David S. Fleming
Shareholder
Overview

"My job is to anticipate and meet our clients’ needs, effectively, efficiently and ethically."

Dave has over 30 years of litigation experience, focusing on intellectual property issues for clients in many different industries. He also advises clients with complex branding, clearance, licensing, due diligence and similar intellectual property rights issues. Dave also counsels clients with complex issues with global portfolios.

Much of Dave’s experience is in cases involving cutting-edge Internet search and social media issues. Dave’s clients in these areas have included Internet startups as well as well-established multinationals with Internet and social media issues.

Dave has served in leadership roles in the global trademark community. For example, he has served as Counsel to the Board of the International Trademark Association, and he also has served INTA on its Board of Directors and as chair of Annual Meeting and other programs. Dave also speaks frequently on trademark issues, and he is a co-author of a trademark book, Trademark Litigation Practice, published by Bloomberg BNA.

Dave has been a leader in his firm, serving on its Board and Executive Committee, and currently as its General Counsel.

Education
  • J.D.,
    University of Illinois College of Law, 1981
  • B.A.,
    Northwestern University, 1978
  • B.S.,
    Georgetown University, School of Foreign Service, 1975
Bar Admissions
  • Illinois
  • Illinois Supreme Court
  • Supreme Court of the United States
  • U.S. Court of Appeals, 2nd Circuit
  • U.S. Court of Appeals, 7th Circuit
  • U.S. Court of Appeals, 9th Circuit
  • U.S. Dist. Court, C.D. Illinois
  • U.S. Dist. Court, N.D. Illinois, Trial Bar
  • U.S. Dist. Court, W.D. Michigan
Experience | Legal Experience
Brinks Gilson & Lione, Chicago, Illinois
Shareholder
Co-General Counsel, 2012-2013
Chair, Trademark Litigation Practice Group, 2009-2011
Co-chair, Litigation Department, 2009
Board of Directors, Executive Committee, 2007-2008
Vice President, 2007-2008
Treasurer, 2000-2005
Co-chair, Internet Practice Group, 2001-2007
Experience | Civic Activities

The Illinois Saint Andrew Society
  Board of Governors, 2005-Present

Board of Education, Wheaton-Warrenville (Illinois) Community Unit School District 200
  Member 1995-1999
  Vice-President 1996-1997
  President 1997-1998

DuPage Intermediate Educational Cooperative
  Member, Board of Directors 1995-1997

Forward Thinking
Presentations
  • "Pre-Trial and Trial Issues in Trademark Cases," (speaker), Intellectual Property Law Dinner, Association of Corporate Counsel, Chicago, August 24, 2017
  • “Ten Trademark Hot Topics,” (speaker), IP Symposium, Intellectual Property Law Association of Chicago, November 2, 2012
  • “Drafting and Negotiating Sponsorship Agreements,” (moderator), Trademarks in Transactions Conference, International Trademark Association, Chicago, October 11, 2012
  • "Protecting Privacy and IP in Social Media," 2012 National Summit of Black Women Lawyers, Chicago, April 13, 2012
  • "Using U.S. Trade and Competition Laws to Protect the Value of Brand Names and Other Trademarks in a Global Economy,” Chicago International Trade Commissioners Association, Chicago, October 4, 2011
  • “Fighting Infringing Online Content & Sales,” Corporate Intellectual Property Law Conference, Chicago, IL, February 8, 2011
  • "IP Trends Surrounding the Use of Social Media, Including Twitter and Facebook," Brinks Gilson & Lione CLEarKnowledge Now Webinar, December 9, 2010
  • "Trademark Issues with Social Networking Sites," (speaker), 12th Annual Utah IP Summit, Salt Lake City, Utah, February 12, 2010
  • "Commercialization of IP in China - Trademark Enforcement, Protection Strategies and Domain Names in China," (moderator), Intellectual Property Owners Association Annual Meeting, San Diego, California, September 23, 2008
  • Trial attorney in mock patent jury trial, John Marshall Law School trial program at China State Intellectual Property Office, Beijing, Peoples Republic of China, June 2008
  • "Keyword Advertising: Trademark Law in Flux," (panelist), AIPPI (US Group) Annual Meeting, San Francisco, California, October 26, 2007
  • "Trademarks in Internet Advertising: The Next 'Next Big Thing,'" (speaker), Trademark & Advertising Law, Law Seminars International, Seattle, Washington, September 21, 2007
  • "Beyond Keywords: Internet Trademark Issues," (speaker), Update on Intellectual Property Law and the Internet, Brinks Gilson & Lione Seminar, Chicago, August 1, 2007
  • "Use of Keywords in Internet Advertising," (speaker), Brinks Gilson & Lione Seminar, Glenview, Illinois, June 5, 2007
  • "Transactions Involving Use of Trademarks On the Internet," (speaker), Complex IP & Technology Transactions, Law Seminars International, Chicago, Illinois, March 22, 2007
  • "Trademark Law: US and International Update," (panelist), Update on Intellectual Property Law and the Internet, Brinks Gilson & Lione Seminar, Chicago, April 18, 2006
  • "Runaway Jury: The Streets of San Diego," (trial attorney in mock jury trial), International Trademark Association Annual Meeting, San Diego, California, May 17, 2005
  • "Trademarks in Internet Advertising: Banners, Pop-Ups, Paid Search," (speaker), Georgetown University Advanced Computer and Internet Law Program, Washington, D.C., March 17, 2005
  • Trademark Administrator Forum, International Trademark Association, (co-chair), Arlington, Virginia, October 3-6, 2004
  • "U.S. Dilution Law," (speaker), Famous and Well-Known Trademark Forum, International Trademark Association, Brussels, Belgium, September 20, 2004
  • "Internet Update: Domain Name Disputes and Cyber Infringement," (speaker), IP Summer Conference, Michigan Institute of Continuing Legal Education, Mackinac Island, Michigan, July 23, 2004
  • "Litigating Damages in Trademark Infringement Cases," (moderator), Roundtable, ABA Litigation Section, Intellectual Property Litigation Committee, Chicago, Illinois, March 18, 2004
  • "Internet Advertising: Expanding Frontiers of Trademark Law," (speaker), Intellectual Property Law Association of Chicago and The John Marshall Law School Internet Law Seminar, Chicago, Illinois, November 21, 2003
  • "Trademarks on the Internet: Expanding Frontiers," (speaker), LexisNexis Advanced Trademark Program, New York, New York, October 23-24, 2003
  • "Dilution: Open Issues After Moseley," (speaker), Intellectual Property Owners Association Annual Meeting, Chicago, Illinois, September 16, 2003
  • "Trademarks and the Internet: Hot Topics," (speaker), Georgetown University Advanced Computer and Internet Law Program, Washington, D.C., March 6, 2003
  • "Qualifying for Dilution Protection," (project team member and moderator), International Trademark Association Dilution Forum, Arlington, Virginia, March 6-7, 2003
  • "Hot Topics In U.S. Trademark Law," (speaker), 2002 Chicago International IP Conference (co-sponsored by the University of Illinois), Chicago, Illinois, October 5, 2002
  • "Effective Enforcement Strategies," (speaker), LexisNexis Advanced Trademark Program, Chicago, Illinois, April 15-16, 2002
  • "Giving Away E-commerce Rights and How To Negotiate Them," (speaker), presented portion of program regarding trademark rights in e-commerce, HITEC (Hospitality Industry Technology Exhibition and Conference), Dallas, Texas, June 20, 2000
  • "Trademarks On The Internet," (speaker), Chicago-Kent College of Law, Illinois Institute of Technology, Chicago, Illinois, April 25, 2000
  • "Trademark Law Issues Associated With The Transfer Of Intangibles," (speaker), Deloitte & Touche Client Seminar, Chicago, Illinois, December 3, 1997
  • International Trademark Law Developments Session, International Trademark Association Annual Meeting, (co-moderator), Seattle, Washington, May, 1994
Interviews
  • "Internet Trademark Law," Interview on SkyRadio, United Airlines, October 2005
  • Quoted in November 2002 Managing Intellectual Property article naming Brinks Gilson & Lione the #2 "Contentious Trademark" firm in the United States.
  • Quoted in April 2000 Managing Intellectual Property article naming Brinks Gilson & Lione's trademark group the "US Team of the year."
Representative Matters

Federal and State Courts:

  • 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.
  • Alticor Inc. v. Nutrisystem, Inc., Case No. 1:12-cv-00256-RHB (W.D. Mich.). Represents Alticor in declaratory judgment action relating to trademark issues. Pending.
  • eSolar Inc. v eSolar Exchange LLC, Case No. 2:12-cv-04134-MRW (C.D. Cal.). Represented plaintiff in trademark infringement action. Settled.
  • Dazzlesmile, et al. v. Epic Advertising, et al., Case No. 2:09-cv-01043-PMW (D. Utah). Represented Yahoo!, Inc. in trademark infringement suit relating to keyword advertisements. Settled.
  • NTN Corporation, et al. v. Mandas, et al., Case No. 2:10-cv-00257-JWS (D. Ariz.). Represented NTN Corporation in trademark infringement suit relating to counterfeit bearings. Settled.

Recent Trademark Trial And Appeal Board Matters:

  • Mary Kay, Inc. v. Yahoo! Inc., Case No. 3:09-cv-01278-M (N.D. Tex.). Represented Yahoo! in trademark infringement suit relating to shortcuts appearing in emails. Settled.
  • Yahoo! Inc. v. National Football League Players Association, Inc. et al., Case No. 09-cv-01272-PJS-FLN (D. Minn.). Represented Yahoo! Inc. in declaratory judgment action relating to right of publicity and fantasy football game. Settled.
  • International Information Systems Security Certifications Consortium v. Degraphenreed, et al., Case No. 2:07-cv-1195 (S.D. Ohio). Represented Yahoo! Inc. in trademark infringement dispute. Settled.
  • Heartbrand Beef, Inc. v. Lobel's of New York, LLC, et al., Case No. 6:08-cv-00062 (S.D. Tex.). Represented Yahoo! Inc., one of the defendants in a trademark infringement dispute. Dismissed.
  • Trilink Saw Chain, LLC, et al. v. Blount, Inc., et al., Case No. 1:07-CV-0409-CAP (N.D. Ga.). Represented Blount, Inc. in false advertising claim. Settled.
  • Bernini, Inc. v. Fragrancenet.com, Inc., et al., Case No. CV 06-4829 RGK (C.D. Cal.). Represented Yahoo! Inc. in trademark infringement dispute. Settled.
  • Munchkin, Inc. v. Wm. Wrigley Jr. Company, Case No. CV 06-6342 PA (C.D. Cal.). Represented Wm. Wrigley Jr. Company in trademark infringement matter. Settled.
  • Children's Memorial Medical Center, Inc. v. Kid's Doc, S.C., et al., Case No. 1:06-cv-05844 (N.D. Ill.). Represented Children's Memorial Medical Center, Inc. in suit alleging trademark infringement. Settled.
  • JP Enterprises, Inc. v. Yahoo! Inc., et al., Case No. 06-cv-01046-REB-PAC (D. Col.). Represented Yahoo! Inc. in suit alleging trademark infringement. Settled.
  • Motorola, Inc. v. Razor USA, LLC, Case No. 2198-N (Del. Chancery Ct. 2006). Represented Motorola in declaratory judgment action concerning license agreement. Settled.
  • Government Employees Insurance Company ("GEICO") v. Google, Inc. and Overture Services, Inc., Case No. 04-CV-507 (E.D. Va.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled.
  • R. J. Reynolds Tobacco Company, et al. v. Premium Tobacco Stores, Inc., et al., Case No. 99 C 1174 (N. D. Ill.), 462 F.3d 690, (7th Cir. 2006). Gray market case; lead counsel for plaintiffs in trial of trademark claims, secured jury verdict finding, among other things, federal trademark infringement, unfair competition and willful dilution, and awarding $3.5 million in defendant's profits; prejudgment interest later awarded. Affirmed on appeal.
  • Caterpillar, Inc. v. The Walt Disney Company, Case No. 1:03-cv-01334 (C.D. Ill. 2003). Represented Caterpillar in connection with Disney's use of Caterpillar marks in film George of the Jungle 2. Settled.
  • Mark Nutritionals, Inc. v. Overture Services, Inc., Case No. SA-02-CA-0086 OG (W.D. Tex.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled.
  • Mark Nutritionals, Inc. v. AltaVista Company, Case No. SA-02-CA-0087 EP (W.D. Tex.). Represented AltaVista Company, an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled.
  • PlasmaNet, Inc. v. Overture Services, Inc., Case No. 02 CV 3075 (AGS) (S.D. N.Y.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled.
  • Robert Novak d/b/a Pets Warehouse, etc.. v. Overture Services, Inc., et al., Case No. CB 02 5164 (E.D. N.Y.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled.
  • 800-JR Cigar, Inc. v. GoTo.com, Inc., et al., Case No. 2:00 CV 03179 (D. N.J.). Represented Overture Services, Inc. (formerly GoTo.com, Inc.), an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademarks of plaintiff. Settled.
  • Federal Cartridge Co. v. Cyrus, Inc. d/b/a Federal Arms Corp. of Amer., Case No. 00-1569 (D. Minn., Fourth Division). Secured consent judgment on behalf of owner of FEDERAL mark in suit concerning use of name and mark FEDERAL ARMS for firearms.
  • GoTo.com, Inc. v. The Walt Disney Company, et al., 202 F. 3d 1199, 1207 (9th Cir. 2000). Secured preliminary injunction for GoTo.com, an Internet search engine, in trademark infringement suit concerning use of logo appearing on Web sites and television and in print media. Affirmed on appeal. Case settled for $21.5 million following filing of contempt petition against defendants.
  • Sargent & Greenleaf, Inc. v. Masco Corporation, et al., Case No. 99-6 (E.D. Ky., Lexington Div. 1999). Secured preliminary injunction for manufacturer of dial and ring locks used on gun safes. Case subsequently settled.
  • R.J. Reynolds Tobacco Company, et al. v. Allstate Cigarette Distributors, Inc., et al., Case No. 99-348-CIV-T-25F (M.D. Fla., Tampa Div.). Secured consent judgments against various defendants in gray market cigarettes case.
  • Motorola, Inc. v. Fonorola Corporation, Case No. 97 CV 9157 (RPP) (S.D. N.Y.). Trademark infringement action to prevent use of FONOROLA trademark for use with telephone services. Settled.
  • Jonathan Drew, Inc. v. GMB, Inc., Opposition No. 91183057 (T.T.A.B.). Represented applicant for mark CAMEL CRUSH. Settled.
  • Danjaq, LLC v. Jason & Jean Products, Inc., Opposition No. 120,980 (T.T.A.B.). Represented owner of JAMES BOND and 007 service marks in opposition to application for registration of mark 007 HAIR WEAVING BOND. Summary judgment granted in favor of client.
  • Danjaq, LLC v. Jason & Jean Products, Inc., Cancellation No. 31,532 (T.T.A.B.). Represented owner of JAMES BOND and 007 service marks in cancellation proceeding concerning registration of mark 007 WEAVING BOND. Summary judgment granted in favor of client.
  • Wm. Wrigley Jr. Company v. Lotte Co., Ltd., Opposition No. 115,237 (T.T.A.B.). Opposition to application for registration of mark LOTTE SPEAR MAX. Settled.
  • Wm. Wrigley Jr. Company v. Lotte Co., Ltd., Opposition No. 115,236 (T.T.A.B.). Opposition to application for registration of mark LOTTE JUICY MAX. Settled.
  • Danjaq, LLC v. LVIII Group, LLC, Opposition No. 113,226 (T.T.A.B.). Represented owner of JAMES BOND and 007 service marks in opposition against application to register mark CLUB 007--A GENTLEMAN'S CLUB. Opposition sustained May 12, 1999.
  • Danjaq, LLC v. Double-O-Seven, Ltd., Cancellation No. 28, 013 (T.T.A.B.). Represented owner of JAMES BOND and 007 service marks in cancellation proceeding concerning registration of mark DOUBLE-OH-SEVEN, LTD. & Design. Cancellation granted August 16, 1999.
  • Navistar International Transportation Corp. v. Mack Trucks, Inc., Opposition No. 107,707 (T.T.A.B.). Opposition proceeding filed in 1997 against application to register truck grill design. Settled.
Press Releases & Events
August 24, 2017
Brinks is sponsoring the ACC Chicago Annual IP Law Dinner Program at Morton’s The Steakhouse where attorneys David Fleming and Virginia Marino will be presenting along with Judge Matthew F. Kennelly of the US District Court of ...
August 15, 2017

CHICAGO—David S. Fleming and Virginia Wolk Marino, attorneys at intellectual property law firm Brinks Gilson & Lione, will be featured speakers at the ACC Chicago Annual Intellectual Property Law Dinner Program on August 24, 2017, in Chicago...

February 09, 2017

CHICAGO—Twenty attorneys at intellectual property law firm Brinks Gilson & Lione have been named to the 2017 ...

January 26, 2017

CHICAGO—Intellectual property law firm Brinks Gilson & Lione has again received top recognition ...

October 27, 2016

CHICAGO—Trademark attorney David S. Fleming, a shareholder at intellectual property law firm Brinks Gilson &...

February 01, 2016

CHICAGO—Intellectual property law firm Brinks Gilson & Lione has received top honors for the ...

January 12, 2016

CHICAGO—Twenty-two attorneys at intellectual property law firm Brinks Gilson & Lione have been named to the 2016 ...

February 20, 2015
CHICAGO—Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, received top honors for the fifth year in a row in the recently published fifth annual edition of World Trademark Review 1000—The ...
January 20, 2015
CHICAGO—Twenty-four attorneys at Brinks Gilson & Lione, one of the nation's largest intellectual property law firms, are named to the 2015 Illinois Super Lawyers list by Super Lawyers, a rating service that lists lawyers from more than ...
October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
August 06, 2014
CHICAGO—Six shareholders at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been named among the world's leading trademark lawyers by Who's Who Legal – Trademarks ...
January 30, 2014
CHICAGO—World Trademark Review 1000—The World's Leading Trademark Professionals has rated Brinks Gilson & Lione in the Gold Band as a top Illinois firm and in the Silver Band nationally for trademark matters. According to World ...
December 02, 2013
CHICAGO—David S. Fleming, a trademark attorney and shareholder in the Chicago office of intellectual property law firm Brinks Gilson & Lione, was appointed Counsel to the International Trademark Association (INTA) for the year 2014 at the ...
January 22, 2013
CHICAGO – In the third annual World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services, Brinks Gilson & Lione has been rated in the Gold Band as a top Illinois firm and in the Silver Band nationally for ...
January 04, 2013
CHICAGO – Thirty-eight attorneys from Brinks Gilson & Lione have been named in the 2013 Super Lawyers Illinois Edition, in the categories of Intellectual Property, Intellectual Property Litigation, and Alternate Dispute Resolution ...
October 09, 2012
CHICAGO – Five Brinks attorneys have been recognized in the 2012 International Who’s Who Legal - Trademarks, bringing to eight the number of Brinks attorneys listed in the Who’s Who Legal compendium. Name shareholder Jerome ...
September 20, 2012
CHICAGO – The 2012 Super Lawyers Business Edition has named 24 attorneys from Brinks Gilson & Lione in the categories of Intellectual Property and Intellectual Property – Litigation respectively. The following Brinks attorneys are ...
September 18, 2012
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
Honors
  • International Trademark Association President’s Award, 2016
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2017
  • World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services, 2011, 2012, Tier 1, Illinois, 'Individuals - Contentious,' and 'Enforcement and Litigation', Gold Band, 2013, 2016-2017, National, ‘Individuals - Enforcement and Litigation’, Silver Band, 2017
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009-2012, 2014
  • Who’s Who Legal - Trademarks, 2012, 2014
  • Leading Lawyer, Computer & Technology Law, 2009
  • Listed, “Guide To The World’s Leading Trademark Law Practitioners,” Euromoney Legal Media Group, 2002, 2009
  • University of Illinois Law Review, University of Illinois College of Law
Affiliations
  • International Trademark Association
    Counsel, 2014-2015
    Board of Directors, 2010-2012
    CEO Search Committee, 2011-2013
    Co-Chair, 2011 Advanced Trademark Symposium
    Co-Chair, 2007 Annual Meeting
    Co-Chair, 2004 Trademark Administrators Program
    Programs Committee, 2007-2011
    Past committee memberships: Trademark Reporter Editorial Board
    Oral argument judge, Saul Lefkowitz Moot Court Competition, Midwest Region, 2008-2013
    Faculty member, INTA Trial Advocacy Program, Chicago, Illinois, July 14-15, 2000
  • Intellectual Property Law Association of Chicago
    Board of Managers, 2009-2011
    Chair, Creative Achievement Award Committee, 2007-2009
    Chair, Internet Law Committee, 2005-2006
  • American Bar Association
    Annual Review Vice Chair, Trademark Division, Intellectual Property Law Section, 2010-2011
  • Richard Linn American Inn of Court
    Mentorship Chair, 2007-2008