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Bright and strategic litigation team that always keeps the end game in mind. - Chambers USA

Intellectual Property

Return to Practice Description

Businesses place ever-increasing importance and value on their proprietary information, creative capital and corporate identities, and Goldberg Kohn combines transactional and litigation specialists who understand how to protect that valued property. The firm counsels clients with respect to all aspects of their trademarks, copyrights, patents, domain names, trade secrets, licensing/distribution agreements and advertising. The Intellectual Property Group's clients include major manufacturers, retailers, entertainment media and not-for-profit entities and the firm has developed special industry teams for the musical instrument and toy industries.

Goldberg Kohn helps its clients protect the value of their corporate identities, including trade names, logos, trade dress, domain names and web site designs. The firm's intellectual property attorneys monitor their clients' intellectual property globally on the web and in other media to identify potential problems as early as possible. Goldberg Kohn IP attorneys are proactive advisors to businesses on the evolving legal and evidentiary issues spawned by the variety of new media of communication in wide use today, including e-mail retention and purging policies.

When disputes arise the Intellectual Property Group represents its clients in matters involving trademark infringement, unfair competition, dilution, copyright infringement, patent infringement, right of publicity infringement and misuse/misappropriation of trade secrets in litigation; in alternative dispute resolution proceedings; and in administrative actions, such as trademark oppositions before the U.S. Trademark Trial and Appeal Board.

Representative Matters

  • Acted as trademark counsel to a major computer products retailer, to a distributor of private label and branded beauty supply products, to a grocery cooperative, and to many other consumer product companies.
  • Represent the owner of the most valuable cigarette trademark in the world in the company's anti-counterfeiting litigation.
  • Represent the owner of some of the most well-recognized trademarks in the market for electric guitars and related products and, in addition to handling all of its general intellectual property matters, the firm is actively involved in monitoring its network of authorized dealers and handle a variety of matters relating to counterfeiting, unauthorized replacement parts, warranty issues, claims made in connection with the resale of "vintage" products, trade dress protection, and general trademark infringement issues.
  • Represent various software developers in connection with the negotiation of development and licensing agreements. The firm also represents a number of clients who have acquired (or are interested in acquiring) software and related technologies, and have handled the negotiation and structuring of their development and manufacturing agreements. Goldberg Kohn has been involved in all aspects of the sale and acquisition of license rights, including health care information systems, voice-recognition technology, set-top box service agreements, Internet service pro­vider arrangements and multimedia publishing contracts.
  • Represent a variety of clients in patent infringement litigation in a wide array of industries.
  • Negotiated many trademark and copyright licenses, including a wide variety of "typical" agreements for parties in diverse industries, as well as more individualized contracts for clients engaged in character licensing, cooperative advertising programs, Internet linking agreements, sweepstakes promotions and franchise programs. Represented a candy manufacturer in connection with the development and licensing of novelty items using copyrighted characters, and a distributor of cleaning products regarding its relationship with cable television shopping channels and with other mass merchandisers.
  • Litigated a number of intellectual property matters, including numerous infringement cases, opposition proceedings before the Trademark Trial and Appeal Board, import and custom disputes, and breach of contract actions relating to license/franchise agreements.

Attorneys At Law

55 East Monroe Street
Suite 3300
Chicago, Illinois 60603-5792
Tel: 312.201.4000
Fax: 312.332.2196


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