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Mark I. Feldman  


Partner
Chair, Chicago Intellectual Property Practice Group

mark.feldman@dlapiper.com

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203 North LaSalle Street, Suite 1900
Chicago, Illinois 60601-1293
United States
T: +1 312 368 7084   F: +1 312 630 7316

Mark I. Feldman's practice focuses on trademarks, patents, copyrights, trade secrets, and Internet and technology law. Mr. Feldman has extensive experience counseling clients on domestic and international intellectual property registration, enforcement and licensing. His litigation experience includes oral arguments before the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. He has litigated the protectability of color as a trademark in cases relating to low-calorie sweeteners, golf club shafts, and prescription pharmaceuticals; the enhanced scope of protection for famous trademarks like the NutraSweet; trademark priority disputes; the genericness of a religious leader's name; and the protection of the distinctive interior design and exterior trade dress of franchised restaurants. He has determined the worldwide availability of new company names for a number of Fortune 100 companies.

Mr. Feldman has written a chapter on "Trademark Law for The Franchisor" in a course book from the Practicing Law Institute and has published various articles on trademark law in the Franchise Legal Digest. He has been a speaker on due diligence, licensing and franchise issues and international trademark registration strategies.

The respected English research firm Chambers & Partners cites Mr. Feldman in Chambers USA: America's Leading Lawyers for Business. Chambers has noted that he "is well versed in counseling clients on domestic and international IP registration, enforcement and licensing" and commented that "clients praise Feldman's business and sector knowledge as well as his 'superb client service'" and that he is regarded as "one of the premier trademark lawyers in the USA."

In 2011, Mr. Feldman was recognized in the inaugural edition of the World Trademark Review 1000, a guide to the world's leading trademark practitioners.

Mr. Feldman was nominated by his peers to appear in An International Who's Who of Trademark Lawyers (Law Business Research Ltd. 2003 and 2004); the Guide to the World's Leading Trademark Law Practitioners in every edition since 2002; and The Best Lawyers in America in the area of intellectual property law. He also has been selected as an Illinois Leading Lawyer in intellectual property law by the Leading Lawyers Network in every year since 2003. Mr. Feldman has been designated an Illinois Super Lawyer in every year since 2006. He was also listed in the 2005 Who's Who Legal: The International Who's Who of Business Lawyers.

Representative Cases

  • Osho International Foundation v. Osho Friends International (TTAB 2009). Successfully petitioned to cancel and opposed 13 trademark registrations and applications, with the Trademark Trial and Appeal Board finding that the term OSHO is a generic term that cannot be exclusively appropriated by anyone.
  • MB Financial Bank v. MB Real Estate (N.D. Ill 2003). Successfully defended preliminary injunction in trademark infringement case.
  • NutraSweet Co. v. K&S Foods, Inc., 4 U.S.P.Q. 2d 1964 (TTAB 1987). Successfully upheld that NutraSweet is a famous mark and that Nutra Salt was confusingly similar and denied registration as a trademark.

Admissions

  • Illinois
  • United States Patent and Trademark Office
  • United States District Court for the Northern District of Illinois
  • United States Court of Appeals for the Seventh Circuit
  • United States Court of Appeals for the Federal Circuit

Memberships

  • Intellectual Property Law Association of Chicago – President, 2005-2006; President-Elect, 2004-2005; Vice President, 2003-2004; Board of Managers, 1996-1997
  • International Trademark Association
  • American Intellectual Property Law Association - Chair, Franchising Subcommittee, 1997-2000

Seminars

  • Co-chair, Intellectual Property Law Association of Chicago Patent Law Symposium, Chicago (September 25, 2009)
  • Speaker, "Patent, Trademark, Copyright and Trade Dress Issues in Advertising," POPAI (Point-of-Purchase Advertising International) University Masters Program ( July 14, 2009; July 14, 2008; July 9, 2007; July 11, 2006; July 12, 2005; July 13, 2004)
  • Co-Chair, IPLAC Patent Law Symposium 2008, and Moderator, "How to Try a Patent Case: A Judge's Perspective" panel, Intellectual Property Law Association of Chicago Conference, Chicago (October 10, 2008)
  • Co-chair, "Intellectual Property Law Summit 2007," West Legalworks and IPLAC (October 12, 2007)
  • Co-Chair, "Complex Intellectual Property Licensing," Law Seminars International (April 6-7, 2006)
  • Speaker, "Mastering Due Diligence – Verifying IP Ownership Rights," Law Seminars International (April 6, 2006)
  • Speaker, "7 Months of Experience Under the Madrid Protocol," International Bar Association/International Franchise Association Joint Conference (May 26, 2004)
  • Speaker, "Best Practices for Working with Your Merger & Acquisition Transaction Team to Avoid Intellectual Property Pitfalls," Chicago Bar Association (September 16, 2003)
  • Speaker, "Trademark Investigation Issues," Trademark Law: Beyond the Basics Conference sponsored by LexisNexis (April 15, 2003)

Prior Experience

  • Senior Trademark Counsel, G.D. Searle & Co., where he implemented the worldwide branded ingredient strategy for the NutraSweet trademark.

Civic and Charitable

  • International Trademark Association's Saul Lefkowitz Trademark Moot Court Competition, National Chairperson 2001-2002, Regional Coordinator 2009-2010
  • Appointed to serve on the National Public Advisory Committee for Trademark Affairs, 1997-1999


EDUCATION

  • J.D., Georgetown University Law Center 1974
  • B.S.I.E., University of Illinois at Urbana-Champaign 1971 with high honors

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