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Joseph T. Kucala, Jr

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Contact
333 S. Wabash Avenue
Suite 2700
Chicago, Illinois 60604
jkucala@NorvellIP.com
Direct   773-321-0237                           Cell       630-453-8380                          Fax       312-268-5063

 

Education
J.D., University of Illinois at Urbana-Champaign, 2001

B.A., Loyola University of Chicago, 1998

Admissions
Illinois Supreme Court
U.S. Dist. Court, N.D. Illinois
U.S. Dist. Court, C.D. Illinois
U.S. Dist. Court, E.D. Wisconsin
U.S. Dist. Court, W.D. Wisconsin         U.S. Court of Appeals, Seventh Circuit

Practice Summary

Joe Kucala is a partner at Norvell IP and regularly advises large multi-national companies on all areas of intellectual property and advertising law, with particular emphasis on brand protection and enforcement across a range of industries. Joe’s underlying goal is to strengthen his clients’ famous brands and their value and has a clear focus and strategy to do so. His practice focuses on U.S. and international multi-jurisdictional intellectual property enforcement actions; client counseling on marketing, sponsorship, and trademark licensing arrangements; conducting intellectual property audits; advising on anti-counterfeiting matters; and United States and international trademark and copyright prosecution.  Joe's depth of experience affords him keen insight into his client's businesses.

In addition, Joe provides extensive advice to clients regarding a variety of transactional matters, such as IP licensing agreements, entertainment-focused ventures, joint marketing agreements and software licensing.  His clients rely on his practical approach and experience in a wide range of industries.  Prior to joining Norvell IP, Joe was in-house counsel with the Trademark & Copyright Group of Hewlett-Packard Company’s Legal Department.  While at HP, he had worldwide responsibility for trademark and copyright matters for one of HP's key business units and regularly advised his clients on the adoption and protection of trademark and copyright assets, and provided extensive legal advice on worldwide intellectual property enforcement issues, including counterfeit enforcement efforts.


Recent Recognitions

  • World Trademark Review 1000, 2015 & 2016
  • Leading Lawyers Network, Illinois Emerging Lawyers 
  • Secured $20+ million judgment against trademark counterfeiters.
  • Illinois Rising Stars, 2011

 

Areas of Emphasis and Experience

  • Intellectual property enforcement actions, including foreign litigation and domain name disputes
  • Worldwide trademark counseling, global trademark clearance, and portfolio management
  • Transactional and licensing arrangements
  • Worldwide anti-counterfeiting counseling and enforcement strategy
  • Advertising and marketing review, including social media legal issues


View Representative Litigation Matters

Recent Federal Court Matters:

CME Group IInc. et al. v. Peter Jonhtham et al., (N.D. Ill.) Represented CME Group in trademark counterfeiting, phishing and copyright infringement action and secured Temporary Restraining Order and multi-million dollar judgment).

Commodity Exchange, Inc. v. Comex Depository Solutions, LLC et al. (D. Nev.) Represented Commodity Exchange in trademark infringement and cybersquatting action concerning use of the COMEX trademark.

Virgin Enterprises Limited v. Jai Mundi, Inc. (N.D. Ill) Represented Virgin Enterprises in trademark infringement and dilution action concerning use of the VIRGIN trademark.

Emergency Essentials, LLC v. Bluehost, Inc. (D. Utah) Represented Bluehost in trademark infringement action.

721 Bourbon, Inc. v. Lioness Restaurant Group, (N.D. Ill.) Represented 721 Bourbon in trademark infringement lawsuit concerning use of the HAND GRENADE trademark.  Resulted in multi-million dollar judgment in client’s favor.

CME Group Inc. et al. v. Doe No. 1 et al., (N.D. Ill.) Represented CME Group in TRO action regarding trademark counterfeiting, cybersquatting and copyright infringement lawsuit concerning use of the CME GROUP trademark and copyrighted materials. Resulted in multi-million dollar judgment in client’s favor.

The Worth Company v. Attwood Corp., (W.D. WI) Represented Attwood in trade dress infringement action.

Windermere Holdings, Inc. v. Your Art Creations, (C.D. Ill.) Represented Windermere Holdings (Thomas Kinkade) in copyright infringement action.

Virgin Enterprises Limited v. Artistic Cube et al., (N.D. Ill.) Represented Virgin Enterprises in trademark infringement action concerning use of the VIRGIN trademark.

Brunswick Corporation v. G Richard M Associates, Inc. d/b/a PreRay et al. (S.D.N.Y.)  Represented plaintiff Brunswick Corporation in trademark infringement and cybersquating action concerning use of the SEA RAY trademark.

United States Soccer Federation, Inc., v. TSA Stores, Inc., (N.D. Ill.) Represented plaintiff U.S. Soccer in TRO trademark infringement action concerning use of the U.S. Soccer Trademark and Logo.

Chicago Mercantile Exchange Inc. v. Globex Foreign Exchange Corp. (N.D. Ill.)  Represented plaintiff Chicago Mercantile Exchange Inc. in trademark counterfeiting, trademark infringement, and cybersquatting action.

Swanson Tool Co., Inc. v. Illinois Industrial Tool, Inc. et al. (N.D. Ill.) Represented Swanson Tool in TRO/seizure trademark counterfeiting and trademark infringement action.

The Chamberlain Group, Inc. v. GMI Holdings, Inc. et al. (N.D. Ill.) Represented defendant Rhine Electronic Co., Ltd. in patent infringement lawsuit.

Kingsbury International et al. v. Trade The News, Inc. (N.D. Ill.) Represented defendant Trade The News in copyright infringement lawsuit.

Robert Trent Jones Licensing Group v. GFSI, Inc. (N.D. Cal.) Represented plaintiff Robert Trent Jones Licensing Group in suit alleging trademark infringement and breach of licensing agreement.


Recent Trademark Trial and Appeal Board Matters:

Chicago Mercantile Exchange Inc. v. CMC Markets UK Pllc (T.T.A.B.) (Representing CME in opposition proceeding concerning the CME trademark).

New York Mercantile Exchange, Inc. v. North American Monetary Exchange (T.T.A.B.) (Representing NYMEX in opposition proceeding concerning the NYMEX trademark).

Abbott Laboratories v. Sodilac (T.T.A.B.) (Representing Abbott in opposition proceeding concerning the SIMILAC trademark). 

Pivot, Inc. v. Pivot Technology Solutions, Inc. (T.T.A.B.) (Represented Pivot in opposition proceeding concerning the PIVOT trademark).

Major League Baseball Properties, et al. v. Brunswick Corp.  (T.T.A.B.) (Represented Brunswick in opposition proceeding).

Abbott Laboratories v. Societe Wang and Neil (T.T.A.B.) (Represented Abbott in opposition proceeding concerning the SIMILAC trademark).

Abbott Laboratories v. Yi Yum Tang (T.T.A.B.) (Represented Abbott in opposition proceeding concerning the SIMILAC trademark).

Rayglass Sales & Marketing v. Protector Boats USA, Inc. (T.T.A.B.) (Represented Rayglass in cancellation proceeding concerning PROTECTOR trademark).

Guthy-Renker LLC v. Abbott Laboratories (T.T.A.B.) (Represented Abbott in opposition proceeding concerning PREACTIV trademark).

Chicago Mercantile Exchange Inc. v. UMN, Inc. (T.T.A.B.) (Represented CME in opposition proceeding concerning GLOBEX trademark).

Chicago Mercantile Exchange Inc. v. Globex International Inc. (T.T.A.B.) (Represented CME in opposition proceeding concerning GLOBEX trademark).

Brunswick Corp. v. Safadago (T.T.A.B.) (Represented Brunswick in opposition proceeding concerning LIFESTEP trademark).

Brunswick Corp. v. Sunkissed Enterprises, Inc. (T.T.A.B.) (Represented Brunswick in cancellation & opposition proceedings concerning the AQUAPALOOZA trademark).

Chicago Mercantile Exchange Inc. v. CMDirect, Inc. (T.T.A.B.) (Represented CME in opposition proceeding concerning the CME trademark).

Leapfrog Online Customer Acquisition, LLC v. Leap Frog Apps Inc.(T.TA.B.) (Represented Leapfrog Online in opposition proceeding concerning LEAPFROG trademark).

Playboy Enterprises International, Inc. v. William F. Braconi et al. (T.T.A.B.)  (Represented Playboy Enterprises in opposition proceeding concerning the Rabbit Head Design).

Virgin Enterprises Ltd. v. Michael Casey (T.T.A.B.) (Representing Virgin Enterprises in pending opposition proceeding concerning the VIRGIN mark).

Chicago Mercantile Exchange Inc. v. The Clifton Group Investment Management Company, Inc. (T.T.A.B.)  (Represented CME in opposition proceeding concerning the CME trademark).

Virgin Enterprises, Ltd. v. Steven Moore (T.T.A.B.)  (Represented Virgin in opposition proceeding concerning the VIRGIN trademark).

Duke University v. Rodney Masri (T.T.A.B.)  (Represented Mr. Masri in opposition proceeding concerning the DUKES trademark).

John Wayne Enterprises, LLC v. Rodney Masri (T.T.A.B.)  (Represented Mr. Masri in opposition proceeding concerning the DUKES trademark).

Brunswick Corp. v. RMCL, Inc. (T.T.A.B.)  (Represented Brunswick in opposition proceeding concerning SEA RAY trademark).

Brunswick Bowling & Billiards Corp. v. Pinworx Bowling Int’l, LLC (T.T.A.B.)  (Represented Brunswick in opposition proceeding concerning PINWORX trademark).

View Publications

“Are GREEN brands Deceptive By Default,” INTA Bulletin, March 15, 2011.

 “Help Your Clients Avoid Greenwashing,” INTA Bulletin, April 15, 2010.

 “Benefits and Appproach to Reviewing Environmental Advertising Claims,” Legal OnRamp website, September 2009.

 “Insight on How to Avoid the Pitfalls of Green Product Marketing,” GreenExchange Newsletter, September 2008.

 “Creating A Trademark Protection Program,” (co-author), Understanding Trademark Law 2007, Practising Law Institute, June 2007.

 “The Moseley decision: The Supreme Court on Trademark Dilution,” (coauthor), The Corporate Counselor, Vol. 17, No. 11, April 2003.

 “Trademark Dilution: Likelihood of Confusion Among the Courts? The Dangers of Putting Your Company’s Brands at Risk,” (co-author), The Corporate Counselor, Vol. 17, No. 9, February 2003.

 “Putting the Meat Back in Meta-Tags!,” 1 University of Illinois Journal of Law, Technology and Policy 129 (2001).

View Presentations

"Recent Developments in U.S. Trademark Law," (client presentations) October 2016.

"Topics in Trademark Law for the In-House Lawyer, " (client presentation), Florida Accredited Course, January 2016.

"Recent Developments in U.S. Trademark Law," (client presentation), June 2015.

"Recent Developments in U.S. Trademark Law," (client presentation), December 2014.

“Overview of Intellectual Property Law,” (client presentation) February 2013.

 “Navigating the Federal Trade Commission’s Green Guides,” Illinois State Bar Association, Illinois Accredited Course, January 2013.

 “Avoiding the Pitfalls of Environmental Advertising and Marketing,” (client presentation), Illinois Accredited Course, June 2012.

 “Avoiding the Pitfalls of Green Marketing,” Chicago Bar Association, Illinois Accredited Course, June 2011.

 “Legal Issues Associated with the Use of Social Media,” (client presentation) Illinois Accredited Course, June 2011.

 “An Intellectual Property Law Primer,” (client presentation) November 2009.

 “The Nuts and Bolts of Environmental Advertising and Marketing Reviews,” (client presentation) June 2009.

 “An Overview of Trademark Law,” (client presentation) Raleigh, North Carolina, March 2009.

 “The Nuts and Bolts of Advertising and Marketing Review: An IP Perspective,” (co-presenter), Illinois CLE Accredited Course, December 2008.

 “Trademark/Marketing Portal and Best Practices,” (client presentation), Chicago, Illinois, June 2008.

 “Creating A Trademark Protection Program,” (co-presenter), Understanding Trademark Law 2007, Practising Law Institute, Chicago, Illinois, June 5, 2007.

 Copyright Law in the Digital World, (In-House Seminar), Chicago, Illinois June 2007.

 Basic Principles of Trademark Law, (In-House Seminar), Chicago, Illinois, October 2006.

View Memberships and Affiliations
  • International Trademark Association
  • Non-profit Committee Opera-Matic NFP Secretary, Board of Directors
  • American Bar Association
  • Intellectual Property Law Association of Chicago
  • Richard Linn American Inn of Court