Joshua S. Frick
Shareholder
Overview

“When you have enough experience, you can give the right answer quickly so the client can take meaningful action.”

A strong advocate for client brands, Josh Frick handles all aspects of trademark and copyright protection, including prosecution, portfolio management, transactions and litigation. Clients look to him for creative, forward-thinking strategies that address the new opportunities (and threats) posed by social media, as well as the challenges of an increasingly connected global marketplace.

As a litigator, Josh has represented clients in federal court actions as well as cancellation and opposition proceedings before the Trademark Trial and Appeal Board. He also handles domain name disputes under the Uniform Dispute Resolution Policy, and works with U.S. Customs and Boarder Protection to prohibit importation of infringing and counterfeit articles.

Josh’s prosecution and counseling practice includes the development and maintenance of domestic and international trademark portfolios, drafting clearance opinions, preparing license and assignment documents, and assisting clients in creating enforcement programs.

Education
  • J.D.,
    Washington University School of Law, 2007
  • B.S., Marketing and Legal Studies
    Indiana University, 2003
Bar Admissions
  • Illinois
  • U.S. Dist. Court, N.D. Illinois
Experience | Overview
  • Alticor Inc. et al v. UMG Recordings Inc. et al. (M.D. Florida). Represented the plaintiffs in a breach of contract and copyright case against the three largest record companies in U.S. Settled.
  • Progressive Casualty Insurance Company v. All Web Leads, Inc., Case No. 1:12-cv-01545-JG (N.D. Ohio). Represented Progressive in trademark infringement suit relating to keyword advertisements. Settled.
  • Poneman v. Nike, Inc. and Foot Locker, Inc. (N.D. Ill.). Won summary judgment and dismissal of trademark infringement case against Nike and Foot Locker.
  • United Air Lines, Inc. v. United Airways, Ltd., (E.D.N.Y.). Obtained a default judgment against a foreign defendant in a trademark infringement suit, successfully serving the defendant in Bangladesh.
  • Garcia v. City of Chicago, (N.D. Ill.). Won a summary judgment motion and dismissal of trademark infringement case against the City of Chicago.
  • United Parcel Service of America, Inc. v. United Air Lines, Inc., (T.T.A.B.). Represented applicant in opposition to application to register the mark UNITED SERVICES.
  • National Association of Realtors v. Tomas Korpa, (T.T.A.B.). Represented opposer in opposition to application to register the mark EUROREALTORS. Proceeding terminated after applicant withdrew application.
Experience | Legal Experience

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, January 2016-Present
Associate, September 2007-Present
Pro Bono Committee, 2008-present
Summer Associate, 2006

Missouri Coalition for the Environment, St. Louis, Missouri
Legal Intern, 2005

Forward Thinking
in the media
April 05, 2017
On April 5, 2017, Trademark attorneys, Josh Frick, Susan Frohling and Emily Kappers were mentioned in the Chicago Daily Law Bulletin for hosting the “International Trademark Searching and Filing Strategies for a Global Economy” ...
multimedia
April 04, 2017

Attorneys from Brinks' Trademark and Unfair Competition practice group will focus on a hypothetical global launch...

in the media
January 27, 2017
On January 27, 2017, the Chicago Daily Law Bulletin mentioned the firm's "2017 IP Developments" Webinar which was moderated by James Sobieraj and joined by Brinks attorneys, Danielle Gillen, Joshua Frick and Gregory Hillyer. Please ...
multimedia
January 25, 2017

Brinks Gilson & Lione attorneys kicks off the firm's centennial year...

in the media
January 20, 2016
On January 20, 2016 Brinks new Shareholders were mentioned in CDLB. Click here to read more.
alert
October 13, 2015
A district court judge in the Central District of California issued an order in Rupa Marya, et al. v. Warner/Chappell Music, Inc., et al. (Case. No. CV 13-4460-GHK (MRWx) granting the plaintiffs’ motion for summary judgment seeking to ...
in the media
November 21, 2014
Christopher M. Dolan and Joshua S. Frick recently penned “Trademark Laws: Illinois” survey for the Practical Law by Thomson Reuters website. The Q&A guide addresses state laws governing trademark registration, infringement, ...
in the media
August 29, 2014
On August 29, 2014, Chicago Daily Law Bulletin mentioned John Gabrielides and Joshua Frick in the “In the News” section regarding their ACC Chicago presentation on August 21st. Click here to read more.
Presentations
  • "Hot Topics in IP Law: Conceptual Copyright Protections for Designs of Useful Articles," ABA IP Roundtable, Moderator, Chicago, IL, April 25, 2017
  • "International Trademark Searching and Filings Strategies for a Global Economy," Brinks 2017 IP Developments Webinar, Speaker, April 4, 2017
  • "Developments and Tips for 2017," Brinks 2017 IP Developments Webinar, Speaker, January 25, 2017
  • "Navigating Fair Use on the Digital Highway of Instant, Wide-Spread Sharing," Corporate Counsel - IP Trademark, Copyright & Licensing Counsel Forum, Speaker, New York, NY, November 10, 2016
  • "Basic Best Practices For Corporate Compliance with Copyright Laws," Illinois Paralegal Association Annual Conference, Chicago, IL, May 20, 2015
  • “2014 U.S. Supreme Court Copyright and Trademark Cases,” Association of Corporate Counsel (Chicago) 2014 IP Law Dinner,, Chicago, IL August 21, 2014
Representative Matters
  • Poneman v. Nike, Inc. and Foot Locker, Inc., 1:13-cv-08809 (N.D. Ill. 2012). Won summary judgment motion and dismissal of trademark infringement case against Nike and Foot Locker.
  • Unique Indoor Comfort, Inc. v. Sila Heating and Air Conditioning, Inc., Civil Action No. 2:11-cv-06572-TJS (E.D. Pa. 2011). Representing plaintiff in trademark infringement suit. Pending.
  • Heat Surge, LLC et al. v. Twin-Star International, Inc., et al., Civil Action No. 5:10-cv-01074-JRA (N.D. Ohio 2010). Represented defendant in trademark infringement and false advertising suit. Settled.
  • Jellyvision, Inc. v. AFLAC Inc., Civil Action No. 10-cv-0426 (N.D. Ill. 2010). Represented preliminary injunction plaintiff in trademark suit challenging AFLAC’s use of YOU DON’T KNOW JACK mark. Settled.
  • Dazzlesmile, et al. v. Yahoo! Inc., et al., Case No. 2:09-cv-11043 (D. Utah 2010). Represented defendant in trademark infringement suit. Settled.
  • NTN Corporation, et al., George J. Mandas, et al., Civil Action No. 2:10-cv-00257(D. Arizona 2010). Representing plaintiff in action directed to illegal importation of counterfeit ball bearings. Pending.
  • United Air Lines, Inc. v. United Airways, Ltd., et al., Civil Action No. 09-cv-4743 (E.D.N.Y. 2010). Representing plaintiff in trademark infringement suit. Pending.
  • Trilink Saw Chain, LLC, et al. v. Blount, Inc., et al., Case No. 1:07-CV-0409-CAP, (N.D. Ga. 2007). Pending. Representing Blount in a false advertising action relating to saw chains for chainsaws.
  • Garcia v. City of Chicago, Case No. 1:07-CV-5828, (N.D.Il. 2007). Represented City of Chicago in trademark infringement action. Case dismissed after the Court granted the City's Motion for Summary Judgment.

Trademark Trial and Appeal Board (TTAB) Cases

  • Grupo Bimbo, S.A. B. de C.V. v. Advanced Total Marketing Systems, Inc., Opposition No. 91233593 (T.T.A.B.). Representing opposer in opposition to application to regiser the mark TAQUERITOS EXTREMOS & Design. Pending.
  • Grupo Bimbo, S.A. B. de C.V. v. Carlos Rafael Salinas González Méndez, Opposition No. 91231386 (T.T.A.B.). Representing opposer in opposition to application to regiser the mark XOCHITL (SO CHEEL) EN FUEGO & Design. Pending.
  • Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, Cancellation No. 92051006 (T.T.A.B.). Representing petitioner in proceeding to cancel PERKSPOT registration. Pending.
  • United Parcel Service of America, Inc. v. United Air Lines, Inc., Opposition No. 91125726 (T.T.A.B.). Represented applicant in opposition to application to register the mark UNITED SERVICES. Settled.
  • National Association of Realtors v. Tomas Korpa, Opp. No. 91187313 (T.T.A.B. 2008). Represented opposer in opposition to application to register the mark EUROREALTORS. Proceeding terminated after applicant withdrew application.
  • Lockheed Martin Corporation v. Raytheon Company, (Oppositions 91167189 and 91174152, (T.T.A.B.). Representing applicant in opposition to application to register the mark PAVEWAY. Opposition pending.
Press Releases & Events
June 14, 2017
CHICAGO—Jeffery A. Handelman and Joshua S. Frick, shareholders and trademark attorneys at intellectual property law firm Brinks Gilson & Lione, will be featured speakers at the Practising Law Institute’s Fundamentals of Trademark Law ...
April 04, 2017

Attorneys from Brinks' Trademark and Unfair Competition practice group will focus on a hypothetical global launch of a new product...

March 23, 2017

CHICAGO—Joshua S. Frick, Susan Frohling, and Emily Kappers, trademark attorneys at intellectual property law firm Brinks Gilson & Lione, will host the webinar “International Trademark Searching and Filing Strategies for a Global Economy” on April 4, 2017, at 12:00 p.m. CDT...

January 25, 2017

On January 25 at 12:00pm CT, join Brinks Gilson & Lione attorneys as they kick off the firm's centennial year by discussing the issues that...

January 18, 2017

CHICAGO—Brinks Gilson & Lione kicks off its centennial year with a look at recent developments in ...

January 11, 2016

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

Affiliations
  • International Trademark Association
    Pro Bono Committee
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