Mark J. Liss Law Professional

312-616-5600 (phone)
312-616-5700 (fax)
Chicago Office

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Related Practices

Education

Chicago-Kent College of Law, J.D., with highest honors, 1981

University of Illinois, B.A., 1978

  • Editor, Law Review
  • Published Author

Mark J. Liss

Member

Mr. Liss is experienced in trademark, copyright, trade secret and unfair competition counseling and litigation. He has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), and has represented numerous clients in federal courts around the U.S.

Mr. Liss represents clients in a wide variety of industries including health care, consumer goods and products, insurance and financial services, industrial and commercial products and online retail sales.  Much of his practice is in litigation and trademark counseling.  He has represented clients in lawsuits throughout the United States and inter-parties Trademark Office proceedings.  He has acted as first chair in numerous trials and Trademark Office contested matters.

In addition to his litigation practice, Mr. Liss has extensive experience in trademark counseling.  For example, he has provided detailed counseling, search advice and protectability opinions regarding global name trademark availability and protection issues.  In fact, he has provided detailed consulting services in connection with spin-offs from Fortune 100 companies who were forming new and independent companies on a worldwide basis.

Professional Affiliations

  • Intellectual Property Owners Association (IPO)

Honors

  • AV® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
  • Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
  • Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer

Representative Matters

  • Walgreen Co. v. Wyeth (N.D. Ill. 2009). Represented plaintiff in an appeal of a Trademark Trial and Appeal Board decision. Worked with multiple experts and survey evidence. Represented client at a trial on the merits but the case settled before a decision issued.
  • Lincoln Financial Advisors Corp. v. Sagepoint Financial Inc. (N.D. Ind. 2009). Successfully defended defendant against a motion for preliminary injunction, including briefing and representation at an evidentiary hearing.
  • American Century Proprietary Holdings, Inc. v. American Century Casualty Company et al. (S.D. Tex 2007). Represented plaintiff in trademark action where the relatedness of financial and insurance services was at issue. Won summary judgment on liability on behalf of plaintiff. Defendant appealed and summary judgment was affirmed by the Fifth Circuit Court of Appeals.
  • Monaco Coach Corporation v. Mitsubishi Motors North America, Inc. (TTAB 2008). Successfully maintained a Petition to Cancel a trademark used on passenger vehicles in view of prior registration for the mark on recreational vehicles at TTAB trial.
  • American Century Proprietary Holdings, Inc. v. American Century Casualty Company et al. (S.D. Tex 2007). Appeal pending at the Fifth Circuit; representing plaintiff in trademark action where the relatedness of financial and insurance services is at issue. Won summary judgment on liability on behalf of plaintiff; Defendant appealed.
  • Small Business Network, Inc. v. American Express Company (TTAB 2007). Successfully defended at TTAB trial a Petition to Cancel filed against American Express Company alleging a likelihood of confusion and fraud.
  • Whirlpool Properties, Inc. et al. v. New Buffalo Corporation d/b/a Buffalo Tools (E.D. Mo. 2007). Pending; representing plaintiffs in trade dress case involving stand mixer product configuration mark.
  • Whirlpool Properties, Inc. et al. v. LG Electronics USA, Inc. et al. (W.D. Mich. 2006). Represented plaintiffs in case involving secondary mark “WHISPER QUIET” for laundry appliances. Successfully moved for dismissal of numerous counterclaims and affirmative defenses raised by defendants. Case settled prior to trial.
  • The Coleman Company, Inc. v. Dollar Tree Stores, Inc. (D. Kan. 2003). Represented plaintiff in product configuration trade dress case involving lantern key chains; case settled prior to trial.
  • Whirlpool Properties, Inc. et al. v. Acme Metal Goods Mfg. Co., Inc. et al. (W.D. Mich. 1999). Represented plaintiffs in a breach of contract and product configuration trade dress case involving plaintiffs stand mixer registration; consent judgment entered against defendants.
  • Hoenig v. Forbes Inc. (N.D. Ill. 1999). Successfully defended Forbes Magazine on a motion for a preliminary injunction seeking to enjoin national advertising campaign leading to favorable settlement.
  • 1st Source Bank v. First Resource Federal Credit Union, (N.D. Ind. 1998). Successfully defended Federal Credit Union at trial against claims of trademark infringement and unfair competition.
  • Publications International, Ltd. v. Landoll, Inc. (N.D. Ill. 1997; 7th Cir. 1998). Represented defendant in trade dress case involving the design of cookbooks and children’s books. Successfully moved for summary judgment on liability, which was upheld on appeal to the Seventh Circuit and for which certiorari was denied.
  • Organization Technologies v. The Dun & Bradstreet Corporation Foundation, 44 U.S.P.Q. 2d 1533 (S.D. N.Y. 1997).  At trial, successfully defended claims of trademark infringement and unfair competition.
  • The Balsamo/Olson Group, Inc. et al. v. Bradley Place Limited Partnership et al. (C.D. Ill. 1997). Represented certain defendants in copyright case involving architectural plans and successfully defended preliminary injunction motion and obtained dismissal of certain claims based on preemption by the Copyright Act. Case settled prior to trial.
  • Adams/Green Industry Pub., Inc. v. The International Labmate Ltd., 45 U.S.P.Q. 2d 1046 (N.D. Ill. 1997). Obtained summary judgment on behalf of the declaratory judgment plaintiff that defendant did not have a protectable interest in the trademark asserted.
  • Sassafras Enterprises, Inc. v. Roshco, Inc., 889 F. Supp. 343 (N.D. Ill. 1995). Obtained summary judgment for defendant on a claim for copyright infringement and recently obtained summary judgment in defendant’s favor on claims of trade dress infringement.
  • American Express Co. v. MasterCard International, Inc., 7 U.S.P.Q. 2d 1829 (S.D. N.Y 1988). Acted as co-counsel at trial of above case.
  • American Bakeries Co. v. Pan-O-Gold Baking Co., 2 U.S.P.Q. 2d 1208 (D. Minn. 1988).  Successfully obtained preliminary injunctive relief against acts of trademark infringement.
  • Shen Manufacturing Company v. Suncrest Mills Inc., et al., 673 F. Supp. 1199 (S.D. N.Y. 1987). Acted as co-counsel in successfully defending co-defendant Kmart Corporation against a claim for monetary damages arising from acts of unfair competition.

Speaking Engagements and Presentations

  • Featured Speaker- INTA Paralegal Forum- Arlington, Virginia, subject: likelihood of confusion in trademark cases
  • Various presentations on trademark, trade dress and copyright issues made to clients
  • Guest commentator- WBBM Radio addressing current copyright and internet related issues.

Bar Admissions and Registrations

  • Illinois, 1981

Courts

  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Central District of Illinois
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Western District of Michigan
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of Wisconsin
  • U.S. District Court for the Southern District of Wisconsin