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Floyd A. Mandell

Partner
floyd.mandell@kattenlaw.com
Chicago Office
p+1.312.902.5235
f+1.312.902.1061
Overview

Floyd A. Mandell is national co-chair of Katten's Intellectual Property department and co-head of the Trademarks and Trademark Litigation practice. He has earned widespread recognition for his world-class intellectual property counseling and litigation practice, which covers trademarks, trade dress, unfair competition, trade secrets, copyrights, high-tech disputes, e-commerce/Internet disputes, false advertising, entertainment litigation and First Amendment litigation.

Clients have described Floyd 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" (Legal 500). The general counsel of an international company stated that Floyd is "a brilliant intellect with integrity and a powerful personality capable of forging favorable settlements and favorable court decisions for clients" (The Lawdragon 500 Leading Lawyers in America). He is known for his work in the entertainment, media and technology industries, and for being a "go-to attorney" with an "extremely responsive, pragmatic and business-oriented" approach (Chambers USA). A trusted advisor, "Floyd continuously demonstrates the ability to grasp the client's goals, foresee potential pitfalls, and then find the best path to resolution through creative advocacy and dogged attention to the client's needs" (The National Law Journal). One leading brand owner states: "He is an exceptional litigator who can tackle complex and difficult cases. He is thoughtful, practical, dedicated, and passionate about client needs and can reach the most effective solution in the face of adversity."

In 2012, Floyd was recognized by Law360 as a 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. Floyd was one of only 10 intellectual property lawyers from across the country to be named Law360 MVPs for 2012. In 2010, he was selected for Law360's list of the 10 Most Admired Intellectual Property Attorneys in the United States, an award based on a survey taken of his peers at the 100 largest law firms in the country. Also in 2010, Floyd was selected to sit on the IP Law360 Editorial Advisory Board.

Floyd 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.

Nominated by in-house counsel and other leading trademark practitioners, Floyd has been listed in the Legal Media Group’s Guide to the World's Leading Trademark Practitioners and recognized as a member of the Leading Lawyers Network. He has been selected for inclusion in Illinois Super Lawyers (2005–2015), is listed in The Best Lawyers in America and is named in Who's Who Legal USA – Trademarks (2013–2016) as one of the country's leading practitioners in this field of law.

Floyd has been 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 (2005–2015) and for Entertainment Litigation (2005–2006). In 2011, he was selected as the top intellectual property attorney in the United States and in 2016, as the top trademark attorney in Illinois by the International Law Office (ILO), an affiliate and partner of the Association of Corporate Counsel and the International Bar Association. The ILO Client Choice award is unique because only corporate counsel can choose the winner and Floyd received the top recognition out of 2,000 nominations. The award focuses on client care, quality of service and adding value to clients' business.

Floyd has been recognized as one of the top trademark litigation attorneys in the United States and "a veritable dean of the trademark bar" by the World Trademark Review (WTR) 1000 – The World's Leading Trademark Professionals (2011–2018) and appears on World Intellectual Property Review’s “WIPR Leaders.” He is also named among the IP Stars for Illinois in the 2013–2016 editions of Managing Intellectual Property's IP Handbook, and was named to The National Law Journal's list of the "50 Intellectual Property Trailblazers & Pioneers" (2014).

In 2009, 2010 and 2011, Floyd was selected by IAM Magazine as one of the 250 top intellectual property strategists in the world. Floyd has also been included each year since the expanded version of the publication, IAM Strategy 300, was created.

Floyd has a Martindale-Hubbell® AV® Preeminent™ rating and is recognized as an AV Preeminent® Top-Rated Lawyer in Intellectual Property Law. He also was recognized as a leading practitioner in the Legal Media Group's 2016 Trade Mark guide.

Floyd has served as lead trial counsel for domestic and international clients including Microsoft Corporation; PepsiCo/Gatorade; Cracker Barrel; Forever 21; Cumulus Media; Westwood One; Boar’s Head; Tommy Hilfiger; Arcadia Group Limited and its Topshop brand; Yahoo!; Fruit of the Loom, Inc.; GTE Corp.; Allstate Insurance Company; Planet Hollywood International, Inc.; Polaroid; Sears; PriMedia, Inc.; Times Mirror, Inc.; Bausch & Lomb Incorporated; Universal Studios; Universal Music Group; Home Box Office, Inc.; the Chicago White Sox; the Chicago Bulls; Arkansas Best Corporation; Motorola; SANYO; E! Entertainment Television, LLC; PVH Corp.; USA Cable Entertainment LLC; AIG Technical Services, Inc.; Santa Margherita S.P.A.; and Sony Music Entertainment. His work on behalf of clients has resulted in more than 40 published decisions, many of which have involved novel or cutting-edge issues concerning emerging areas of intellectual property law and have garnered national attention. On more than one occasion, Floyd has litigated cases with more than $1 billion in value at stake for his clients.

Floyd is a sought-after media source on trademark litigation and alternative dispute resolution issues and frequently lectures on intellectual property litigation. He has been quoted in national publications including The Wall Street Journal, The New York Times, Law360, the Los Angeles Times and the Chicago Tribune, has been featured in Success magazine and has appeared on The Today Show. He has authored several written works concerning intellectual property and litigation, some of which have been published and later cited as authority in published cases. Each year he authors a chapter on trademark for the Thomson Reuters Westlaw and Association of Corporate Counsel (ACC) treatise Successful Partnering Between Inside and Outside Counsel. Among the other articles authored by Floyd 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); 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 (197); 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 (February 14, 1994); "Practice Pointers for the Trademark Litigator," The National Law Journal (May 16, 1994); and Trade Dress Jury Instructions (INTA, 1998). In addition, Floyd is a member of Law360's "Voices of the Bar" panel.

Recognized as a skilled mediator and arbitrator, Floyd is a member of the Panel of Neutrals for the Alternative Dispute Resolution Program sponsored jointly by the International Trademark Association 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.

Shown below is a selection of Floyd’s engagements.

Experience
  • Peter Ludlow v. Sun-Times Media LLC, et al., 14 L 1529 (Ill. App. Ct. 1st Dist; 2015).
  • E.G. Ground Management v. YCharts and Morningstar, CV15-00055 (C.D. Cal. 2015), motion to dismiss granted.
  • Stuart J. Kaufman, M.D. & Associates, P.A. v. Bausch & Lomb Inc., WL 6154166 (M.D. Fla. 2013).
  • Kinbook, LLC v. Microsoft Corp., 490 F. App'x. 491 (C.A.3 (Pa.) 2013).
  • Braddock v. Jolie, WL 2282219 (N.D. Ill. 2012).
  • Kinbook, LLC v. Microsoft Corp., 866 F. Supp. 2d 453 & WL 246291 (E.D. Pa. 2012).
  • Arcadia Group Brands Ltd. v. Studio Moderna SA, WL 3584469 (N.D. Ill. 2011).
  • E! Entertainment Television, Inc. v. Entertainment One GP Ltd., 363 F. App'x. 510 (C.A.9 (Cal.) 2010).
  • Roxbury Entertainment v. Penthouse Media Group, Inc., WL 2950324 (C.D. Cal. 2009).
  • Roxbury Entertainment v. Penthouse Media Group, Inc., 669 F. Supp. 2d 1170 (C.D. Cal. 2009).
  • Karl Storz GMBH & Co. KG v. Bausch & Lomb Inc., 345 F. App'x. 579 (C.A.Fed. 2009).
  • Romanowski v. RNI, LLC, WL 361125 & WL 323019 (N.D. Cal. 2008, 2007).
  • GTFM, LLC v. Universal Studios, Inc., WL 1377048 (S.D.N.Y. 2006).
  • Brunswick Bowling & Billiards Corp. v. Pool Tables Plus, Inc., WL 396304 (N.D. Ill. 2005).
  • Carlton-Sud Industries, LLC v. Plastics Group, Inc., WL 2812430 (E.D. Mich. 2004).
  • In re Aimster Copyright Litigation, 334 F.3d 643 (C.A.7 (Ill.) 2003).
  • Alcar Group, Inc. v. Corporate Performance Systems, Ltd., 109 F. Supp. 2d 948 (N.D. Ill. 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., 874 F. Supp. 206, 858 F. Supp. 101, 835 F. Supp. 1053 (N.D. Ill. 1995, 1994, 1993).
  • Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (C.A.9 (Cal.) 1993).
  • GTE Directories Service Corp. v. Pacific Bell Directory, 135 F.R.D. 187 (N.D. Cal. 1991).
  • Mag Instrument, Inc. v. Sears, Roebuck & Co., WL 124071 (S.D. Tex.1990).
  • Schwinn Bicycle Co. v. Diversified Products Corp., 740 F. Supp. 517 (N.D. Ill. 1990).

Recognition

Chambers USA - Top Ranked , 2005–2018
Super Lawyers, 2005–2018
Best Lawyers in America, 2010–2019
Legal 500, 2012–2018

Global IP Star

Global IP Star, 2018
World Intellectual Property Review , WIPR Leaders, 2017–2018

World Trademark Review

World Trademark Review, WTR 1000 - The World's Leading Trademark Professionals, 2011–2018
International Law Office Client Choice Award, Intellectual Property Law, 2011
Intellectual Property: Trademarks - Illinois, 2016
Law360, MVP - Intellectual Property, 2012; 10 Most Admired Intellectual Property Attorneys, 2010

Leading Lawyers Network

Leading Lawyers Network

Legal Media Group

Legal Media Group, Guide to the World's Leading Trademark Practitioners
AV Preeminent Peer Review Rating by LexisNexis Martindale-Hubbell

Intellectual Asset Management

Intellectual Asset Management, IAM Strategy 250, 2009–2011; IAM Strategy 300, 2012–2014
Who's Who Legal: Trademarks, 2013–2017

Managing Intellectual Property

Managing Intellectual Property, IP Star, 2013–2017; IP Star – Trademark, 2017
Katten Muchin Rosenman LLP Pro Bono Service Award, 2014

National Law Journal

National Law Journal, Top 50 Intellectual Property Trailblazers & Pioneers, 2014

Lawdragon

Lawdragon, Lawdragon 500, 2010–2013
Firm News
Floyd A. Mandell

Education

  • JD, University of Illinois College of Law
  • BA, Northern Illinois University

Bar Admissions

  • Illinois

Recognition

Chambers USA - Top Ranked
2005–2018
Super Lawyers
2005–2018
Best Lawyers in America
2010–2019
Legal 500
2012–2018

Global IP Star

2018
World Intellectual Property Review
WIPR Leaders, 2017–2018

World Trademark Review

WTR 1000 - The World's Leading Trademark Professionals, 2011–2018
International Law Office Client Choice Award
Intellectual Property Law, 2011
Intellectual Property: Trademarks - Illinois, 2016
Law360
MVP - Intellectual Property, 2012; 10 Most Admired Intellectual Property Attorneys, 2010

Leading Lawyers Network

Legal Media Group

Guide to the World's Leading Trademark Practitioners
AV Preeminent Peer Review Rating by LexisNexis Martindale-Hubbell

Intellectual Asset Management

IAM Strategy 250, 2009–2011; IAM Strategy 300, 2012–2014
Who
2013–2017

Managing Intellectual Property

IP Star, 2013–2017; IP Star – Trademark, 2017
Katten Muchin Rosenman LLP Pro Bono Service Award
2014

National Law Journal

Top 50 Intellectual Property Trailblazers & Pioneers, 2014

Lawdragon

Lawdragon 500, 2010–2013
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Memberships

  • American Bar Association, Intellectual Property and Litigation Sections
  • Intellectual Property Law Association of Chicago
  • International Trademark Association
  • Patent Law Association of Chicago
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