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David S. Fleming

Practice Summary

David S. Fleming, who chairs Brinks' Trademark Litigation Practice Group, handles trademark and unfair competition matters for clients in a wide range of service and manufacturing industries. His clients have included companies engaged in:

  • Internet search engine services and other Internet-related businesses
  • Motion picture services
  • Consumer products
  • Franchising in areas such as real estate brokerage, hotel and car rental services
  • Financial services, including mortgage lending services, asset-based and other business lending services, and insurance and title services
  • Cellular and other communications equipment manufacturing and marketing
  • Truck manufacturing and automobile parts manufacturing services

Mr. Fleming is active in the International Trademark Association. Since January 2010, he has served on the Association’s Board of Directors. He also serves on the Association's Programs Committee. Previously, he was co-chair of the team organizing INTA's 2007 Annual Meeting, which was held in Chicago. He also was co-chair of INTA's 2004 Trademark Administrators Program in Arlington, Virginia. In July, 2000, he served on the faculty for INTA's Trademark Trial Advocacy program in Chicago. He has been a member of the Editorial Board of The Trademark Reporter.

Mr. Fleming graduated from the University of Illinois College of Law in 1981, where he published in the University of Illinois Law Review. He began his career in commercial litigation, and since 1990, has concentrated his practice in trademark and unfair competition litigation.

Honors/Distinctions
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2010
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009
    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
Representative Matters
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Federal and State Courts:

  • 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.

    • Recent Trademark Trial And Appeal Board Matters:

  • Jonathan Drew, Inc. v. GMB, Inc., Opposition No. 91183057 (T.T.A.B.). Representing applicant for mark CAMEL CRUSH.
  • 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 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.
Publications
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Presentations
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  • "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 Hofer Gilson & Lione Seminar, Chicago, August 1, 2007.
  • "Use of Keywords in Internet Advertising," (speaker), Brinks Hofer 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 Hofer 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, Ilinois 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 Hofer Gilson & Lione the #2 "Contentious Trademark" firm in the United States.
  • Quoted in April 2000 Managing Intellectual Property article naming Brinks Hofer Gilson & Lione's trademark group the "US Team of the year."
Memberships & Affiliations
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  • International Trademark Association
    Board of Directors, 2010-2012
    Co-Chair, 2007 Annual Meeting
    Co-Chair, 2004 Trademark Administrators Program
    Programs Committee, 2007-present
    Past committee memberships: Trademark Reporter Editorial Board
    Oral argument judge, Saul Lefkowitz Moot Court Competition, Midwest Region, 2008, 2009
    Faculty member, INTA Trial Advocacy Program, Chicago, Illinois,
    July 14-15, 2000
  • Intellectual Property Law Association of Chicago
    Board of Managers, 2009-present
    Chair, Creative Achievement Award Committee, 2007-2009
    Chair, Internet Law Committee, 2005-2006
  • American Bar Association
    Trademark Litigation Committee, Intellectual Property Law Section (2008-2009
  • Intellectual Property Owners Association
  • Richard Linn American Inn of Court
    Mentorship Chair, 2007-2008
  • Chicago Bar Association
     
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
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    Shareholder
    Chair, Trademark Litigation Practice Group, 2009
    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