'; Creating Valuable Client Outcomes in Trademark Law

Creating Valuable Client Outcomes in Trademark Law

Leading Lawyers 2018 Business Edition September 5, 2018

The co-executive producer walking the red carpet at the Cannes Film Festival was unlikely to attract the attention of paparazzi and autograph seekers, though he was immensely talented, successful and adored by those he worked with.

As he made his way through screenings and Hollywood royalty, he may have reminisced about sitting at Centre Court during an epic Wimbledon final, or perhaps the time he spent in Monaco hanging out with Ringo Starr.

But it’s more likely that he was thinking about ways he could protect a client’s valuable intellectual property assets or ensuring they had the information and guidance needed to make the most advantageous business decisions. That’s because clients in need of a seasoned trademark, copyright, trade secret and unfair competition counselor and litigator get by with a lot of help from attorney Mark J. Liss.

A member and the vice president of Leydig, Voit & Mayer, Ltd., Liss has earned a reputation among his clients and colleagues as an attorney who seamlessly meshes the strategic and practical, as well as the personal and professional, when working to advance his clients’ interests in intellectual property matters.

Helping people get what they need and get to where they want to go are defining characteristics of his practice. It is the common thread between temporary restraining orders and trademark clearance, and a hot dog stand and a HoJo in the Chicago suburbs.

“Working at a deli/hot dog stand in high school and later at the front desk of a Howard Johnson’s hotel in college and law school, I learned to appreciate the importance of hard work, responsiveness and attentive service,” Liss recalls. “I always enjoyed meeting people and took great satisfaction in answering questions because the customer and their issues mattered to me.

“Of course, I also learned how to interact with disgruntled or unhappy folks as well, which has certainly been helpful in my litigation practice,” he jokes.


Elizabeth Pearce sees Liss as an invaluable asset as she manages a large and complex intellectual property portfolio for American International Group, Inc. (AIG). She has worked with Liss “closely and constantly” for 18 years and says he never fails to provide the answers, efforts or approaches best suited for whatever issues arise.

“Mark is exceptional when a problem comes up. He focuses on the core of the issue, identifies what information and research needs to be obtained, and then sets a course to get AIG what it needs in the easiest, least expensive manner,” Pearce says.

“That requires common sense and the ability to truly listen to what we as a client have to say. It requires being able to give clear, succinct and actionable answers to non-lawyers in multiple business units so that everyone is pulling in the same direction.”

Pearce adds that Liss was critical to the success of a logo rebrand AIG went through about a decade ago, a multifaceted and complex project which was existentially important to the company’s future success.

“This was a sprawling project with a lot of clearance work and many moving parts. Mark and Leydig navigated it with aplomb, successfully completing it on-budget, on-time and in a way that engendered the appreciation and respect of everyone he worked with at AIG,” Pearce says. “We could not have done it—and I might have gone nuts—without him.”


In a firm and a practice area disproportionately populated by engineers and others with scientific backgrounds, Liss’ liberal arts background and passion for history stands out.

“I’ve been called the ‘poet laureate’ of Leydig, Voit & Mayer,” he says with a laugh. Liss’ appreciation of history is based in his belief that understanding where we are and where we may be going requires understanding the past. It also is in part a product of his upbringing in Lincolnwood as one of four children. His mother was the daughter of Russian immigrants, and his father escaped from Poland shortly before the Nazis invaded. He lost almost his entire family at the hands of the Germans.

While his dad, who served under Patton during the war, never talked about his experiences or the pain he carried with him, Liss took a journey after his dad passed away to his boyhood home in Poland.

“My wife, Lynne, had conducted extensive research about his family’s life there, and we were able to find his boyhood home, the apartments in the ghetto his family died in, and the unmarked graves of many family members,” Liss says. “It was a profoundly moving experience.”

Liss has fond memories of his suburban childhood, notwithstanding growing up a White Sox fan on the North Side. While he is a student of history, he recalls how his family was decades ahead of its time in one respect. “My mom was close friends with Adelle Davis, who became one of the first health food gurus in the country,” Liss remembers. “While all my friends were eating white bread and sugary soft drinks, I was picking up fresh cow’s milk, organic vegetables, and eggs from freerange chickens at a farm in Glenview.

“We were all about whole foods way before there was a ‘Whole Foods,’” he adds.

Unsurprisingly, Liss majored in history when he attended the University of Illinois. After graduating, he decided to see some history in person, spending eight weeks backpacking across Europe with a buddy, living on $10 a day and igniting what would become a lifelong love of travel that has taken him around the globe.

It was on that youthful journey in the late ’70s when Liss and his friend found themselves in Monaco. Dressed as the hostel-hoppers they were, they were denied entry to Monte Carlo’s famous casino and retreated to an establishment nearby, where they spied a man sitting at the bar.

“Ringo was just sitting there having a drink, so we decided to go up and start chatting with him,” Liss says. “He was so nice, funny and accommodating. We made small talk, asking him if he kept in touch with John, Paul and George. Needless to say, Ringo and I didn’t keep in touch.”

Good fortune continued to follow Liss around on the trip, as he and his friend were offered free Centre Court tickets to see one of the epic Wimbledon men’s finals between Jimmy Connors and Bjorn Borg.


Of course, a Beatle and a Borg soon gave way to books and building a career, and Liss earned a degree from IIT Chicago-Kent College of Law in the years following that journey. After graduating in the top 2 percent of his class, Liss pursued intellectual property law with a small IP boutique that afforded him hands-on, trial-byfire opportunities in the courtroom.

“I was handling motions for temporary restraining orders and acting as second chair in trials in federal court right out of law school,” Liss says. “It was scary but absolutely exhilarating. The strategy, the chess match, solving the puzzle and making a winning argument—there was no way I wasn’t going to be a litigator after that.”

As much as Liss enjoys the challenges and rewards of litigation and as powerful a courtroom presence as he is today, he also recognizes that, from a business perspective, litigation is rarely something to be relished. “Sometimes, being a good litigator means knowing how to avoid litigation,” Liss explains. “It means identifying the core issues, putting ancillary issues aside, and working out the best deal for your client using judgment and considerations that extend beyond winning or losing in the courtroom.”

Liss’ clients also know that his value as an intellectual property attorney is as much a product of his advice, attentiveness and commitment as it is his advocacy skills. “Mark helps us protect our brand thoroughly. He ensures the best quality work goes into each matter, no matter how big or how small,” says Smrithi Mohan, attorney for Global Intellectual Property, Innovation & Data at Dun & Bradstreet.

“What sets Liss apart,” Mohan says, “is that he is clearly invested in his clients, not only when it comes to the work he does but the relationship overall.

“Mark takes extra efforts to maintain a great working relationship with us and annually comes to visit us in person—not just to go through work-related matters, but also to take the entire team out to a nice dinner and show us he appreciates us.”

Liss acknowledges he is a “huge fan of personal relationships” with his clients and cares deeply about the work he does because he recognizes how much is at stake and how much his clients count on him to get it right, especially in his trademark counseling work.

“I really feel like I’m invested in their business success. I try to give my clients practical and usable advice, telling them what I would do with clarity and without hedging,” he says. “I think that trust and confidence in what I say is a large reason many clients have stayed with me for so long.”


Those clients ultimately followed Liss to Leydig, the global intellectual property firm where he has practiced since 1991. As vice president of the firm, Liss notes that Leydig is a place which facilitates long-term client relationships because of the continuity and low turnover among attorneys who appreciate the supportive, collaborative environment in which to work and the focus the firm brings to IP matters.

“We give our attorneys the resources they need to be successful,” Liss says. “We also provide an atmosphere that emphasizes mentoring and advancement. We try to involve younger attorneys in important matters and encourage them to develop their own relationships with the firm’s clients.”

Tamara Miller, a member of Leydig and a trademark attorney who has worked with Liss since she joined the firm as a first-year associate, says he was and remains instrumental in the firm’s success, in no small measure because of the leadership he provides both through mentoring and by example.

“I learned everything from Mark, not just the substantive law but how to interact with and best serve clients,” Miller says. “I watched Mark treat every person he dealt with at a client—no matter what their role—with the same level of respect and attentiveness. He treats the client’s money as his money in the sense of providing clients with practical, plain-speaking advice based on what he would do in their shoes.”

Miller adds that Liss is generous with his time and unselfish in his efforts to help younger attorneys build their skills and their practices. Those efforts, combined with the talents of Leydig’s lawyers, manifest themselves in many ways. Liss is particularly proud to note that five of the last six attorneys to become shareholders in the trademark group at Leydig are women.

For Liss, facilitating and encouraging the advancement of women in the practice of law is paralleled by the efforts he and Lynne, his wife of 32 years, make to promote increased representation of women behind the camera in the film industry.

“Lynne has been very active for a long time in promoting women in the arts, particularly in film,” he says. “We have supported women’s workshops at the American Film Institute as well as a number of independent films helmed by women.”

Liss and his wife are credited as producers and co-executive producers on many films directed and/or produced by women, such as the film that ultimately premiered at the 2017 Cannes Film Festival. That is how this accomplished Chicago trademark attorney wound up on the red carpet in the south of France.

“I was walking with folks like Rihanna, Jessica Chastain, Juliette Binoche, Jake Gyllenhaal and Charlize Theron. I blended right in,” Liss says with a chuckle.

As unique an experience as that was, however, Liss takes infinitely more pride in his role as a loving father and the adoring “papa” of three grandchildren.

Liss’ clients and colleagues are also quite happy that he spends his time out of the spotlight focused on their success and making sure that their intellectual property rights are protected.

“We are extremely fortunate to have had Mark with us for more than a couple of decades,” says Dun & Bradstreet’s Mohan. “We can’t imagine anyone other than Mark caring about our brand enough to handle those important assets.”

Mark J. Liss