Floyd A. Mandell

Floyd A. Mandell, national co-head of the firm's Intellectual Property Practice and co-head of the Trademarks Practice, practices primarily in the area of intellectual property counseling and litigation. His areas of concentration include trademarks, trade dress, unfair competition, trade secrets, copyrights, high-tech disputes, e-commerce/Internet disputes, false advertising, entertainment litigation and First Amendment litigation. Mr. Mandell is a member of the firm’s Board of Directors.

Mr. Mandell was recognized by Law360 as a 2012 winner of its MVP award for intellectual property, and is profiled here. The MVP awards honor attorneys whose achievements in major litigation and transactions have set a new standard for accomplishment in their respective practice areas. Mr. Mandell is one of only 10 intellectual property lawyers from across the country to be named Law360 MVPs for 2012.

Mr. Mandell has been named to the Lawdragon 500 Leading Lawyers in America (2010–2013), legal affairs news and information company Lawdragon.com's annual guide to the nation’s most elite group of lawyers. He is one of the few lawyers in the United States to have received this honor four times.

In the 2012 edition of the Legal 500 guide to the US intellectual property legal market, Mr. Mandell is described as "an outstanding litigator and counselor in all respects," and as being "creative, insightful, practical, reliable, results-oriented, and always the consummate gentleman and professional."

Mr. Mandell was selected for Law360's list of the 10 Most Admired Intellectual Property Attorneys in the United States. The award was extended in 2010 after a survey taken of his peers at the 100 largest law firms in the country.

Mr. Mandell is listed as a top lawyer (Band 1) and a "Leader in the Field" by Chambers USA: America's Leading Lawyers for Business for Intellectual Property (2005–2012) and Entertainment Litigation (2005–2006). In 2011, he was selected as the top intellectual property attorney in the United States by ILO, an affiliate and partner of the Association of Corporate Counsel and the International Bar Association. The Client Choice Award is unique because only corporate counsel can choose the winner, and Mr. Mandell received the top recognition out of 2,000 nominations. The award focuses on client care, quality of service and adding value to clients’ business.

In 2011, 2012 and 2013, Mr. Mandell was selected as one of the top trademark litigation attorneys in the United States (Band 1) by World Trademark Review (WTR 1000).

In 2009, 2010 and 2011, Mr. Mandell was selected by IAM Magazine as one of the 250 top intellectual property strategists in the world. In 2012, Mr. Mandell was again included in the expanded version of the publication, IAM Strategy 300.

Mr. Mandell has a Martindale-Hubbell^® AV^® Preeminent™ rating and is recognized as an AV Preeminent^® Top-Rated Lawyer in Intellectual Property Law.

Mr. Mandell has been lead trial counsel for a number of national and international clients, including Microsoft Corporation, Arcadia Group International ("Topshop"), Yahoo!, Fruit of the Loom, Inc., GTE Corp., Allstate Insurance Co., Planet Hollywood, Inc., Polaroid Corporation, Sears, Roebuck and Co., Bausch & Lomb, Universal Studios, Inc., Universal Music Group, Times Mirror, Inc., Home Box Office, Inc. (HBO), the Chicago White Sox, the Chicago Bulls, Arkansas Best Corporation, Fortune Brands, Inc., Motorola, Inc., Sanyo Electric Co., Ltd., E! Entertainment Television, Inc., Phillips-Van Heusen Corporation, USA Cable Entertainment, LLC, AIG Technical Services, Inc., Santa Margherita S.P.A. (the Italian company which manufactures Santa Margherita Pinot Grigio wine, the number one selling imported wine in the United States), and Sony Music Corporation. In 2010 and 2011, Mr. Mandell was one of the attorneys representing Dell Corporation in defense of trademark litigation brought by Sharp. In 2011 and 2012, he represented Arcadia as lead counsel in litigation involving the "Topshop" brand; he also represented Arkansas Best in litigation against PODS in Florida US District Court, and Microsoft in several cases relating to trademark claims. In January 2013, Mr. Mandell's representation of Microsoft in the Third Circuit Court of Appeals resulted in the affirmance of a summary judgment case in 2012 by the US District Court. Mr. Mandell was one of the attorneys representing the Recording Industry Association of America, Inc. (R.I.A.A.) and leading record companies, publishers and studios in multi-district litigation in US Federal Court involving "Napster"-type infringement of music copyrights by "Aimster" defendants. He also represented the Motion Picture Association of America (MPAA) in cases involving their anti-piracy enforcement efforts. He has represented celebrities including Arnold Schwarzenegger and Sylvester Stallone, and movie producer Keith Barish (Sophie’s Choice, The Fugitive, etc.). He has been involved in over 40 published decisions, many of which have involved novel or cutting-edge issues concerning emerging Internet law, and several cases received national exposure. In 1999, Mr. Mandell participated in negotiating statutory language dealing with recent amendments to the Lanham Act involving Internet "cybersquatters."

Mr. Mandell has been quoted in national publications such as the Wall Street Journal, New York Times, Los Angeles Times and Chicago Tribune and has been frequently interviewed as an expert in trademark litigation and on issues dealing with alternative dispute resolution. In March 1999, Mr. Mandell was featured in Success Magazine. He has also appeared on NBC’s "Today Show." Nominated by in-house counsel and other leading trademark practitioners, Mr. Mandell was listed in the “Guide to the World’s Leading Trademark Practitioners,” published by Euromoney Legal Media Group, as well as Managing Intellectual Property magazine. Mr. Mandell was nominated by his peers and is recognized as a member of the Law Bulletin Publishing Company's Leading Lawyers Network; he is included in Illinois Super Lawyers (2005–2013); he is listed in The Best Lawyers in America and Who's Who Legal USA-Trademarks as one of the country's leading practitioners in this field of law; and he has been named among the Top 500 Lawyers in America by Lawdragon, as mentioned above. In January 2010, Mr. Mandell was selected as one of the select experts to sit on the Editorial Advisory Board of IP360, a highly regarded publication read by experts in the intellectual property field.

Additionally, Mr. Mandell has authored several written works concerning intellectual property and litigation, some of which have been published and later cited as authority in published cases. He is one of a few nationally known litigators to author a chapter in the treatise, Successful Partnering Between Inside And Outside Counsel, published in 2001 by West Group, under the auspices of the American Corporate Counsel Association (ACCA); that chapter deals with trademark protection. Among the other articles authored by Mr. Mandell or where he has made a significant and noted contribution are: "Personal Name Trademarks—Your Name May Not Be Your Own," 60 Chicago Bar Record 282, 1979, San Francisco Brief/Case Law Review, July 1979, Stanford Agora Law Review, May 2001; 70 Trademark Reporter 326, 1980 (used as authority by Congress in its "cybersquatting" legislation). Contributor: Pattishall-Hilliard, "Trademarks, Trade Identity and Unfair Trade Practices," Matthew-Bender, 1974; Pattishall, "The Dilution Rationale for Trademark-Trade Identity Protection, Its Progress And Prospects," Northwestern Law Review, Vol. 71, No. 5, 1976, 67 Trademark Reporter 607, 1977; "Trade Secrets—What They Are And How To Protect Them," I.I.C.L.E., 1981; "The Disloyal Employee, Protection Of Confidential Information From Breach Of Fiduciary Obligations," I.I.C.L.E., 1982; "Recent Developments In Trademark Law—An Overview," I.I.C.L.E., 1983; "Recent Developments In Trademark Law—An Overview," I.I.C.L.E., 1984; "Intellectual Property On Trial—Trade Dress Litigation Requires A Team Effort," The National Law Journal, Feb. 14, 1994; "Practice Pointers For The Trademark Litigator," The National Law Journal, May 16, 1994; Trade Dress Jury Instructions (INTA, 1998).

Mr. Mandell has been a faculty member of the Illinois Institute for Continuing Legal Education lecturing on Trademark/Trade Secret Litigation. He lectures on intellectual property litigation at law schools and for a wide range of organizations, and has been a member of the faculty of Chicago-Kent College of Law, an adjunct professor of law teaching Trademarks and Litigation.

Mr. Mandell is a member of the Panel of Neutrals for the Alternative Dispute Resolution Program sponsored jointly by the International Trademark Association (INTA) and the International Institute for Conflict Prevention & Resolution, and is on the list of mediators/arbitrators recommended by the US District Court for the Northern District of Illinois for Lanham Act cases filed in that district. He is also "Panel Counsel" for intellectual property and technology cases for AIG Risk Management, Inc.

In addition to a wide range of pro bono activities, Mr. Mandell is an active member of the International Trademark Association (formerly U.S. Trademark Association), the American Bar Association Litigation and Intellectual Property Sections, the Chicago Bar Association, for which he has served as a director of the Young Lawyers Section, and the Intellectual Property Law Association of Chicago.

Mr. Mandell graduated magna cum laude from Northern Illinois University and graduated with honors from the University of Illinois College of Law. He is admitted to the bar in Illinois and to numerous federal courts throughout the country.

Representative published cases are listed below.

Kinbook, LLC v. Microsoft Corp., 866 F.Supp.2d 453 (E.D. Pa. 2012); Affirmed Third Circuit Court of Appeals (January 10, 2013)”.

PODS Enterprises, Inc. v. ABF Freight System, Inc., 100 U.S.P.Q.2d 1708 (M.D.Fla. 2011)

Facebook Inc. v. Various Inc., 99 U.S.P.Q.2d 1300 (ND Cal 2011)

Arcadia Group Brands Ltd. v. Studio Moderna SA, 99 U.S.P.Q.2d 1134 (TTAB, January 6, 2011)

Roxbury Entertainment v. Penthouse Media Group, Inc., 669 F.Supp.2d 1170, 92 U.S.P.Q.2d 1760 (C.D.Cal. November 9, 2009)

Roxbury Entertainment v Penthouse Media Group, Inc., 92 U.S.P.Q.2d 1760 (C.D.Cal. 2009)

Roxbury Entertainment vs. Penthouse Media Group, Inc., 91 U.S.P.Q.2d 1173 (C.D.Cal., April 3, 2009)

Garden & Gun LLC v. TwoDalGals LLC, 88 U.S.P.Q.2d 1672 (W.D.N.C. 2008)

Arcadia Group Brands Limited v. Studio Moderna SA U.S.P.Q.2d (TTAB, September 15, 2008)

Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, 87 U.S.P.Q.2d 1526 (TTAB, May 28, 2008)

E! Entertainment Television, Inc. v. Zoom Hubbard LLC, F.Supp. (N.D.Ill., May 22, 2008)

Romanowski v. RNI LLC, 81 U.S.P.Q 2nd 1894 (N.D. Cal, January, 2007)

GTFM, LLC, FUBU Records, LLC, and GTFM, Inc., v. Universal Studios, Inc., and Universal Music Group, Inc., No. 02 CV. 0506(RO), 2006 WL 1377048 (S.D.N.Y.), 79 U.S.P.Q.2d 1213, 34 Media L. Rep. 1890 (S.D.N.Y., May 16, 2006)

Lewis v. Microsoft Corp., No. 05-CV-343 H(W), 2006 WL 164950 (E.D.N.C. Jan. 23, 2006)

Brunswick Bowling & Billiards Corp. v. Pool Tables Plus Inc., 74 U.S.P.Q.2d 1627 (N.D. Ill 2005)

In re: Aimster Copyright Litigation, 252 F. Supp. 634 (N.D.Ill. 2002, aff'd, 334 F.3d 643 (7th Cir. 2003)); Cert. denied, 540 U.S. 1107 (2004)

Seals v. Compendia, et al, 69 U.S.P.Q.2d 1155 (N.D.Ill. 2003)

In re: Aimster Copyright Litigation, 2003 WL 206188 aff'd, 2004 WL 20188

Planet Hollywood Region IV v. Hollywood Casino, 80 F. Supp.2d 815 (N.D.Ill. 1999)

Alcar Group, Inc. v. Corporate Performance Systems, Ltd., 109 F. Supp.2d 948 (N.D.Ill. 2000)

General Media Communications Inc. v. JMR Creations, 55 U.S.P.Q.2d 1318 (2000)

Watts Health Systems, Inc. v United Healthcare Corp., 960 F.Supp. 1431 (C.D.Cal. 1996)

Napoli v. Sears Roebuck & Co., 926 F. Supp. 780 (N.D.Ill. 1996)

Vijuk Equipment, Inc. v. GUK-Falzmaschinen Griesser & Kunzmann, GmbH & Co. KG, 902 F.Supp.162 (N.D.Ill. 1995)

Napoli v. Sears, Roebuck and Co., 847 F.Supp. 206 (N.D.Ill. 1995)

Napoli v. Sears, Roebuck and Co., 858 F.Supp. 101 (N.D.Ill. 1994)

LegalSource, Inc. v. Source Services Corp., 31 U.S.P.Q.2d 1220 (C.D.Cal., Mar 22, 1994)

Napoli v. Sears, Roebuck and Co., 835 F.Supp. 1053 (N.D.Ill. 1993)

Fruit of the Loom, Inc. v Girouard, 994 F.2d 1359 (9th Cir. 1993)

GTE Directories Service, Corp. v. Pacific Bell Directory, 135 F.R.D. 187 (N.D.Cal. 1991)

Schwinn Bicycle Co. v. Diversified Products Corp., 740 F.Supp. 517 (N.D.Ill. 1990)

Mag Instrument, Inc. v. Sears, Roebuck & Co. 15 U.S.P.Q.2d 1149 (S.D.Tex. 1990)

Coca-Cola Co. v. Alma-Leo U.S.A., Inc., 719 F.Supp. 725 (N.D.Ill. 1989)

Schwinn Bicycle Co. v. Diversified Products Corp., 13 U.S.P.Q.2d 2064 (N.D.Ill. 1989)

Plitt Theatres, Inc. v. American Nat. Bank and Trust Co. of Chicago, 697 F.Supp. 1031 (N.D.Ill. 1988)

Life Fitness, Inc. v. Sears, Roebuck and Co., 7 U.S.P.Q. 2d 1750 (N.D.Ill. 1988)

Proton Corp. v. Proton America Inc., 4 U.S.P.Q.2d 1495 (C.D.Cal. 1987)

Source Services Corp. v. Chicagoland JobSource, Inc., 643 F.Supp. 1523 (N.D.Ill. 1986)

Source Services Corp. v. Source Telecomputing Corp., 635 F.Supp. 600 (N.D.Ill. 1986)

Calvin Klein Co. v. Farah Mfg. Co., Inc., 229 U.S.P.Q. 795 (S.D.N.Y. 1985)

Vandevier v. Mulay Plastics, Inc., 482 N.E.2d 377, 90 Ill.Dec. 558 (Ill. App. Ct. 1985)

Par Pharmaceutical, Inc. v. Searle Pharmaceuticals, Inc., 227 U.S.P.Q. 1024 (N.D.Ill. 1985)

Winkel v. Family Health Care, P.C., 668 P.2d 208 (Mont. 1983)

Walt-West Enterprises, Inc. v. Gannett Co., Inc., 695 F.2d 1050 (7th Cir. 1982)

Stein v. Fiorio, 218 U.S.P.Q. 954 (N.D.Ill. 1982)

Walt West Enterprises v. Gannett Co., Inc., 216 U.S.P.Q. 883 (N.D.Ill. 1981)

Liberty Folder v. Curtiss Anthony Corp., 90 F.R.D. 80 (S.D.Ohio 1981)

Jewel Companies, Inc. v. Jewelcor Inc., 207 U.S.P.Q. 68 (M.D.Fla. 1980)

Bolger v. Danley Lumber Co., Inc., 395 N.E.2d 1066 (Ill.App.Ct. 1979)

Dexter-Lawson Products, Ltd. v. R.B. Graphics Equipment, Inc., 209 U.S.P.Q. 308 (N.D.Ill. 1979)

Dexter-Lawson Products, Ltd. v. R.B. Graphics Equipment, Inc., 210 U.S.P.Q. 79 (N.D.Ill. 1979)

Jewel Companies, Inc. v. Westhall Co., 575 F.2d 1176 (6th Cir. 1978)

Santucci Construction Co. v. Carlo v. Santucci, Inc, 200 U.S.P.Q. 783 (N.D.Ill. 1978)

Underwriters Laboratories, Inc. v. United Laboratories, Inc., 203 U.S.P.Q. 180 (N.D.Ill. 1978)

A.I.T. Industries, Inc. v. Inland Diamond Products Co., 202 U.S.P.Q. 784 (N.D.Ill. 1978)

Giammarese v. Delfino, 197 U.S.P.Q. 162 (N.D.Ill. 1977)

Bass Buster, Inc. v. Gapen Mfg. Co., Inc., 420 F.Supp. 144 (W.D.Mo. 1976)

Jewel Companies, Inc. v. Granjewel Jewelers & Distributors, Inc., 185 U.S.P.Q. 504 (M.D.Fla. 1975)