James M. McCarthy

James M. McCarthy (Jim) is a partner with Norvell IP who has extensive experience in all areas of intellectual property law is passionate about helping clients improve people’s lives.

Mr. McCarthy has managed complex litigations involving trademark, patent, design patent, trade dress, copyright, trade secret, false advertising, and unfair competition issues.  He has participated in all phases of litigation before federal courts and the Trademark Trial and Appeal Board. In addition to his litigation practice, Mr. McCarthy actively manages global trademark portfolios and develops brand building and protection strategies for his clients.  He has counseled Fortune 500 corporations, small companies and individuals regarding the procurement, enforcement, and licensing of intellectual property rights.  Mr. McCarthy has also conducted sophisticated trademark searches and rendered clearance and infringement opinions involving both patent and trademark law.

Mr. McCarthy is also an active volunteer and leader in the International Trademark Association (INTA), having served as Chairperson of the Pro Bono, Law Firm, Leadership Development, and Young Practitioners committees in addition to being involved as a project team leader and speaker at various INTA Annual and Leadership Meetings.

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Education

‍J.D., University of Dayton, 1994

B.S., Electrical Engineering, University of Notre Dame, 1991

Admissions

Illinois Supreme Court
U.S. Dist. Court, N.D. Illinois
U.S. Dist. Court, E.D. Wisconsin
U.S. Court of Appeals, Federal Circuit    
United States Patent and Trademark Office

Recent Recognitions

Mr. McCarthy has been recognized as a member of the Leading Lawyers Network and is a past recipient of an INTA Service Award.

Select Recent Activities by Mr. McCarthy Include

• Developing comprehensive branding strategy for health care providers interested in maintaining board certification
• Managing global trademark portfolio for expanding distributor of rehabilitation and assisted living products
• Coordinating defense in complex, consolidated trademark opposition proceeding before the Trademark Trial and Appeal Board, defeating summary judgment motion and proceeding through final briefing
• Coordinating patent litigation in defense of new medical device company leading to the launch of its first product
• Arguing defendant’s positions in patent Markman hearing and achieving favorable claim construction
• Successfully defending against patent infringement allegations through to a favorable settlement in a medical device patent case
• Defeating preliminary injunction in medical device patent case, allowing client to continue with its new product launch
• Securing a multi-million dollar jury verdict (and affirmance on appeal) in a patent infringement litigation involving mechanical arts in the automotive industry

Memberships and Affiliations

• International Trademark Association
• American Bar Association
• United States Patent and Trademark Office

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