Leydig, Voit & Mayer, LTD. Intellectual Property Law
Tamara A. Miller Law Professional

312-616-5693 (direct)
312-616-5700 (fax)
Chicago Office

tmiller@leydig.com
Download V-Card

Related Practices

Education

Loyola University Chicago School of Law, J.D., cum laude, 1996

  • Law Review, Senior Member
  • Consumer Law Review, Chief Cases Editor
  • Loyola Law Scholar Award
  • Highest grade in Legal Writing
  • Loyola Legal Clinic experience

Indiana University, B.A. in Sociology, 1993

  • Member, Phi Beta Kappa
  • Sociology Department Award of Distinction

Tamara A. Miller

Member

Ms. Miller focuses her intellectual property law practice in the areas of trademarks, trade dress, copyrights, false and comparative advertising, Internet law (including cybersquatting and domain name disputes), trade secrets, trademark and copyright licensing, and trademark acquisitions. She represents clients in a wide variety of industries, including pharmaceuticals, perishable and non-perishable consumer goods, insurance and financial services, industrial products, and online retail store services.

Much of Ms. Miller's practice is litigation, and she has represented clients in lawsuits throughout the U.S. She is experienced in matters involving motions for emergency relief, such as motions for preliminary injunctions and temporary restraining orders. She is engaged in all aspects of discovery, including taking depositions and working closely with trademark survey experts and damages experts. Ms. Miller has successfully argued motions in court and has enjoyed many victories on behalf of the clients she represents due to the success of dispositive and other key motions. She also has had experience supervising and coordinating foreign trademark litigation and oppositions on behalf of clients based in the U.S.

In particular, Ms. Miller has significant experience in trade dress matters, from litigation involving packaging and product configuration marks to prosecution of colors, product labels, bottles, and containers with the U.S. Trademark Office. She particularly enjoys counseling clients about proactive steps they can take to maximize and protect trade dress rights. In the course of her trade dress litigation experience, Ms. Miller has worked with experts in connection with surveys intended to evaluate the likelihood of confusion between parties’ product configuration marks. 

Ms. Miller handles oppositions, cancellations, and ex parte appeals at the Trademark Trial and Appeal Board, and is active in non-judicial trademark and copyright enforcement and defense. She is knowledgeable about Internet law as it relates to trademarks, copyrights, and jurisdictional issues. She is active in domestic and international trademark clearance projects in a wide variety of industries. Ms. Miller regularly counsels clients on advertising issues, such as advertising claim substantiation, comparative advertising, and proper trademark usage in advertising. She is experienced in negotiating settlements, coexistence agreements, licenses, trademark and domain name purchases, copyright buy-outs, and litigation-sharing arrangements, and in preparing and analyzing complex agreements relating thereto. She is responsible for supervising the maintenance and management of international trademark portfolios, including large-scale and international assignment and other change of ownership recordal projects.

In her years of practice, Ms. Miller has handled many situations for U.S.-based clients facing trademark-related troubles in China. For example, she has worked to secure assignments for key marks from trademark squatters through anonymous purchases. She has had success in oppositions against applications by squatters, working with foreign counsel to develop creative methods to accomplish her clients’ objectives. She has successfully relied on U.S. copyrights covering logo works in opposing trademark applications by squatters for the same logos. She helps her clients formulate calculated defensive filing strategies so that they can lessen the likelihood of encountering future problems.

Ms. Miller is a member of the International Trademark Association (INTA), the Intellectual Property Law Association of Chicago, the Chicago Bar Association, and the National Association of Women Business Owners. She makes presentations on trademark, trade dress, and copyright issues to various groups, including her clients. Presently, she serves as the Chair of the firm's Professional Development committee.

Professional Affiliations

  • Intellectual Property Law Association of Chicago (IPLAC), Treasurer, 2017-present; Board of Directors, 2015-present; Chair of the New Programming/Events Committee, 2011-2012
  • International Trademark Association (INTA) (Membership Committee, Academic Institution Recruitment Subcommittee (AIRCOM) from 2002-2005; Leader of the Student Membership Section of the AIRCOM subcommittee from 2003-March, 2005; Enforcement Committee, Monetary Remedies Subcommittee from 2006-2009)
  • Chicago Bar Association
  • National Association of Women Business Owners
  • Intellectual Property Owners Association (IPO)

Articles and Publications

Honors

  • Recognized as a top Illinois trademark lawyer by the World Trademark Review 1000, 2013, 2014, 2015, 2016, 2017
  • Named in the Illinois Super Lawyers list, Intellectual Property, 2013, 2014, 2015, 2016, 2017 
  • Named in the Illinois Rising Stars list, as published in Illinois Super Lawyers, 2009, 2010
  • Named one of the Top Women Attorneys in Illinois by Chicago Magazine, 2013, 2014 and one of the Top Attorneys in Illinois, 2015, 2016, 2017
  • Named a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network, 2014, 2015, 2016, 2017

Representative Matters

  • Whirlpool Properties, Inc., et al. v. LG Electronics Inc. (TTAB 2017). Opposed application seeking to register mark for household appliances; opposition settled following amendment of goods.
  • MCE v. Zubair Sardar (TTAB 2016). Authored trial briefs and evidentiary objections for opposer in contested opposition involving the likelihood of confusion between LA BIOSTHETIQUE for beauty products and LABIOTIQUE for hair removal services. Opposition sustained in favor of client.
  • Klein Tools, Inc. v. Jonard Industries Corporation (N.D. Ill. 2015). Filed Lanham Act lawsuit against client’s competitor for failing to mark tools as having been made in China in violation of the Tariff Act; case settled.
  • Whirlpool Properties, Inc. et al. v. Demm’s, LLC et al. (E.D. Wis. 2015). Initiated trademark and cybersquatting case against online seller of appliance replacement parts. Secured swift and favorable settlement and transfer of numerous domain names.
  • Klein Tools, Inc. v. Eagle Line Tools, Inc. (N.D. Ill. 2014). Filed Lanham Act lawsuit against competitor of plaintiff for failing to mark tools as having been made in China; case settled.
  • Speare Tools, Inc. v. Klein Tools, Inc. (E.D. Wis. 2014). Acted as co-counsel representing defendant in a trade dress case involving tool packaging. Primary author of summary judgment motion on the issue of functionality. The Court granted the motion in full and dismissed the case.
  • Klein Tools, Inc. v. Southwire Company (N.D. Ill. 2014). Represented plaintiff in lawsuit asserting infringement of trade dress in coloration scheme for the handles of pliers directed to electricians; case settled.
  • Lucini Italia Company, LLC v. Deoleo USA, Inc. f/k/a Med Foods, Inc. (S.D. Fl. 2014). Represented plaintiff seeking to enforce an incontestable trademark registration for the mark “PREMIUM SELECT EXTRA VIRGIN OLIVE OIL” covering olive oil against the user of “PREMIUM SELECT” on Bertolli-brand olive oil; case settled.
  • Whirlpool Properties, Inc., et al. v. NewAge Products, Inc. (W.D. Mich. 2013). Represented plaintiffs in case involving trade dress for "GLADIATOR" garage cabinets.  Case settled prior to trial.
  • Secured complete victory in hotly contested, consolidated trademark opposition against three Chinese applications by squatters attempting to register a “Fortune 50” U.S. company’s house mark for its primary goods and services.  The matter involved gathering substantial evidence of fame, working with the U.S. Embassy in China, coordinating investigations into the squatters, arranging for the retention of expert witnesses in China, working on briefs and other persuasive communications to the Chinese Trademark Review and Adjudication Board (TRAB) and the U.S. Embassy, and scripting the in-person presentation made to the TRAB by an executive of the client and Chinese counsel. (December 2013).
  • Lucini Italia Company, LLC v. Iberia Foods Corp. (S.D. Fl. 2013). Represented plaintiff seeking to enforce an incontestable trademark registration for olive oil; case settled after key win defending against a motion about the case schedule.
  • Georgia Loan Company d/b/a Newleaf Finance Company v. Springleaf Finance, Inc. f/k/a American General Finance (M.D. Ga. 2013). Represented Defendant in a trademark infringement action involving consumer loan services; case settled after discovery.
  • Adler v. Whirlpool Corporation (E.D.N.Y. 2011).  Defended Whirlpool Corporation by obtaining settlement in federal court action seeking cancellation of a famous Whirlpool-owned mark and other related relief.
  • Whirlpool Properties, Inc., et al. v. Oriental Trading Company, Inc. (W.D. Mich. 2010). Successfully enforced stand mixer product configuration mark against mixer-shaped scrapbooking products through settlement.
  • Nau Holdings, LLC and Horny Toad Activewear, Inc. v. Dlorah, Inc. (D. Colo. 2010). On behalf of declaratory judgment plaintiffs, secured early dismissal of defendant’s cybersquatting claim and the voluntary withdrawal of a dilution claim. Sought discovery from third parties and worked with multiple experts to show no likelihood of confusion. Moved for summary judgment and exclusion of a trademark survey report, after which the case promptly settled.
  • Dlorah, Inc. v. Nau Holdings, LLC and Horny Toad Activewear, Inc. (D. S.D. 2009). Successfully moved for dismissal in a trademark case based on lack of personal jurisdiction.
  • 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.
  • Whirlpool Properties, Inc. et al. v. New Buffalo Corporation d/b/a Buffalo Tools (E.D. Mo. 2007). Consent judgment obtained for 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.
  • Kelsen A/S et al. v. Dan Cake (Portugal), S.A. (N.D. Ill. 2006). Represented defendant in cookie packaging trade dress case; case settled prior to trial.
  • Molex Incorporated v. Siblings Investment Inc. d/b/a Vantec (N.D. Ill. 2005). Obtained efficient resolution for plaintiff in trademark case.
  • Toho Co., Ltd. v. Adler Fels Winery, LLC (C.D. Cal. 2005).  Represented defendants in trademark case in wine industry; case settled prior to trial.
  • The Coleman Company, Inc. v. Coleman Metal Products Company (N.D. Tex. 2004). Represented plaintiff in trademark case; case settled prior to trial.
  • Motor Components, LLC, and Purolator Facet, Inc. v. Imex Service, Inc. et al. (S.D. Fla. 2004). Successful assertion of rights and favorable resolution on behalf of plaintiffs in counterfeiting case involving fuel pumps sold in the automotive aftermarket.
  • Dickey Consumer Products, Inc. v. CB Distributors, Inc. (S.D. Ind. 2003). Represented defendant in trademark and trade dress case in the over-the-counter pharmaceutical area; 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.
  • Harrison CBP Seminars v. Stephan. J. Troyanovich, D.C. et al. (C.D. Ill. 2003). Represented plaintiffs in copyright infringement case involving chiropractic text books; case settled prior to trial.
  • R & R Goldman & Associates, Inc. v. Top Discovery, Inc. et al. (N.D. Ill. 2002). Achieved efficient and successful resolution for plaintiff in trademark case in retail clothing industry.
  • Whirlpool Properties, Inc. et al. v. Springs Industries, Inc. and Jo-Ann Stores, Inc. (W.D. Mich. 2001). Successfully represented plaintiffs in product configuration trade dress case involving plaintiff's stand mixer registration; consent judgment entered against defendants.
  • Allegiance Corporation v. Allegiance Telecom, Inc. (TTAB 2000). Represented opposer in trademark case; opposition settled.
  • Whirlpool Properties, Inc. et al. v. Acme Metal Goods Mfg. Co., Inc. et al. (W.D. Mich. 1999). Successfully represented plaintiffs in a breach of contract and product configuration trade dress case involving plaintiff's stand mixer registration; consent judgment entered against defendants.
  • Allied Van Lines, Inc. v. Allied Moving & Storage, Inc. (S.D. Fla. 1999). Efficiently asserted rights and achieved resolution for plaintiff in trademark case; order entered against defendant's continued infringement.
  • Allied Van Lines, Inc. v. Security Van & Storage of Orlando, Inc. (M.D. Fla. 1998). Achieved efficient and favorable outcome for plaintiff in trademark case; consent judgment entered against defendant.
  • 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.
  • 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. Successfully moved for dismissal of certain claims based on preemption by the Copyright Act.

Speaking Engagements and Presentations

  • “Developing and Protecting Trade Dress: Leveraging Trademark Law to Protect the Look and Feel of Product Design,” speaker at a webinar sponsored by Strafford Publications, Inc. on August 4, 2015.
  • “Trademarks and Best Practices Overview and the Use of Trade Dress for Innovative Branding,” speaker at a one-hour CLE program on July 7, 2015.
  • "Expanding Your Market,” speaker at the Annual Corporate Intellectual Property Law Conference hosted by Law Bulletin Seminars, February 13, 2013
  • "Ways to Be Proactive in Employing and Maximizing Trade Dress Protection,” speaker for a one-hour CLE program on October 28, 2010
  • "Trade Dress: From Brand Strategy to IP Best Practices," speaker at a webinar sponsored by Thomson CompuMark on March 4, 2009
  • "Protection of Bottle Design Marks in the United States," moderator and presenter at the International Trademark Association Annual Meeting, May 1, 2007
  •  "Copyright Law," presented to Executive Service Corp. of Chicago on Sept. 17, 2004
  •  Various presentations on trademark, trade dress and copyright issues made to clients

Bar Admissions and Registrations

  • Illinois, 1996

Courts

  • Illinois Supreme Court
  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Seventh 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 Wisconsin