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January 24, 2012
Jennifer Harris

Brinks Attorneys Fleming and Gabrielides Release Supplement to Trademark Litigation Practice

CHICAGODavid S. Fleming and John T. Gabrielides, trademark attorneys and shareholders at Brinks Hofer Gilson & Lione, recently released the 2011 supplement to their detailed treatise Trademark Litigation Practice, first published by BNA Books in 2010.

Trademark Litigation Practice covers every aspect of Lanham Act cases, from pre-filing considerations to disclosures and discovery, through motion practice, trial, and post-trial proceedings. It includes an analysis of alternative proceedings that may be used in trademark cases, such as oppositions and cancellations in the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO); Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings for domain names; International Trade Commission investigations; and alternative dispute resolution tools. The treatise covers all of these practical litigation topics in detail, with many topics presented in an easy-to-use, circuit-by-circuit format.

The 2011 Supplement provides important updates on relevant case law, including:

  • The Seventh Circuit's comprehensive Nightingale decision on what qualifies as an "exceptional case" under the Lanham Act
  • The Eighth Circuit's Masters decision on the availability of defendant's profits as a Lanham Act remedy
  • Recent survey cases, including percentage rates and challenges based on survey flaws
  • Recent decisions relating to causes of action and defenses
  • Rule 12 motions, summary judgment motions, discovery and trial and post-trial proceedings
  • Discussion of in rem jurisdiction in anti-cybersquatting cases

David Fleming has litigated all types of trademark and unfair competition cases in federal courts throughout the United States, as well as in the TTAB and in UDRP proceedings. He is a past chair of Brinks’ Trademark Litigation group. His clients have included companies engaged in Internet technology, motion picture services, consumer products, services franchising, financial services, telecommunications equipment and automotive manufacturing. He is active in the trademark bar, serves on the board of directors of the International Trademark Association, and is the Annual Review Vice Chair for the Trademark Committee of the American Bar Association Section of Intellectual Property Law.

John Gabrielides is the chair of Brinks’ Trademark Practice. He has litigated across the full spectrum of Lanham Act cases in federal courts, including trials before juries and judges and preliminary injunction proceedings. His practice includes all aspects of trademark, unfair competition, false advertising and copyright law. Mr. Gabrielides has developed a particular expertise in trademark surveys and with experts in general, including experts used in the remedy phase of lawsuits, and he has argued appeals before the Seventh Circuit and the Federal Circuit. Mr. Gabrielides has also litigated in front of the U.S. Patent and Trademark Office and has experience in patent counseling, licensing and litigation.

BNA is the largest independent publisher of information and analysis products for professionals in business and government. Publications cover the full range of legal, legislative, regulatory, and economic developments that impact the business environment around the nation and the world.

Brinks Hofer Gilson & Lione
Brinks has over 140 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with bachelors and advanced degrees in all fields of technology and science. Brinks has offices in Chicago, Washington, D.C., Research Triangle Park, Salt Lake City, Ann Arbor and Indianapolis. More information is available at