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| Selected by peers as a Leading Lawyer in: | Extensive Experience in: |
| Intellectual Property Law | Trademark counseling; |
| Unfair competition; | |
| Trials and appeals | |
| Advisory Board Member | |
| County: Cook | |
| Litigator: Yes | |
| Practice Description: Jerome Gilson's career in trademark and unfair competition law has spanned four decades. A senior partner with the Chicago intellectual property law firm Brinks Hofer Gilson & Lione and a graduate of Northwestern University School of Law, he is admitted to practice before eight federal Courts of Appeals and the United States Supreme Court. He has handled trials and appeals before the federal courts and the Trademark Trial and Appeal Board, representing a cross section of the country's major businesses and famous brand names. He has also had extensive experience in trademark clearance, counseling, licensing, and acquisitions. He is perhaps best known for his treatise Trademark Protection and Practice (Lexis Publishing/Matthew Bender), an eleven-volume standard reference work in the field that is supplemented semi-annually. He is presently co-author with his daughter Anne Gilson LaLonde. The treatise plays an important role in the practice of many trademark lawyers and paraprofessionals, adapting to the many Lanham Act amendments of recent years, such as the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, the Trademark Amendments Act, and the Trademark Law Treaty Implementation Act. The treatise has been cited by many courts, including the United States Supreme Court, and is highly regarded. Mr. Gilson has been active in several professional associations, notably the International Trademark Association. He chaired many committees over the years, organized and spoke at many programs, and served on the Board of Directors. He was Counsel to the Association, the highest position attainable by a private practice lawyer, for three years, at which time he was directly involved in the change of name of the Association from The United States Trademark Association to its present name. In 2001 the Association conferred its coveted President's Award on him for his dedicated and distinguished service. He was named and served as Reporter of the Association's Trademark Review Commission, a blue-ribbon group of trademark practitioners who studied and analyzed the Lanham Act for several years in the most comprehensive review of the Act since it became law in 1947. The Commission's work led directly to enactment of the Trademark Law Revision Act of 1988 and the revolutionary change of U.S. trademark law to allow the filing of trademark applications based on a good faith intent to use the mark in the future. Mr. Gilson testified before Congress at the time and assisted in drafting the legislation. From 1988 to 1993 he was an Advisor on the American Law Institute Restatement (Third) of the Law of Unfair Competition project. In 1998 he was named the top trademark practitioner in the entire world by Managing Intellectual Property, based on an international survey of attorneys. He has also been listed in The Best Lawyers In America, Who's Who In America, America's Top Lawyers, Euromoney Publications PLC Guide To the World's Leading Experts In Trade Mark Law, and is a member of the Leading Lawyers Network Advisory Board. Notable Cases and Results: R.J. Reynolds Tobacco Co. v. Premium Tobacco Stores, Inc., et al., (N.D. Ill. 2000), Motion to dismiss denied. Danjaq LLC v. Sony Corp., (C.D. Cal. 1998), Injunction granted against use of JAMES BOND in motion picture; affirmed on appeal. Bar Admissions: Illinois Supreme Court, 1958; U.S. District Court of Illinois, N.D., E. Div., 1958; U.S. Courts of Appeals (Third Circuit, 1967; Fourth Circuit, 1988; Fifth Circuit, 1968; Seventh Circuit, 1962; Eighth Circuit, 1994; Ninth Circuit, 1999; Eleventh Circuit, 1985; Federal Circuit, 1982) U.S. Supreme Court, 1966. Hourly Rate: $501 or more/hour Retainer: Varies Date of Birth: 1931 Additional languages spoken: Some French; some German. Law School: Northwestern University School of Law, J.D., 1958 Law School Honors/Involvement: Member, Law Review Board of Editors Undergraduate School: University of Missouri Undergraduate School Honors/Involvement: Dean's List Employment History: Jerome Gilson has practiced intellectual property law with Brinks Hofer Gilson & Lione for 40 years. Before that he was an Associate in General Practice with what is now Rooks Pitts. Bar/Professional Association Involvement: American Bar Association; American Intellectual Property Law Association; International Trademark Association; Intellectual Property Law Association of Chicago. Community Involvement: Brinks Hofer Gilson & Lione Pro Bono Committee; Public Interest Law Initiative Board of Directors and Chair of Development Committee; Chicago Intellectual Property Alliance; University of Akron Intellectual Property Council. Published Legal Writing: TRADEMARK PROTECTION AND PRACTICE (LexisNexis/Matthew Bender), an eleven-volume treatise and supplements (1974 - present ), presently co-author with daughter Anne Gilson LaLonde. "The Lanham Act: Time For A Face-Lift?," The Trademark Reporter, INTA Vol. 92, Sept.-Oct. 2002. "The International Trademark Association (1878-2003): Trademark Law Champion," The Trademark Reporter, INTA Vol. 93, Jan-Feb. 2003. Legal Lectures: INTA Dilution 2003 Forum, speaker on "Dilution Protection For Non-Traditional and Design Marks," Arlington, Virginia, March 6, 2003. Chairman of "Advanced Trademark Strategies," a 2-day program in Chicago sponsored by LexisNexis/Mealey Publications, and keynote speaker of "The Lanham Act: Time For A Face-Lift?," April 15-16, 2002. Firm Description: Intellectual property law; largest firm in this specialty in the Midwest. Practice Group Description: Trademark Practice Group and Litigation Practice Group. Family: Married to author, Jamie Gilson, three children and five grandchildren. Additional Office Locations: Arlington, Virginia; San Jose, California; Ann Arbor, Michigan; Indianapolis, Indiana, Salt Lake City, Utah. 1007604 | |
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