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Tom M. Monagan

 

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Contact
Direct: (773) 796-5634
Mobile: (312) 933-0627
Fax: (312) 268-5063
Email: tmonagan@norvellip.com

Education
J.D., The Ohio State University, 2002
M.B.A., The Ohio State University, 2002
B.S.J. (Journalism), Northwestern University, 1993 

Admissions
Illinois Supreme Court
U.S. Dist. Court, N.D. Illinois
U.S. Dist. Court, D.C.                           U.S. Court of Appeals, Second Circuit

 

Various state and federal courts, Pro Hac Vice

 

 

Practice Summary

Tom Monagan focuses his practice in the areas of trademarks, false advertising, trade secrets and unfair competition.  Tom has litigated numerous cases in state and federal courts involving these and other areas of law, including defamation, product disparagement, breach of contract and patents. He also regularly provides counsel on all aspects of trademark clearance and registration. Tom also has extensive experience with false advertising disputes, including federal jury trials and disputes at the National Advertising Division of the Council of Better Business Bureaus. Before joining Norvell IP in April 2014, Tom was a partner in the intellectual property group at Kirkland & Ellis LLP where he handled a wide range of intellectual property litigation and counseling matters. 

 

Recent Recognitions

  • Listed in 2015 edition of The World Trademark Review's "WTR 1000"
  • Recognized for Marketing and Advertising Law in The Legal 500 U.S. (2013, 2012 & 2011


Areas of Emphasis and Expertise

  • Intellectual property disputes, including trademark, false advertising, trade secret, unfair competition, and patent litigation and enforcement actions
  • Worldwide trademark counseling and portfolio management
  • Trademark counseling and portfolio management
  • Advertising challenges and advertising claims substantiation
  • General commercial litigation, including breach of license/contract, product disparagement, and defamation 

 

Representative Matters

* Numerous TTAB Opposition and Cancellation matters not listed here

PEI Licensing, Inc. v. Leg Resource, Inc., 16-cv-24714 (S.D. Fla.) Representing plaintiff in action involving breach of trademark license agreement. 

Parker v. PayPal, Inc., HostGator et. al., 16-cv-4786 (E.D. Pa.) Represented defendant in trademark, copyright and right of publicity action.  Plaintiff voluntarily dismissed case after defendant responded to motion for preliminary injunction. 

DNL Zito v. Verio, Inc., 16-cv-1742 (D.D.C.) Represented defendant in breach of contract and tortious interference action.  Case resolved prior to discovery.

Creative Circus v. HostGator, 14-cv-54921 (Ariz. Sup. Ct., Maricopa County) — Represented defendant in breach of contract and negligence action.  Case resolved after discovery and submission of defendant’s expert reports.

Gench v. HostGator.com et. al., 14-cv-3592 (S.D.N.Y.) Represented defendant in trademark infringement and false advertising action.  Prevailed on motion to dismiss all claims.  Plaintiff’s appeal denied by Second Circuit.

Kubota Corp. et al v. Global Development Int’l et al., 12-cv-06065 (N.D. Ill.) — Represented plaintiff in litigation alleging trademark infringement, false designation of origin, false association and cybersquatting, among other claims.  Achieved favorable settlement after filing motion for summary judgment.

Experian Information Solutions, Inc. v. Carfax, Inc., 11-cv-08927 (N.D. Ill.) — Represented defendant, Carfax, against claims of defamation, product disparagement, and tortious interference, all related to a customer contract negotiation.  Carfax asserted counterclaims against Experian for false advertising, consumer fraud and deceptive business practices.  Case resolved prior to trial.

Ultra Records, Inc. v. Ultra Enterprises, Inc., 11-cv-6370 (S.D.N.Y.) ⎯ Provided strategic assistance to Ultra Records throughout trademark and breach of contract trial, including assistance with witness and thematic strategy, jury selection, and opening and closing arguments.  Negotiated favorable settlement agreement on behalf of client following closing argument.

Timelines, Inc. v. Facebook, Inc., 11-cv-06867 (N.D. Ill.) ⎯ Defeated motion for Temporary Restraining Order filed against client, Facebook, on issue of alleged trademark infringement, and filed counterclaims seeking cancellation of the plaintiff’s trademark.

Comcast Cable Communications, LLC v. DIRECTV, Inc., 11-cv-05284 (N.D. Ill.) — Defeated motion for TRO by Comcast seeking to stop DIRECTV’s NFL Sunday Ticket advertising, which argued that DIRECTV’s free offer was false and misleading.  The case settled after DIRECTV defeated Comcast’s motion.

Humanly Possible, Inc. v. Manpower, Inc. et al., 11-cv-04977 (N.D. Ill.) ⎯ Represented defendant in trademark infringement suit.  Defeated motion for preliminary injunction and won motion for summary judgment.

Arcadia Group Brands Ltd. et al. v. Studio Moderna S.A. et al., 10-cv-07790 (N.D. Ill.) — Represented defendant in trademark litigation brought by U.K.-based fashion designer and marketer of TOPSHOP clothing brand.  Client operated TOPSHOP Internet and cable TV shopping network in Eastern Europe and then in the U.S.  After months of international discovery the case proceeded through two mediations, after which the parties negotiated and executed a comprehensive, global coexistence agreement.

Dyson, Inc. v. Oreck Corp. et al., 07-cv-9633 (E.D. La.) — Represented bagless vacuum cleaner company, Dyson, in false advertising lawsuit against key competitor accused of violating a settlement agreement and of false advertising.  After winning a key motion for summary judgment and proceeding through fact and expert discovery, Dyson ultimately agreed to settle the case one day before trial.

Oreck Corp. et al v. Dyson, Inc., 07-cv-2744 (E.D. La.) — Successfully represented Dyson in Oreck’s appeal of the dismissal of another false advertising case.  The dismissal of Oreck’s case on res judicata grounds was upheld by the United States Court of Appeals for the Fifth Circuit.

Covidien AG et al. v. CapitalSource, Inc., 08-cv-7151 (S.D.N.Y.) — In trademark infringement case, represented medical products company Covidien (formerly Tyco Healthcare) against commercial bank accused of using registered and non-registered design marks.  Negotiated favorable settlement for Covidien.

Hill’s Pet Nutrition, Inc. “Vets Recommend” Challenge — Represented Hill’s in NAD case against key competitor regarding competitor’s claim that its product was “recommended by Veterinarians.”  NAD determined that competitor could not support its claim.  NAD Case No. 4942 (12/02/2008).

Sweet Leaf Tea Co. v. United American Indus., Inc., 08-cv-0441 (W.D.T.X.) — Represented iced tea and beverage maker in trademark infringement suit for declaratory judgment of non-infringement filed against maker of stevia-based sweeteners.  The parties consented to a co-existence agreement prior to discovery.

DIRECTV, Inc. v. Comcast Corp. et. al., 07-cv-2568 (N.D. Ill.) — Represented DIRECTV in false advertising lawsuit related to high-definition picture quality.  Directed technical discovery and examined witnesses at preliminary injunction hearing.  This case settled after the preliminary injunction hearing and an appeal to the United States Court of Appeals for the Seventh Circuit.

Merisant Company v. McNeil Nutritionals, LLC., Inc., 04-cv-5504 (E.D. Pa.) — Conducted five-week trial in false advertising suit pitting client’s Equal® brand sweetener against Splenda®.  In May 2007, after a full trial on the merits, secured a favorable settlement for Equal (Merisant) on the verge of the reading of the jury verdict.

Chrysalis Management Group et. al. v. Chrysalis Ventures, LLC, 06-cv-517 (E.D. Pa.)— Represented accused trademark infringer in dispute with another private investment fund.  Secured favorable settlement on behalf of client.

Merisant Company (Equal) “Natural” Sweetener Challenge — Represented Merisant against competitor which falsely claimed that its alternative sweetener product was “natural.”  NAD agreed that competitor could not substantiate its “natural” claim.  NAD Case No. 4442 (1/20/2006).

Hill’s Pet Nutrition, Inc., v. Nutro Products, Inc., 04-cv-8413 (C.D. Cal.) — Represented Hill’s in false advertising lawsuit in federal district court in Los Angeles, which included responsibility for consumer survey experts.

Ken’s Foods Inc. v. Jays Foods, Inc., 04-cv-4699 (N.D. Ill.) — Represented Chicago snack food company as defendant in a trademark infringement suit related to its Sweet Baby Jay’s potato chips; resulted in confidential settlement.

Jays Foods, Inc. v. Frito-Lay, Inc., 04-cv-7745 (N.D. Ill.) — Represented Jays in false advertising case against snack food giant Lay’s®. Secured temporary restraining order prohibiting Lay’s use of advertising featuring its taste preference claims and then negotiated a confidential settlement.

Dozens of additional trademark oppositions, cancellations and other proceedings before the Trademark Trial and Appeal Board

*Matters listed include representations occurring prior to joining Norvell IP.

 

Memberships and Affiliations

  • International Trademark Association
  • Chicago Bar Association
  • American Bar Association


Presentations

“Challenging Advertising at the NAD,” Chicago Bar Association, Young Lawyer’s Section, February 19, 2015

Annual Copyright, Trademark, Internet and Advertising Law Conference, Co-Chair, Kirkland & Ellis LLP, 2004-2013

American Conference Institute, “Litigating and Resolving Advertising Disputes,” 2010

Promotion Marketing Association, Conflicts of Interest for Advertising Lawyers, 2009

Promotion Marketing Association, Substantiation Basics, 2008

 

Publications

“Can An Invisible Word Create Confusion? The Need for Clarity in the Law of Keyword Metatags,“ The Ohio State Law Journal.