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Philip A. Jones

Practice Summary

Mr. Jones, chair of the firm’s U.S. Trademark Prosecution group, practices in the fields of trademark and unfair competition law and copyright law. His experience includes litigation in federal courts and before the Trademark Trial and Appeal Board, analyzing clearance opinions, client counseling, trademark and copyright prosecution, false advertising issues and licensing. He has represented clients in the fields of air transportation, Internet search engines, financial services, toys, consumer products, restaurant and retail services, telecommunications, and alternative newspapers. Mr. Jones has also handled domain name arbitration proceedings.

Mr. Jones has given speeches on trademark topics in various venues including the Association of Corporate Counsel Annual Meeting, the Chicago chapter of the Association of Corporate Counsel, and Practising Law Institute.

Representative Matters
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  • Jellyvision, Inc. v. AFLAC Inc., Civil Action No. 10 CV 0426 (N.D. Ill. 2010). Second chair for preliminary injunction plaintiff in trademark suit challenging AFLAC’s use of YOU DON’T KNOW JACK mark. Case pending.
  • United Air Lines, Inc. v. United Airways, Ltd., et al., Civil Action No. 09 CV 4743 (E.D.N.Y. 2009). Lead counsel for United Air Lines, Inc. in trademark infringement suit. Case pending.
  • Garcia v. City of Chicago, Civil Action No. 07 C 5828 (N.D. Ill. 2009). Lead attorney defending the City's use of GRAFFITTI BLASTERS in connection with its graffiti removal services. Court granted City's motion for summary judgment on laches grounds finding the 10 year delay, combined with the City's evidence of prejudice, to be a "poster child for a laches defense."
  • R. J. Reynolds Tobacco Co. v. Premium Tobacco Stores Inc., 79 USPQ2d 1843 (7th Cir. 2006); 58 USPQ2d 1532 (N.D. Ill. 2001). Second chair for R.J. Reynolds Tobacco Co. in gray market cigarettes case against seller of foreign CAMEL, WINSTON and SALEM cigarettes in the U.S. Jury verdict for R.J. Reynolds, awarding over $3.5 million in damages. Jury verdict and awards of damages and interest affirmed on appeal.
  • Playboy Enterprises International, Inc. v. Bennett, Opposition No. 91173441 (T.T.A.B.). Lead attorney representing Playboy in opposition against application for PLAYERS AND BUNNIES and Design for various entertainment services. Board found marks were confusingly similar and ruled in favor of Playboy.
  • Hilti, Inc. v. White Cap Construction Supply, Inc., Civil Action No. 08 CV 1840 (N.D. Ill.). Lead attorney representing Hilti in false advertising action challenging statements made in comparative advertising appearing in defendant's circular. Case settled. Defendant issued retraction.
  • T7 Group, LLC v. Sutton, Civil Action No. 07 CV 1956 (N. D. Ill.).  Representing plaintiff in trademark infringement case asserting rights in the mark BALL'N for apparel. Case pending.
  • AfterHours Formalwear, Inc. v. Tuxedos, Inc., Civil Action No. 06 CV 2460 (N.D. Ill.).  Representing trademark infringement defendant and antitrust counterclaimant in retail formalwear business, issues include abandonment and genericness; plaintiff's motion for preliminary injunction denied. Case pending.
  • Wizard Publications, Inc. v. Kimberly-Clark Corp., et al., Civil Action No. 06-11-BU (D. Mont.).  Representing defendant in copyright infringement claim against images on pull up pants. Case pending.
  • The National Spiritual Assembly of the Baha'is of the United States of America Under The Hereditary Guardianship, Inc. v. National Spiritual Assembly of the Baha'is of the United States of America, Inc., Civil Action No. 64 CV 1878 (N.D. Ill.).  Representing trademark owner in efforts to enforce 1964 prior judgment. Enforcement proceeding pending.
  • 800-JR Cigar, Inc. v. GoTo.com, Inc., et al., Civil Action No. 2:00 CV 3179 (D. N.J.).  Defending Internet search engine in trademark infringement case involving advertiser bids on Internet search terms. Case settled.
  • United Parcel Service of America, Inc. v. United Air Lines, Inc., Opposition No. 125,726 (T.T.A.B.).  Representing United Air Lines, Inc. in opposition to mark UNITED SERVICES. Opposition pending.
  • Siskel Productions, Ltd. and Ebert Co., Ltd. v. Tivo, Inc., Opposition No. 91154867 (T.T.A.B.).  Represented opposers in action involving THUMBS UP mark. Motion to dismiss denied. Opposition pending.
  • Endoplus, Inc. v. Schneiter, et al., Civil Action No. 05 C 7074 (N.D. Ill. 2006).  Declaratory judgment action involving copyright infringement and trademark claims. Represented declaratory judgment defendants/copyright infringement counterclaimants. Case settled.
  • Government Employees Insurance Co. v. Google, Inc. and Overture Services, Inc., 330 F.Supp. 2d 700 (E.D. Va. 2005).  Defended Internet search engine Overture Services, Inc. in trademark infringement litigation involving advertiser bids on Internet search terms incorporating plaintiff's trademark. Case settled.
  • PlasmaNet, Inc. v. Overture Services, Inc., Civil Action No. 02 CV 3075 (S.D. N.Y. 2002).  Defended Internet search engine in trademark infringement case involving advertiser bids on Internet search terms. Case settled.
  • Novak v. Overture Services, Inc., Civil Action No. 02 CV 5164 (E.D. N.Y. 2002).  Defended Internet search engine in trademark infringement case involving advertiser bids on Internet search terms. Case settled.
  • NEXGEN Solutions, inc. v. NexGen Solutions Corp., Civil Action No. 02 CV 736 (W.D. Md. 2002).  Lead counsel representing trademark infringement defendant. Case dismissed for lack of personal jurisdiction.
  • Nebo Systems, Inc. v. Telefonaktiebolaget LM Ericsson, et al., Civil Action No. 02 C 4909 (N.D. Ill. 2002).  Lead counsel representing trademark infringement defendant/cancellation counterclaimant, issues included distinctiveness and likelihood of confusion. Case settled.
  • Star Alliance v. United Air Lines, Inc., Opposition No. 120,963 (T.T.A.B. 2002).  Defended United Air Lines, Inc. in opposition to STAR ALLIANCE mark based on likelihood of confusion. Opposition dismissed.
  • Archer Daniels Midland Co. v. Narula, 2001 WL 804025 (N.D. Ill. 2001).  Lead counsel for defendant/counterclaimant in trademark infringement case involving dispute over priority and relatedness of goods. Client's summary judgment motion granted in part and denied in part. Case settled.
  • Hershy the Tin Man v. Avon Products, Inc., 59 U.S.P.Q.2d 1520 (D. Mont. 2001).  Represented defendant in trade dress case involving jewelry. Summary judgment for defendant granted.
  • Chicago Reader, Inc. v. Current News, Inc., et al., (E.D. Mo. 2000).  Lead counsel representing plaintiff in copyright/trademark infringement case involving the copying of client's THE STRAIGHT DOPE column. Case settled after issuance of temporary restraining order.
  • Perry v. City of Chicago, Civil Action No. 00 C 3827 (N.D. Ill. 2000).  Lead counsel representing defendant in trademark infringement claim. Case settled.
  • Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q. 2d 1385 (T.T.A.B. 1999).  Represented United Air Lines, Inc. in opposition challenging the E-TICKET mark based on genericness. Summary judgment for plaintiff granted.
  • Sloppy Joe's International, Inc. v. Kentucky Textiles, Inc., Civil Action No. 96-10043 (S.D. Fla. 1996).  Represented declaratory judgment defendant/trademark infringement counterclaimant in case involving the SLOPPY JOES mark for clothing. Case settled.
  • Tisket-A-Tasket Group Inc. v. H.S. Craft Mfg. Co., 53 USPQ2d 1284 (S.D. Ind. 1999), and 53 USPQ2d 1380 (S.D. Ind. 1999).  Lead counsel representing the manufacturer of popular LIGHT CICLES holiday decorative lights against manufacturer of competing lights under LIGHTSICLES mark. Obtained Temporary Restraining Order, Preliminary Injunction and Contempt orders.
  • Ty Inc. v. Trading Cards Intl., Civil Action No. 98-7001 (C.D. Cal. 1998).  Lead counsel representing Ty Inc., manufacturer of BEANIE BABIES® plush toys. Obtained Temporary Restraining Order and subsequent Consent Judgment against marketer of trading cards featuring images of Ty's BEANIE BABIES® plush toys.
  • Ty Inc. v. Treasure Yesterday, Civil Action No. 4:99 CV 25, (D. Mo. 1999).  Lead counsel representing Ty Inc. in action against marketer of calendars, mugs and other accessories featuring images of Ty's BEANIE BABIES® plush toys. Obtained Temporary Restraining Order and subsequent Consent Judgment.
  • Northern Trust Corp. v. Northern Trust Services, Civil Action No. 97-CV-04550, (N.D. Ill. 1997).  Represented Northern Trust Corp. in action against Northern Trust Services, owner of domain name NORTHERN-TRUST.COM. Obtained Consent Judgment.
  • Hardee's Food Systems, Inc. v. Hardie's Nut Kettle, Inc., Opposition Nos. 101,551 and 101,621 (T.T.A.B. 1997).  Represented Hardee's Food Systems, Inc. in successful opposition against Hardie's Nut Kettle's applications to register HARDIE'S NUT KETTLE & Design and HARDIE'S KORN KETTLE & Design.
  • Recreation Services, Inc. v. Odyssey Fun World Inc., 41 USPQ2d 1856 (N.D. Ill. 1997). Represented Recreation Services, Inc. in trademark infringement litigation against Odyssey Fun World Inc.
Presentations
  • “Hot Topics in Intellectual Property Law,” Association of Corporate Counsel, Chicago Chapter, Chicago, Illinois, July 1, 2010
Memberships & Affiliations
  • International Trademark Association