass.). Successfully represented Kimberly-Clark against motion for preliminary injunction in trademark suit concerning feminine hygiene product.
  • 800-JR Cigar, Inc. v. Goto.com, Inc. (now Yahoo!) et al., Case No. 00 CV 03179 (D. N.J.). Successfully represented Overture Services, Inc., an Internet search engine, as defendant in trademark infringement suit concerning bidding on search terms that comprise trademarks of plaintiff.
  • Government Employees Insurance Company v. Google, Inc. and Overture Services, Inc., (now Yahoo!). Case No. 1:04cv 607 (E.D. Va.). Successfully represented Overture Services, Inc., an Internet search engine, as defendant in trademark infringement suit concerning bidding on search terms that comprise trademarks of plaintiff.
  • Procter & Gamble v. Randy Haugen and Amway Corporation (D. Ut. 1995-2003). Successfully represented Amway against P&G's claims based on the Lanham Act, defamation per se, tortious interference with business relations and vicarious liability. All of P&G's claims were dismissed at the pleading stage or by summary judgment. The 10th Circuit affirmed.
  • American Red Magen David for Israel v. Magen David Adom, U.S.A., Inc. v. Magen David Adom in Israel, Case No. 02 CV 8876 (S.D. N.Y.). Successfully represented Magen David Adom, U.S.A., Inc. in trademark infringement case involving MAGEN DAVID ADOM service mark. Settled.
  • Hardee's Food Systems, Inc. v. Hartee's Driving Range, Inc., and Thomas E. Hartman, Jr., individually and d/b/a Hartee's Mini Golf, Case No. 99 1312 (W.D. Pa.). Successfully represented Hardee's in trademark infringement suit regarding HARDEE'S trademark.
  • Intermatic Incorporated v. Salesmakers, Inc., Case No. 01 C 8601 (N.D. Ill.). Represented Intermatic in trademark infringement case regarding INTERMATIC timers. Dismissed.
  • Chicago Human Rhythm Project v. Gina Barrera d/b/a Projection Rhythm Productions, Case No. CV 04C 0619 (N.D. Ill.). Successfully represented CHRP in trademark infringement action to prevent use of PROJECT RHYTHM service mark for use with tap dance workshops.
Trademark Trial and Appeal Board (TTAB) Cases
  • Flowers Bakeries Brands, LLC v. Earthgrains Baking Companies, Inc., Opposition No. 91213715 (T.T.A.B.). Representing Earthgrains in trademark opposition proceeding involving bread and baked goods.
  • Groupon, Inc. v. Social Reality, Inc., Opposition No. 91209799 (T.T.A.B.). Representing Groupon in opposition proceeding involving several Groupon trademark registrations.
  • Groupon, Inc. v. 7180799 Canada, Inc., Opposition No. 91209480 (T.T.A.B.). Representing Groupon in opposition proceeding involving several Groupon trademark registrations.
  • Groupon, Inc. v. Vera Organics, LLC, Opposition No. 91212659 (T.T.A.B.). Representing Groupon in opposition proceeding involving several Groupon trademark registrations.
  • Groupon, Inc. v. Fernbrook Technologies LLC, Opposition No. 91214054 (T.T.A.B). Representing Groupon in opposition proceeding involving several Groupon trademark registrations.
  • Groupon, Inc. v. Beachbody, LLC, Opposition No. 91214204 (T.T.A.B.). Representing Groupon in opposition proceeding involving several Groupon trademark registrations.
  • Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., et al., Cancellation No. 92051438 (T.T.A.B.). Represented Kimberly-Clark in cancellation proceeding involving several Georgia-Pacific trademark registrations. Settled.
  • Fox Broadcasting Company v. Steve Dahl & Co., Opposition No. 91166194 (T.T.A.B.). Successfully represented Fox Broadcasting Company in opposition concerning TRADING SPOUSES.
  • East West Bank v. United States Steel Corporation, Opposition Nos. 91177674 and 91177809 (T.T.A.B.). Successfully represented U. S. Steel in opposition proceeding concerning ROSS BRIDGE mark. Settled.
  • Autodesk, Inc. v. Dassault Systemes S.A., Opposition No. 158,625 (T.T.A.B.) Successfully represented Dassault Systemes S.A. in opposition proceeding concerning DS Design mark. Settled.
  • Bally Total Fitness Holding Corp. v. Vectra Fitness, Inc., Opposition No. 91122839 (T.T.A.B.). Successfully represented Bally in TTAB opposition proceeding regarding PINNACLE mark. Dismissed.
State Court Matters
  • Gregg Harris v. Cassandra Hunt-Parker d/b/a Clowns2go, Inc., Case No. 01 CH 20644 (Cir. Ct. Ill.). Successfully represented defendant as lead counsel in trademark infringement action. Dismissed on summary judgment.
  • Discover Financial Services, Inc. v. Mary Catherine Taylor, Case No. 01 CH 19239 (Cir. Ct. Ill.). Successfully defended Ms. Taylor in trade secret misappropriation case. Dismissed.
Uniform Domain-Name Dispute Resolution Policy (UDRP) Cases
  • Bally Total Fitness, Inc. v. Mike Torres, d/k/a Dallas Internet Service, a/k/a Global media Consulting, Case No. D2001-0546 (WIPO). Secured transfer of domain name ballyfitness.com.
  • The Rival Company v. DVO Enterprises, Case No. D2002-0265 (WIPO). Secured transfer of domain name crock-potrecipes.net.
Press Releases & Events
March 16, 2017

On March 16, 2017, Howard Michael will present “The Decision: Balancing Trademark Enforcement & Business Cost” at the IP Strategy Summit on Trademark & Copyright Strategies for the Digital Age...

February 17, 2017

CHICAGO—Howard Michael, a trademark attorney and shareholder at intellectual property law firm Brinks Gilson & ...

January 26, 2017

CHICAGO—Intellectual property law firm Brinks Gilson & Lione has again received top recognition ...

October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
January 22, 2013
CHICAGO – Brinks Gilson & Lione has announced its 2013 board of directors, a group headed by firm president James R. Sobieraj and including shareholders William H. Frankel, Howard S. Michael, James P. Naughton, Steven L. Oberholtzer, ...
September 18, 2012
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
Honors
  • World Trademark Review 1000, Illinois, Bronze Band, 'Enforcement and Litigation', 2017
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2010-2016
Affiliations
  • International Trademark Association
  • American Intellectual Property Law Association
  • Chicago Bar Association
  • Intellectual Property Owners Association
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