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. She represented one of her clients in mediation for a packaging trade dress case, including giving an opening statement, arguing her client’s position, and negotiating a settlement.

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.

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 on the firm's Professional Development committee.

Professional Affiliations

• 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)
• Intellectual Property Law Association of Chicago (IPLAC)
• Chicago Bar Association
• National Association of Women Business Owners
• Intellectual Property Owners Association (IPO)

Articles and Publications

• "Seizing Trade Dress Opportunities through Creative Claims and Proactive Measures," Thomson CompuMark’s Client Times Online newsletter, February 2009
• "Hey, I Know that Look! Maximizing Trade Dress Rights Before Infringement," Corporate Counsel, October 2008
• "Why Registering Trademarks in China Today is a No-Brainer," Corporate Counsel, December 2007
• "Aspirina Case Instructive for Trademark Practitioners," IP Law360, June 18, 2007

Honors

• Named in the Illinois Rising Stars list, as published in Illinois Super Lawyers, 2009, 2010

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.
• 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

•  "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

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