Lawyers

Practice Group Contact:

• Joseph F. Schmidt
• Direct Tel (312) 836.4178
• jschmidt@shefskylaw.com

The Team Approach to Essential Services – A Combination of Skills and Experience

In a world where Intellectual Property (IP) may well be a client's most valuable asset, the Shefsky & Froelich IP Practice Group focuses on providing comprehensive services designed to develop legal strategies and achieve legal solutions to meet our clients' business goals.

Our IP Group is experienced in identifying, protecting and enforcing our clients' IP rights.  Our Group is well-positioned to address our clients' business and IP needs because of our diverse industry experience, including banking and financial services, gaming, software development and licensing, real estate, e-commerce, telecommunications, electronics, automotive, candy and confectionery, food manufacturing and distribution, restaurants and food service, distilled spirits, coffee, sports and entertainment, dental products, clothing and jewelry, manufacturing, metal working and woodworking machinery, hospitals and health care institutions, universities, and advertising and marketing.

Our IP experience includes:

• Searching and clearance of trademarks
• Registration of trademarks in the U.S. and internationally
• Registration of trade dress, product and packaging configurations
• Watch/surveillance services for conflicting marks
• Copyrights
• Trademark licenses
• Technology licenses
• Technology transfers from universities to the private sector
• Transactions involving technology and e-commerce
• IP audits and counseling
• M&A due diligence
• Intellectual property litigation
• Domain name disputes
• U.S. Customs registration and enforcement of IP rights
• Sweepstakes and promotions
• Advertising compliance/clearance
• FDA and FTC

   

IP Litigation:

Our IP litigation group has the resources, knowledge and experience to respond quickly and forcefully to our clients' needs for litigation services and to meet any challenge. Our attorneys have represented clients in a broad range of industries involving all aspects of IP rights, and have demonstrated success in bench and jury trials and appeals in federal and state courts, and the U.S. Patent and Trademark Office.

Our IP litigation experience includes:

• Trademark infringement
• Copyright infringement
• Trade dress infringement
• Opposition and cancellation proceedings before the Trademark Trial and Appeal Board
• Domain name dispute proceedings
• Trade secret violations
• False advertising
• Unfair competition

Representative Matters:

Planet Hollywood, Inc. v. Hollywood Casino Corporation (N.D. Ill.).  Represented gaming entity in a trade name/trademark dispute filed by Planet Hollywood regarding re-theming of the Aladdin Casino in Las Vegas.

WMH Tool Group, Inc. v. Woodstock International, Inc. and Grizzly Industrial, Inc. (N.D. Ill.).  Represented Grizzly and Woodstock in a trademark infringement action brought by WMH which sought to enjoin Grizzly's and Woodstock's use of the color white for woodworking and metal working machines.  Obtained a TRO restraining WMH and U.S. Customs and Border Protection (CBP) from seizing Woodstock's and Grizzly's machines at a trade show, and subsequently obtained a preliminary injunction order requiring WMH to consent to the release of Woodstock's and Grizzly's Asian manufactured products detained by CBP at U.S. ports of entry.

Direct Marketing Concepts, Inc. v. Trudeau (9th Cir., C.D. Cal., E.D. Pa., and N.D. Ill.).  Represented infomercial producer in national litigation relating to production, distribution and product sale rights and use of the participants' names and likenesses.

August Stork KG vs. Farley Candy Company (N.D. Ill.).  Represented manufacturer of WERTHER'S ORIGINAL candies in a lawsuit accusing a rival candy manufacturer of infringing the trade dress and trademarks of Stock's WERTHER'S ORIGINAL packaging.  We obtained a jury verdict and Storck was awarded a permanent injunction restraining Farley from imitating Storck's packaging and over $4 million in compensatory and punitive damages.

Genuine Productions, Inc. v. York Entertainment, Inc. (A.F.M.A).  Represented independent film producer in lawsuit against film distributor relating to film's distribution rights and proceeds.

Oleg Cassini Inc. vs. Cassini Tailors (DC, W.D. Texas).  Represented fashion designer in trademark infringement action and obtained summary judgment that defendant's use of the name "Cassini" infringed the federal trademark rights of Oleg Cassini.

AF2, LLC v. TVF, LLC (N.D. Ill.).  Represented the af2 indoor football league in prosecuting an injunction action against a former franchisee that attempted to move to a competing indoor football league and to rename and rebrand the team with confusingly similar marks.

Geneva Flavors, Inc. v. Fontana Flavors, Inc. (Wisc.).  Represented manufacturer of food flavors in a claim of wrongful misappropriation of trade secrets under the Wisconsin Trade Secrets Act.