Practice Groups

MOVING FORWARD
WITH TECHNOLOGY

International Trademark
Brinks Gilson & Lione provides a worldwide legal protections to ensure that our clients are able to obtain and maintain all available legal protections.

With Brinks’ experience as a leading intellectual property law firm and our vast array of international resources, our attorneys are equipped to handle all aspects of our clients’ trademark issues. Whether prosecuting applications, leading large scale international disputes or negotiating worldwide co-existence agreements, Brinks is the only firm you’ll need to protect your trademarks throughout the world.

Selected Representative Matters
  • Handled a global rebrand in over 80 jurisdictions for one of our clients house marks that required synchronized filings in order to maintain complete confidentiality so that infringers half way around the world could not use time differences to get infringing applications on file during the client’s filing window.
  • Had two large scale two story infringing signs removed off the side of a building in Kua Lumpur on behalf of a client.
  • Seized a warehouse full of counterfeit clothing, had our client’s mark declared famous before the Philippines Supreme Court, handled the ensuing criminal investigation related to that seizure including getting a motion granted requiring the defendant to remain in his home country pending resolution of the dispute because he was an international flight risk.
  • Won a cancellation action in Australia based not on our client’s use but based on the number of our client’s loyalty program members living in Australia.
Trademark Search and Clearance

When searching new marks, we offer our clients a number of different search options. Our experience has taught us that each client is unique and each search should be tailored to the client’s individual needs.

Counsel and Strategy

Beyond searching new marks, we offer our clients a great deal of individual counsel and strategy. Formulating an international filing strategy prior to applying is essential in today’s ultracompetitive business climate. With ever-increasing costs, a client and its legal counsel must work together to formulate the best strategy for international trademark protection, whether it be a Madrid Protocol filing or a CTM (European Union) application. Our experienced attorneys can help a client of any size achieve the best possible protection for its new marks.

Foreign Associate Network

Once an application is filed, Brinks will continue to provide increased value to clients. In the nearly 100 years that we have been involved in protecting our clients’ international trademarks, we have built up a vast array of foreign associates. These foreign associates are not anonymous names, but skilled attorneys from nearly every country in the world. Brinks has worked with many of these foreign associates for years, forming personal bonds and long-standing trusts. These foreign associates are all among the finest attorneys each country has to offer and each provide unique insight into his or her home country. It is through these international relationships that Brinks is able to quickly and effectively navigate trademark applications through so many countries. Knowing the intricacies of each country’s Trademark Office is invaluable knowledge that we at Brinks pass along to our clients through reduced costs and increased speed.

Forward Thinking
alert

This past Monday, June 19, the Supreme Court unanimously ruled that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the First Amendment.  Matal v. Tam, No. 15-1293, 582 U.S. ___ (2017).  Section 2(a), often referred to as the “disparagement clause”...

alert

On May 22, 2017, the Supreme Court of the United States issued a decision in TC Heartland LLC v. Kraft Foods Group Brands LLC (Case No. 16-341) altering the landscape of venue for patent infringement litigation...

in the media
On April 5, 2017, Trademark attorneys, Josh Frick, Susan Frohling and Emily Kappers were mentioned in the Chicago Daily Law Bulletin for hosting the “International Trademark Searching and Filing Strategies for a Global Economy” ...
multimedia

Attorneys from Brinks' Trademark and Unfair Competition practice group will focus on a hypothetical global launch...

Press Releases

CHICAGO—Joshua S. Frick, Susan Frohling, and Emily Kappers, trademark attorneys at intellectual property law firm Brinks Gilson & Lione, will host the webinar “International Trademark Searching and Filing Strategies for a Global Economy” on April 4, 2017, at 12:00 p.m. CDT...

alert

The maker of “My Other Bag” tote bags received its hoped-for holiday gift in late December ...

alert

As part of its annual “Special 301” identification and review of countries that deny adequate and...

in the media
On December 15, 2016, David Fleming spoke with the INTA Bulletin about his road to trademark law, how the practice has changed, and gave his advice for young lawyers.  This article first appeared here in the INTA Bulletin and was ...
Press Releases

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

in the media
On October 24, 2016, Dave Fleming was mentioned in IP Frontline for receiving the 2016 President’s Award from the International Trademark Association (INTA).  Please click here to see the article.
book

Jeffery A. Handelman wrote the Guide to TTAB Practice for Aspen Publishers in 2007. ...

alert
The Federal Circuit recently issued a decision that could be very helpful to trademark applicants. On July 20, 2015, the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s (“TTAB”) holding that Juice ...
in the media
On March 23, 2015 Brinks was mentioned in the Law360 article, 'Law360 Reveals Largest IP Boutiques.' Click here to read more.
alert
On Wednesday, January 21, 2015, the Supreme Court issued its decision in Hana Financial, Inc. v. Hana Bank , No. 13-1211, holding that trademark “tacking” is a question to be decided by a jury. “Tacking” is a principle in ...
Press Releases
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 ...
in the media
Brinks was mentioned in the Law360 article, '12 Firms Are The Full IP Package, In-House Counsel Say,' on July 6, 2014. Twelve firms were chosen based on corporate counsel surveyed in the new Intellectual Property Outlook report ...
event
Charles M. McMahon, Lyle Vander Schaaf and Carl C. Charneski will be speaking at the IP Strategy Summit: Enforcement, on June 19 in Silicon Valley, CA. Charles will speak in the morning at a session entitled “Utilizing The ITC In ...
Press Releases
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
Press Releases
ANN ARBOR - Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announces the third edition of its intellectual property law primer, The Basic Principles of Intellectual Property Law, is now available in ...
Press Releases
CHICAGO – Eleven attorneys at intellectual property law firm Brinks Gilson & Lione have been recognized as IP Stars for 2013 by Managing Intellectual Property magazine, for their insights into the intricacies of practicing IP law and their ...
alert
The Internet has changed forever. In 2012 over 1,900 applicants applied for new top level domains (gTLDs to the right of the dot., e.g., .brinkshofer), to the Internet Corporation for Assigned Names and Numbers (ICANN), many more than the 500 ...
Press Releases
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 ...
Press Releases
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
Press Releases
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 ...
publication
Carl C. Charneski and Tiffany W. Shimada penned “Does Louis Vuitton's Recent Victory at the US International Trade Commission Mark that Tribunal as a Viable Alternative to District Court? ” for the December/January issue of World ...
Press Releases
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 ...
Press Releases
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 ...
Press Releases
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 ...
Press Releases
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 ...
publication
Jennifer J. Theis wrote 'TTAB Dismisses Rolex’s Claim of Likelihood of Dilution by Blurring,' for the January 16, 2012, edition of the WTR Daily. This article first appeared on WTR Daily, part of World Trademark Review, in January ...
publication
At the beginning of 2012, Brinks Gilson & Lione welcomed James R. Sobieraj as the firm's new president. Please click here for a personal message from Jim, as well as details on the growth of the firm.
book

Trademark attorneys and shareholders David Fleming and John Gabrielides ...

publication
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
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
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.
Group Chairs
Contact
Shareholder
Chicago, IL
Group Chairs