Jerome Gilson
Shareholder
Overview

“I have always seen trademark law as a form of public interest law. While it obviously protects business good will in its broadest sense, it manifestly protects the public as it combats consumer likelihood of confusion and deception.” 

One of the most respected names in trademark and unfair competition law, Jerry Gilson has provided wise counsel to Brinks Gilson & Lione clients for more than 50 years. As the original author of the renowned treatise Gilson on Trademarks (LexisNexis), he has helped shape the law, the business trajectories of his clients and the careers of hundreds of lawyers. 

Throughout his distinguished career, Jerry has handled significant trials and appeals in federal court, as well as proceedings before the Trademark Trial and Appeal Board. He has also mediated federal court trademark infringement actions, and presently counsels clients on a wide variety of trademark litigation and expert witness matters. He is a Life Director of the Public Interest Law Initiative, and mentors law students who aspire to careers in public interest law.

Jerry has received virtually every major honor available in his field, including Lifetime Achievement Awards from World Trademark Review and Managing Intellectual Property. In 2007 he joined such luminaries as Thomas Jefferson, James Madison and Thomas Edison when inducted into the IP Hall of Fame, sponsored by Intellectual Asset Magazine. But the one he prizes most is the 2001 International Trademark Association (INTA) President’s Award for “outstanding and lasting contributions to the international trademark community.”

Education
  • J.D.,
    Northwestern University School of Law, 1958
  • A.B.,
    University of Missouri, 1952
Bar Admissions
  • Illinois Supreme Court
  • Supreme Court of the United States
  • U.S. Court of Appeals, 11th Cir.
  • U.S. Court of Appeals, 3rd Circuit
  • U.S. Court of Appeals, 4th Circuit
  • U.S. Court of Appeals, 5th Circuit
  • U.S. Court of Appeals, 7th Circuit
  • U.S. Court of Appeals, 8th Circuit
  • U.S. Court of Appeals, 9th Circuit
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, N.D. Illinois, Trial Bar
Experience | Legal Experience

Brinks Gilson & Lione, Chicago, Illinois
1963-Present

Stevenson, Conaghan, Valde & Hackbert (now Dykema Gossett PLLC), Chicago, Illinois
1958-1963

Experience | Civic Activities
  • Life Trustee, Luminarts Cultural Foundation
  • Life Director, Public Interest Law Initiative
Experience | Military Experience
United States Army, 1952-1955
Army Security Agency (Top Secret Code Word Clearance)
Experience | Teaching Experience
The John Marshall Law School, Chicago, Illinois
Adjunct Professor, 1960-1962
Course on Wills, Trusts and Estates.
Experience | Overview
  • Jerry is the original author of the 40-year-old treatise Gilson on Trademarks  (formerly Trademark Protection and Practice)(LexisNexis), cited in numerous court decisions, the latest one by the United States Supreme Court in 2015. In 2006 his daughter, Anne Gilson LaLonde, succeeded him as Editor, and they now co-author the annual LexisNexis trademark law articles published to coincide with the Annual INTA Meeting.
  • Jerry served as Reporter on INTA’s Trademark Review Commission, a Blue-Ribbon group whose analysis of the Lanham Act in the Trademark Law Revision Act of 1988 led to far-reaching changes. Jerry also testified before the United States Congress at the time and assisted in drafting the legislation.
  • From 1988 to 1993 Jerry was an Advisor on the American Law Institute project that led to the publication of the authoritative Restatement (Third) of the Law of Unfair Competition.
  • For more than 10 years, Jerry was a Panelist on the INTA Panel of Mediators. He participated in establishing the Lanham Act Mediation Local Rule for the United States District Court for the Northern District of Illinois.
  • Jerry has long been a leader at Brinks Gilson & Lione, the firm that has borne his name since 1983. He has served the firm as Managing Partner, Board of Directors member, Chair of the Trademark Practice Group and a member of many firm committees. He is especially proud of revitalizing the firm's Pro Bono Committee and helping make it a viable, effective public interest force in the Chicago community.
Forward Thinking
in the media
January 09, 2015
Anne Gilson LaLonde and Jerome Gilson’s “Proving Ownership Online … And Keeping It: The Internet’s Impact on Trademark Use and Coexistence,” a selection from the pair’s own Gilson on Trademarks, was reprinted in ...
in the media
September 23, 2014
On September 23, 2014, Chicago Daily Law Bulletin published an article featuring Brinks shareholders Jerome Gilson and Brad Lane. The article highlighted the experience that law student Militza Pagan gained thanks to the 2014 Gilson Honorary ...
publication
May 2014
Jerome Gilson and Anne Gilson LaLonde penned 'Proving Ownership Online…And Keeping It: The Internet's Impact on Trademark Use and Coexistence,' for LexisNexis. Reprinted from Gilson on Trademarks with permission. Copyright 2014 ...
publication
September/October 2011
Jerome Gilson and Anne Gilson LaLonde’s article “Trademarks Laid Bare: Marks that May Be Scandalous or Immoral,” was published in the September/October 2011 issue of The Trademark Reporter. Printed with permission. Click here to ...
publication
August/September 2011
Jerome Gilson is profiled after receiving the Lifetime Achievement Award from World Trademark Review in the August/September 2011 issue of the publication. This article first appeared in World Trademark Review magazine issue 32, published by The ...
publication
May 19, 2011
Anne Gilson LaLonde and Jerome Gilson wrote 'Trademarks Laid Bare: Marks that May Be Scandalous or Immoral,' for LexisNexis on May 19, 2011.  The article is the 13th in the Matthew Bender/LexisNexis series that began in ...
book
Supplements, 1975-Present
Jerome Gilson is the original author of Gilson on Trademarks, a 10 volume treatise published by LexisNexis/Matthew-Bender in 1974. Supplements are available from 1975-present. For more information or to purchase a copy, visit  LexisNexis.
publication
March 01, 2010
Jerome Gilson coauthored 'Naming Rights – and Wrongs: A Road Map to Protecting Personal Names,' with Anne Gilson LaLonde for LexisNexis in March 2010.
publication
November/December 2008
publication
October 2007
publication
2005
This article was published in the July/August 2005 issue of The Trademark Reporter, Volume 95, Number 4, and is reproduced here with permission of Matthew Bender & Company, a member of the LexisNexis Group.
publication
November-December 2004
Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 1360 (November-December 2004).
publication
2004
Article reproduced by Brinks Gilson & Lione with permission. Copyright 2004, Matthew Bender & Company, Inc., a member of the LexisNexis Group. All Rights Reserved.
publication
2003
Article reproduced by Brinks Gilson & Lione with permission. Copyright 2003, Matthew Bender & Company, Inc., a member of the LexisNexis Group. All Rights Reserved.
Presentations
  • "Trade Marks: The Future of the Advertising Function," University College of London's Institute of Brand and Innovation Law, London, England, March 23, 2011
  • "Anything Goes: The Lanham Act at 60 Spawns Sensory Trademarks," West Virginia University Research Corporation and the College of Law's conference From Coal to Content: The Role of Intellectual Property and Technology in the New Economy, Morgantown, West Virginia, September 19, 2006
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," The Institute of Continuing Legal Education Intellectual Property Law Summer Institute, Acme, Michigan, July 22, 2006
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Other Non-Traditional Trademarks," The Annual Massachusetts Continuing Legal Education Intellectual Property Law Conference, Boston, Massachusetts, June 7, 2006
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Other Non-Traditional Trademarks," The John Marshall Law School 50th Annual Conference on Developments in Intellectual Property Law, Chicago, Illinois, May 26, 2006
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," 8th Annual Richard C. Sughrue Symposium On Intellectual Property Law and Policy, Akron, Ohio, March 13, 2006
  • "The Lanham Act Turns 60, Amid Cinnamon Buns, Quacking Ducks and Cherry-Scented Racecar Exhaust," Arizona State Bar Association Intellectual Property Section, Phoenix, Arizona, February 24, 2006
  • "Ethical Issues for Trademark Practitioners," co-presenter, a distance-learning workshop in conjunction with the International Trademark Association and University of Akron School of Law, December 10, 2004
  • "Canadian and U.S. Trademark Hot Topics: Dilution, Functionality, Fair Use, Trade Dress, Protection of Colour and Other Non-Traditional Marks," University of Victoria International Intellectual Property Law Conference, Vancouver, British Columbia, Canada, July 17, 2004
  • "Nontraditional Trademarks: Legal and Marketing Opportunity or Just Plain Bizarre?" Arizona State Bar Association Intellectual Property Section, Phoenix, Arizona, March 26, 2004
  • "LexisNexis: Advanced Trademark Strategies," chair and moderator, The Ritz-Carlton, Battery Park, New York, October 23-24, 2003
  • "Copyright and Trademark Infringement, Anti-Counterfeiting, and Parallel Importation," St. Peter's Oxford/College University Summer 2003 Intellectual Property Conference, Oxford, England, July 25, 2003
  • "LexisNexis Presents: Trademark Law: Beyond The Basics," chair and moderator, The Westin Hotel, Chicago, Illinois, April 15, 2003
  • "Law Firm Strategies Under The Madrid Protocol," (panelist, IIT Chicago-Kent College of Law, Chicago, Illinois, March 31, 2003
  • "Dilution Protection For Non-Traditional and Design Marks," panelist, INTA Trademark Dilution Forum, Arlington, Virginia, March 6, 2003
  • "Copyright and Trademark Infringement, AntiCounterfeiting and Illegal Imports," panelist at the Joint International Intellectual Property Summer Program in Victoria, British Columbia, Canada, July 11, 2002
  • "Advanced Trademark Strategies," chair and speaker, LexisNexis/Mealey Publications, a two-day program, speech "The Lanham Act: Time For A Face Lift," Chicago, Illinois, April 15-16, 2002
  • "The United States Patent and Trademark Office Presents 2001: The Trademark Office Goes E-Commerce – A Timely Dialogue With Commissioner for Trademarks Anne H. Chasser and Other Top USPTO Officials," panelist, IIT Chicago-Kent College of Law, Chicago, Illinois, February 16, 2001
  • "The Northern District of Illinois Trademark Mediation Program: A Panel Discussion of its Progress and Ideas for Improvements or Alternative Approaches," panelist, American Intellectual Property Law Association Spring Meeting, Chicago, Illinois, April 23, 1999
  • "Trademarks And Countdown 2000: Is There A Limit To Protection?" Oregon Patent Law Association (OPLA) and Washington State Patent Law Association (WSPLA), Gleneden Beach, Oregon, April 9, 1999
  • "Identifying the Identifiers: What Qualifies as a Trademark?" panelist, International Trademark Association Evolution and Revolution In Trademark Law, an Interactive Symposium for Advanced Practitioners, New York, New York, March 4, 1999
  • "U.S. Trademark Law," Hikaku Ho Kenkyu Center, Osaka, Japan, June 6, 1997
  • "U.S. Trademark Law," Osaka Trademark Association, Osaka, Japan, June 5, 1997
  • "U.S. Trademark Law," Benrishi Club, Tokyo, Japan, June 3, 1997
  • "Cyberspace And Dilution: The New Trademark Frontiers," Oregon and Washington Patent Law Associations Joint Conference, Gleneden Beach, Oregon, April 25, 1997
  • "Global Trademark Challenges: What's New, What's Hot!," panelist, Price Waterhouse Intellectual Property Leadership Forum, Tucson, Arizona, February 13, 1997
  • "Federal Trademark Dilution Act of 1995," Chicago Bar Association, The Young Lawyers Section, Chicago, Illinois, May 1, 1996
  • "Staking Claims to the Future," panelist on workshop "The Consumer Survey Battle: What's Old, What's New, What Wins," Price Waterhouse Intellectual Property Leadership Forum, Phoenix, Arizona, February 16, 1996
Representative Matters
  • R.J. Reynolds Tobacco Company and GMB, Inc. v. Premium Tobacco Stores, Inc., d/b/a Cigarettes Cheaper, 99C1174. Jury verdict for plaintiffs federal trademark infringement, dilution and related counts. Damages of $3,560,002 awarded (May 6, 2004) (affirmed on appeal).
  • Zimmerman v. National Association of Realtors, 70 U.S.P.Q.2d 1425 (TTAB 2004).
  • Freeman v. National Association of Realtors, 64 U.S.P.Q.2d 1700 (TTAB 2002).
  • Hershy The Tin Man v. Avon Products Inc., 59 U.S.P.Q.2d 1520 (D. Mont. 2001). Affirmed and remanded for findings of fact (9th Cir. 2001).
  • MicroStrategy Inc. v. Motorola Inc., 58 U.S.P.Q.2d 1278 (4th Cir. 2001).
  • GoTo.com, Inc. v. Walt Disney Co., 53 U.S.P.Q.2d 1652 (9th Cir. 2000).
  • The BF Goodrich Company v. Tire Deals Inc., CV 2607-ODE, consent judgment (N.D. Ga. 2000).
  • Navistar International Transportation Corp. v. Freightliner Corp., 49 U.S.P.Q.2d 1116 (N.D. Ill. 1998).
  • Navistar International Transportation Corp. v. Freightliner Corp., 49 U.S.P.Q.2d 1108 (N.D. Ill. 1998).
  • Danjaq LLC v. Sony Corp., 49 U.S.P.Q.2d 1341 (C.D. Cal. 1998).
  • Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 44 U.S.P.Q.2d 1217, 122 F. 3d 1379 (11th Cir. 1997).
  • Navistar International Transportation Corp. v. Freightliner Corp., 44 U.S.P.Q.2d 1382 (N.D. Ill. 1997).
  • SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F. 3d 1325 (11th Cir.), cert. denied (1996).
Press Releases & Events
June 06, 2017

CHICAGO—Best Lawyers, a widely-respected peer review publication for the legal profession, recently recognized eleven attorneys at intellectual property law firm Brinks Gilson & Lione in its 2017 edition of Illinois’ Best Lawyers...

May 26, 2017

CHICAGO—Chambers USA, an annual guide to the world’s best lawyers and law firms, has again ranked Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, in Band 1 in the intellectual property practice area for Illinois, and has recognized four Illinois-based Brinks attorneys for their notable contributions to the practice of IP law...

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 ...

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 ...

August 17, 2015
CHICAGO—Thirteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, were recently listed in The Best Lawyers in America 2016.  Eleven of the honored attorneys are based in ...
May 19, 2015
CHICAGO—Chambers USA, an annual guide to the world's best lawyers and law firms, has elevated intellectual property law firm Brinks Gilson & Lione to Band 1 for IP law firms in Illinois, its highest designation. Four individual ...
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 19, 2014
CHICAGO—Sixteen shareholders at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America© 2015. Thirteen of the ...
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 ...
July 09, 2014
CHICAGO—Brinks Gilson & Lione has been recognized by The Legal 500 for the sixth consecutive year as one of the top U.S. firms for patent prosecution in utility and design, and for the first time the firm ranks as a top U.S. firm for ...
June 05, 2014
CHICAGO—Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, has again this year received high recognition in Chambers USA's annual rankings of the nation's law firms, once more placing in ...
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 ...
August 05, 2013
CHICAGO—Chambers USA has placed Chicago-based intellectual property law firm Brinks Gilson & Lione in Band 2 for IP law firms in its 2013 national rankings, and has recognized five Brinks lawyers for their achievements in the intellectual ...
June 13, 2013
CHICAGO – Loyola University School of Law student Emily Hardy has been named the Jerome Gilson Honorary Intern by the Public Interest Law Initiative (PILI). Jerome Gilson, a senior shareholder at intellectual property law firm Brinks Gilson & ...
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 ...
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 ...
October 05, 2012
CHICAGO – Eighteen attorneys from intellectual property law firm Brinks Gilson & Lione have been named as leaders in intellectual property law in the 2013 edition of The Best Lawyers in America, the oldest and most respected peer-review ...
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 ...
June 15, 2012
CHICAGO – For the tenth consecutive year, Brinks Gilson & Lione has been named among the top intellectual property law practices in Illinois in the annual Chambers USA: America’s Leading Lawyers for Business. In addition, Brinks ...
Honors
  • Selected as one of "The Best Lawyers in America," with special mention as one of a distinguished group of attorneys who have been listed for ten years or longer, 2005-2017
  • Chambers USA: America's Leading Lawyers for Business, Leading Illinois Intellectual Property Lawyers, 2004-2017
  • Illinois Super Lawyers, Intellectual Property Law, 2005-2017
  • Regular appearances in Who’s Who in AmericaWho’s Who in American LawWho’s Who in the WorldWho's Who Legal USA: TrademarksWho's Who Legal: IllinoisWho’s Who Legal - Trademarks, and International Who’s Who of Business Lawyers, 1994-2015
  • Expert Guides to the World's Leading LawyersBest of the Best, 2007, 2015
  • Leading Lawyers Network, 1999-2005, 2007, 2009-2014
  • World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services, 2011, 2012, Tier 1, 'Individuals - Contentious', 2013, Luminary, 2013, 2017 
  • Trademark Law Lawyer of the Year - Chicago, The Best Lawyers in America, 2012
  • Lifetime Achievement Award, World Trademark Review, 2011
  • Burton Award for Legal Achievement (with Anne Gilson LaLonde), 2003, 2005, 2006, 2011
  • PLC Which Lawyer?, Recommended Intellectual Property Lawyer in Chicago, 2010
  • Lifetime Achievement Award, Managing Intellectual Property, 2008
  • Inducted into the Intellectual Property Hall of Fame, 2007
  • Ranked in top 25 in Managing Intellectual Property’s 2006 Guide to the World’s Leading Trade Mark Law Practitioners
  • Best of the Best Expert Guide, 2005
  • Ranked one of the top 5 U.S. attorneys by Euromoney’s Best of the Best Expert Guide. Received the most votes worldwide, June 2003
  • International Trademark Association President’s Award, 2001
  • Top Trademark Lawyer in the World, Euromoney Managing Intellectual Property, 1998
  • America’s Top Lawyers
Affiliations
  • International Trademark Association
    Counsel, 1991-1994
    Board of Directors, 1978-1980
    Reporter, Trademark Review Commission of International Trademark Association, 1985-88. Negotiated and drafted portions of Trademark Law Revision Act of 1988, the first comprehensive revision of 1946's Lanham Act.
    Chairman, Ad Hoc Committee on Alternative Forms of Dispute Resolution, 1983-1985
    Publications Committee, 1980-1983
    Lawyers Advisory Committee, 1976-1978
    Federal Legislation Committee, 1975-1976
  • American Bar Association
  • Intellectual Property Owners Association
  • Mediator, CPR Institute for Dispute Resolution/INTA Alternative Dispute Resolution Joint Venture, 1994-2008
  • Advisor, American Law Institute project on the Restatement (Third) of the Law of Unfair Competition, 1986-1991
  • Admitted to practice law in U.S. Supreme Court and eight U.S. Courts of Appeals
Back to Top