Edward E. Clair
“As counselors, not only should we know the law, we must also understand each client’s business and industry so that we can formulate and implement the appropriate strategy for each client’s IP needs.”

Edward E. ClairPartner

Chicago
120 South LaSalle Street
Suite 1600
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., IIT Chicago-Kent College of Law, Intellectual Property Certificate Program, 1999
B.S., Electrical Engineering, Marquette University, 1996

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark OfficeU.S. Supreme CourtState of Illinois Supreme CourtU.S. Court of Appeals for the Federal CircuitU.S. Court of Appeals for the Seventh CircuitNumerous U.S. District Courts

Recognition

Selected for inclusion in Illinois Super Lawyers – Rising Stars, 2008-2012, recognizing the state’s top up-and-coming lawyers
IIT Chicago-Kent College of Law
  • Recipient of two CALI awards, for Legal Drafting and Intellectual Property Corporate Transactions, 1999
Obtained two of the first single color nontraditional trademarks covering multiple goods

Since 1997, Edward E. Clair has helped clients identify, prioritize, budget, protect, and enforce their intellectual property assets. His practice covers all aspects of domestic and foreign patents, trademarks, copyrights, advertising, trade secrets, and unfair competition, including client counseling, contracts and other transactional work, prosecution, litigation, and opinion work. Prior to joining Fitch Even in 1998, Ed worked for a manufacturer of automotive and appliance electronics.

Ed has counseled clients engaged in a variety of technical fields, including electronic, electro-mechanical and mechanical inventions, software and hardware, and business methods. The clients Ed works with are mainly midsized to larger privately held businesses that are manufacturers, distributors, or suppliers and involved in the following industries:

  • Digital, RF, and GPS electronics
    • moveable barrier operators
    • security systems
    • navigational equipment
    • measurement instrumentation
    • systems and controllers  
  • Discrete electronic components
    • power and RF magnetics
    • filters and other coil components
  • Software
    • apps/application software for various platforms
    • source code, trading and investment software
    • critical system state analysis software packages
    • gaming software
  • Communication equipment
  • Semiconductor packaging and testing equipment
  • Internet technologies
  • Business methods
  • Professional and consumer irrigation solutions
  • Water softeners and related controls
  • Retail plumbing hardware
  • Green technologies
    • wind, solar, and hydroelectric applications
    • energy efficiency
    • smart grid and power line communication technologies
  • Audio equipment
  • Grounding apparatus
  • Fasteners and machined and molded products
  • Flavoring and ingredients
  • Video gaming hardware, software, and peripherals
  • Consumer electronics
  • Computer-related hardware
    • networking transceivers
    • converters
    • cables
  • Aftermarket power sports equipment and parts and accessories for motorcycles, ATVs, snowmobiles, and personal water craft
  • Vehicle aerodynamics
  • Diversified vehicles
    • mobile command centers
    • S.W.A.T. vehicles
    • mobile tool stores
    • wreckers
  • Electric pumps, pool equipment, and pump backup systems
  • Electric fans and heaters
  • Hand and power tools
  • Air filtration systems and ventilation applications
  • Batteries
  • Vision testing systems
  • Packaging and advertising
  • Container design
  • Printing apparatus and systems
  • Fitness equipment and facilities
  • Assistive products for patients and elderly               
  • Clothing and clothing accessories
  • Consumer products and consumer product distribution
  • Jewelry design and manufacturing
  • Board and online games

Ed has participated in numerous appeals and reexamination and reissue proceedings in the U.S. Patent and Trademark Office (USPTO) and in numerous trademark oppositions and cancellations before the USPTO and foreign trademark offices.



R. M. MFG., CO. v. Sylvie Freemont LLC (TTAB 2012). Filing of extension of time to oppose and letter of protest against allowed and published U.S. trademark application that resulted in revocation of allowance and application being remanded back to examiner and refused.

Lea-Test, Ltd. v. Precision Vision II (N.D. Ill. 2012). Motion for contempt regarding violations of consent decree and settlement agreement relating to copyright and trademark infringement; pediatric vision testing systems and trademarks therefor.

Allen Brothers, Inc. v. Chicago Steak Company, Inc. (N.D. Ill. 2009). Trademark infringement stemming from keyword advertising (i.e., Google AdWords program), unfair competition, false designation of origin, and false advertising and descriptions, unfair competition, and violations of the Illinois Deceptive Trade Practices Act and the Illinois Consumer Fraud and Deceptive Trade Practices Act regarding mail and Internet-ordered steaks.

Decker et al. v. Murdock et al. (N.D. Ill. 2009). Unfair competition/Lanham Act, common law fraud, violation of Illinois Trademark Registration and Protection Act, violations of the Illinois Uniform Deceptive Trade Practices Act, Illinois Consumer Fraud and Deceptive Business Practices Act, violation of the Anti-Cybersquatting Consumer Protection Act regarding dietary supplements.

Flavorchem Corp. v. Flavorchem International Inc. (N.D. Ill. 2007). Trademark infringement, false designation of origin, false advertising and unfair competition, dilution regarding industrial flavoring.

WMH Tool Group, Inc. v. Grizzly Industrial, Inc. and Woodstock International, Inc. (N.D. Ill. 2007). Trademark and trade dress infringement, false advertising, false designation of origin and unfair competition, dilution, counterfeit goods, Tariff Act, counterfeit marks, unknown deceptive trade practices, consumer fraud and deceptive business practices, Illinois Trademark Registration and Protection Act regarding consumer woodworking and metalworking machinery.

Meyer Company, Inc. d/b/a Tomlinson Industries v. Brightway Industries Co. Ltd. (N.D. Ill. 2007). Trademark and trade dress infringement, false advertising, false designation of origin and unfair competition, dilution, Illinois Unfair Deceptive Trade Practices Act, Illinois Consumer Fraud and Deceptive Business Practices Act, Illinois Trademark Registration and Protection Act, industry trade show enforcement regarding faucets and faucet designs.

Nordstrom Consulting, Inc. et al. v. M&S Technologies, Inc. et al. (N.D. Ill. 2006). Copyright infringement, copyright ownership, Digital Millennium Copyright Act, breach of contract, fraud, deceptive trade practices, unfair competition, conversion, intentional interference with prospective business relationships, unjust enrichment, Computer Fraud and Abuse Act, libel, slander, trade secret misappropriation regarding computer software.

LeMans Corporation v. Excel Tire & Wheel Corp. (TTAB 2005). Involved the filing of numerous oppositions and international negotiations relating to potentially conflicting trademarks, copyright infringement, misappropriation of various forms of intellectual property relating to vehicle tires and breach of employees’ fiduciary duties.

WMH Tool Group, Inc. v. SATA Farbspritztechnik GmbH & Co. KG (TTAB 2005). Opposition matter involving international negotiations relating to potentially conflicting color trademarks and trade dress worldwide.

WMH Tool Group, Inc. v. Bessey & Sohn GmbH & Co. KG, et al. (N.D. Ill. 2005). Filing declaratory judgment action against defendant in defense of claims made for trademark and trade dress infringement regarding color marks for hand tools, hand tool packaging and product configurations.

Power Tool Specialists, Inc. v. WMH Tool Group, Inc. (D. Mass. 2005). Defending client in trademark infringement case involving power tools and counterclaiming for cancellation of trademark registrations, tortious interference of business relationships and misappropriation of product tooling and design. Pursuing contemporaneous cancellation proceeding through the TTAB as well.

show / hide More Representative Matters

WMH Tool Group, Inc. v. Cycleurope AB (TTAB 2007). Opposition matter involving international negotiations relating to potentially conflicting trademarks in the United States and Europe.

Walter Meier (Manufacturing) Inc. v. OMAX Corporation (TTAB 2010). Opposition matter involving negotiations relating to potentially conflicting trademarks.

Wayne/Scott Fetzer Company v. Skyline Beauty & Spa Products, Inc. (TTAB 2009). Opposition matter involving negotiations relating to potentially conflicting trademarks.

Apex, LLC v. Wayne/Scott Fetzer Company (TTAB 2009). Defending client in opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Shanghai Jetech Tool Co., Ltd. (TTAB 2007). Opposition matter involving negotiations relating to potentially conflicting trademarks.

Grizzly Industrial, Inc. and Woodstock International, Inc. v. WMH Tool Group, Inc. (TTAB 2007). Defending client in cancellation proceeding handled contemporaneously with a civil lawsuit filed in Federal Court.

Michael G. Willis v. Giant Media LLC (TTAB 2007). Opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. JETYD Corp. (TTAB 2007). Cancellation proceeding involving potentially conflicting trademarks.

WMH Tool Group, Inc. v. Pride Mobility Products Corporation (TTAB 2005). Opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Fujifilm Dimatix, Inc. (TTAB 2006). Opposition matter involving negotiations relating to potentially conflicting trademarks.

LeMans Corporation v. Jason E. Thor (TTAB 2006). Opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Jel Prazisionswerkzeuge Joh. & Ernst Lin K GmbH & Co. KG (TTAB 2006). Opposition matter involving international negotiations relating to potentially conflicting trademarks worldwide.

TBC Brands, LLC v. LeMans Corporation (TTAB 2005). Opposition matter involving negotiations relating to potentially conflicting trademarks.

LeMans Corporation v. James L. Throneburg (TTAB 2006). Opposition matter involving negotiations relating to potentially conflicting trademarks worldwide.

WMH Tool Group, Inc. v. International Technologies Company (TTAB 2005). Opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Oldham Seals Limited (TTAB 2004). Opposition matter involving international negotiations relating to potentially conflicting trademarks worldwide.

Panavise Products, Inc. v. WMH Tool Group, Inc. (TTAB 2004). Defending client in opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Eastway Fair Company Limited (Ryobi) (TTAB 2004). Opposition matter involving international negotiations relating to potentially conflicting trademarks.

Hurco Companies, Inc. v. WMH Tool Group, Inc. (TTAB 2004). Defending client in opposition matter involving negotiations relating to potentially conflicting trademarks.

WMH Tool Group, Inc. v. Vector Products, Inc. (TTAB 2004). Opposition matter involving negotiations relating to potentially conflicting trademarks.

Lea-Test, Ltd. v. Precision Vision (N.D. Ill. 2004). Copyright and trademark infringement; regarding pediatric vision testing systems and trademarks therefor.

Tymen Clay al. v. WMH Tool Group, Inc. (E.D. Mich. 2004). Patent and trade dress infringement regarding power tools and accessories.

SmartSignal Corporation v. Expert Microsystems, Inc. (N.D. Ill. 2002). Patent infringement regarding equipment condition monitoring software for nuclear facilities and other critical systems applications.

Wilson Sporting Goods Co. v. Nicklaus Golf Equipment Company, L.L.C. et al. (N.D. Ill. 2003). Trademark infringement regarding trademarks for golf equipment and apparel.

WMH Tool Group, Inc. v. Truth Hardware Corporation (TTAB 2001). Opposition matter involving negotiations relating to potentially conflicting trademarks.

Recycling Sciences International, Inc. v. Soil Restoration and Recycling L.L.C. et al. (N.D. Ill. 2000). Patent infringement regarding reclamation technologies.

Atlas Electronic Devices Co. v. Q-Panel Lab Products Corporation (N.D. Ill. 1999). Trademark infringement regarding trademarks for environmental chambers.

Berman Industries, Inc. v. Vintage Verandah, Inc. (N.D. Ill. 2000). Copyright infringement regarding lamps and sculptured bases.

Berman Industries, Inc. v. The Bombay Company (N.D. Ill. 2000). Copyright infringement regarding lamps and sculptured bases.

James H. White d/b/a Murobello v. Berman Industries, et al. (D.S.C. 2000). Copyright infringement regarding lamps and sculptured bases.

  • "Developments in Intellectual Property Law," Marquette University CIRCLES program, October 29, 2013.
  • "How to Get the Most Out of Design Patents," Fitch, Even, Tabin & Flannery Webinar, March 21, 2013.
  • Graduate School Engineering Management Program, Intellectual Property Procurement and Management, Guest Lecturer, Marquette University, November 11, 2012.
  • "Intellectual Property Concerns and Best Practices for Clients Having Products Manufactured in Asia," Fitch, Even, Tabin & Flannery Webinar, July 19, 2011.
  • Graduate School Engineering Management Program, Intellectual Property Procurement and Management, Guest Lecturer, Marquette University, November 18, 2010.
  • "U.S. Intellectual Property Law and Practice," various Chinese law firms, 2007.
  • "Items All Attorneys Should Know About Intellectual Property," Walworth County (Wisconsin) Bar Association, October 21, 2004.
  • Various in-house presentations on patents, trademarks and copyrights and best practices relating to same.
  • American Intellectual Property Law Association
  • Delavan Lake Yacht Club
    • Commodore, 2010–11
    • Vice President, Board of Directors, 2012–14
  • Federal Circuit Bar Association
  • Institute of Electrical and Electronic Engineers 

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