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Partner Floyd Mandell Named One of the Top "50 Intellectual Property Trailblazers & Pioneers" by The National Law Journal

Firm News | October 29, 2014

Floyd A. Mandell, national co-head of Katten's Intellectual Property practice and co-head of the Trademarks and Trademark Litigation practice, has been named to The National Law Journal's list of the "50 Intellectual Property Trailblazers & Pioneers." The inaugural list acknowledges those attorneys whom it found to be "trailblazers and pioneers" through their innovative contributions in the important area of intellectual property law.

Tom Larranaga, publisher of The National Law Journal, said, "Today we celebrate a broad cross section of individuals who have played a key role innovating in the field, helping to advance the way copyright, patent, trademark or licensing law is practiced, or changing how IP is established, managed and protected."

Floyd has been a leader in the trademark litigation space for decades and his innovation and foresight has attracted industry leaders, including Universal Studios, HBO, E! Entertainment, AIG, Planet Hollywood, Motorola, Bausch & Lomb, Intel, Microsoft, Yahoo!, Tommy Hilfiger, Topshop, Sears, Scripps, Arkansas Best and Amazon, among others.

Along with forging new paths in the areas of trade dress, trade secret protection and expansion of First Amendment protection to trademarks in media and entertainment, Floyd helped reshape copyright laws involving the online music industry as part of the team representing leading music publishers and labels in the Aimster litigation.

From the start of the Internet age, Floyd blazed the trail in examining the impact of globalization on the law of trademarks, including dilution and cybersquatting, and managed matters involving famous marks from the outset of Lanham Act amendments. Additionally, he has been a pioneer advocating the concept of mediation and establishing it as a first line of discussion at the outset of litigation.

Throughout his career, he has been on the forefront of the evolution of trademark protection from rapid globalization to the emergence and impact of the Internet, helping continuously shape and reshape the way businesses protect their brands.

"I have been blessed to have worked with creative, intelligent clients over the years, and to be surrounded by a tremendous team of lawyers at Katten to work with me," Floyd said. "I owe much of my success to them, as they are every bit as responsible for it as I am."

In response to this distinction, some of Floyd's current and former clients offered these comments below regarding his work.

Julie O. Petrini, Vice President and Deputy General Counsel, Microsoft North America, said:

"I have worked with Floyd my entire career: first as an associate, then as co-counsel and later as a client. We handled a cutting-edge trade dress case through trial early in my career, and we have worked together in many challenging circumstances since. 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. He is one of my most trusted advisors and has always been on the cutting edge of intellectual property litigation."

Carolyn A. Hampton, Senior In-House Counsel, Warner Bros., said:

"I have worked with Floyd almost my entire career, and for over ten years, I oversaw litigation for Universal Studios. Floyd was our number one choice of litigation counsel whenever we had a matter involving trademarks, trade secrets or unfair competition. Our general counsel and I were in agreement that Floyd was the only lawyer we should use regardless of where the case was pending in the United States, and he was the only lawyer we would fly all over the country. That is because Floyd always had our best interests at heart, would always be up to speed on the evolving law, and would often think of creative arguments and/or resolutions. He is the most caring and responsive lawyer I know—on top of being top notch in his field—and together we have achieved enormous success."

Jon O. Webster, Partner, Harter Secrest & Emery LLP; Former Chief Trademark Counsel, Bausch & Lomb Incorporated, said:

"As the long-term Chief Trademark and Senior Counsel, I regularly used Floyd as my primary outside trademark counselor and litigator. Floyd always provided progressive and practical legal advice, and our General Counsel and business and commercial executives always were comfortable and confident that Floyd positioned us to obtain optimally favorable results."

J. Scott Evans, Associate General Counsel – Trademarks, Copyright, Domains & Marketing, Adobe Systems Incorporated, said:

"Floyd was a mentor to me starting when I was a junior in-house lawyer at Fruit of the Loom. Floyd has worked with me my entire career, most recently when I was Head of Global Brand, Domains, & Copyright at Yahoo! Inc. This award is well-deserved because of Floyd's creativity and litigation skills, which maximized our ability to achieve our business objectives."

("50 'Intellectual Property Trailblazers & Pioneers' Recognized by ALM's The National Law Journal on Inaugural List," October 27, 2014)

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