Joseph T. NaborPartner

Joseph T. Nabor has chaired the firm’s Trademark and Copyright practice group since 1989. During that time, he has prosecuted thousands of domestic and foreign trademark applications, including renewals and affidavits of use.

Joe’s practice comprises primarily trademark work—both prosecution and litigation, domestic as well as international—along with copyright and patent counseling. He has been extensively involved in the conduct of discovery, the negotiation of settlement, an extensive motion practice, as well as obtaining and defending against the issuance of injunctions. Joe has been the lead attorney in hundreds of oppositions before the Trademark Trial and Appeal Board (TTAB), in addition to directing oppositions and similar proceedings internationally.

All manner of clients, from start-up companies to Fortune 100 leaders in numerous industries, have sought Joe’s counsel for sophisticated brand and portfolio development strategies. These transactions have included securing trademark rights throughout the world. Joe has also been involved in the acquisition of the intellectual property portfolios of many industry leaders. His clients rely on Joe’s practical approach, which starts with listening to the client to understand the desired outcome, then applying his experience and knowledge to best position the matter, while looking beyond just the legal perimeters to strategically reach the targeted goal.

In the trademark and copyright prosecution area, Joe oversees all trademark and copyright applications filed through the firm. He has extensive experience in dealing with trademark-examining attorneys at the U.S. Patent and Trademark Office (USPTO) and with examining attorneys at the U.S. Copyright Office. Joe has led or participated in a number of ex parte appeals within the USPTO in which the trademark-examining attorneys have refused registration. In those appeals, many of which were argued by Joe before the TTAB, the findings of trademark-examining attorneys were reversed, and the TTAB directed registration of the marks. Joe has also conducted the review of hundreds of search reports regarding the availability of various trademarks on behalf of his clients.

Prior to passing the bar in 1989, Joe worked at Fitch Even as a senior paralegal for ten years.

The Chamberlain Group, Inc. v. Lynx Industries, Inc. (TTAB 2012). Case involved three oppositions that were consolidated into one proceeding. Represented Chamberlain in the earlier U.S. case and was intrinsically involved in the subsequent Canadian opposition and appeal. Case went to trial before the USPTO Trademark Trial and Appeal Board. The client prevailed, and registration was refused in all three cases.

Selig Sealing Products, Inc., v. Upsher-Smith Laboratories, Inc. et al. (N.D. Ill. 2012). Involved a claim of trademark counterfeiting. Obtained a quick resolution on behalf of plaintiff that maintained the integrity of the client’s brand and prevented further counterfeits from entering the marketplace.

Personeta Inc. v. Persona Software Inc. (N.D. Ill. 2005). Obtained a preliminary injunction against the defendant’s use of its corporate trade name, leading to a quick settlement.

Wm. Wrigley Jr. Company v. Whitman's Candies, Inc. (TTAB 2002). Wrigley, our client prevailed in this cancellation proceeding.

Triple-S Inc. et al v. Flexible Benefit Service Corporation (N.D. Ill. 2006). Obtained a favorable settlement on behalf of our client, Flexible Benefit.

Louis Vuitton S.A. v. Kim (N.D. Ill. 1991). Successfully resolved trademark counterfeiting case on behalf of our client, Louis Vuitton.

Arlington International Racecourse v. International Speedway Corporation (TTAB 1996). Opposition dismissed without prejudice. Applicant filed abandonment.

Thrivent Financial for Lutherans v. Credit Union National Association, Inc. (TTAB 2009). Applicant withdrew.

Van Cleef & Arpels S.A. v. GA Modefine S.A. (TTAB 2010). Represented GA Modefine (i.e., Giorgio Armani) in this opposition. Settled to the satisfaction of the client.

• “Trademark Protection Strategies in Social Media,” Fitch, Even, Tabin & Flannery Webinar, April 25, 2012.
• “A Day in the Life of an IP(LAC) Attorney—And How to Get There,” Loyola University Chicago School of Law, October 29, 2012.
• “What Every Lawyer Should Know About Intellectual Property,” Illinois State Bar Association Intellectual Property Section, October 29, 2012.
• “Seven Deadly Intellectual Property Sins and How to Avoid Them,” Techweek 2012 Conference + Expo, Chicago, June 28, 2012.
• “Trademark Protection and Social Media,” International Trademark Association 2012 Annual Meeting, Washington, D.C., April 27, 2012 (Moderator).
• “Protecting Your Intellectual Property Globally,” International Trade Association of Greater Chicago with the Alliance for Illinois Manufacturing/NORBIC and the Chicago Intellectual Property Alliance, October 24, 2011.
• “Trademark Protection Strategies in Social Media,” International Trademark Association 2011 Annual Meeting, San Francisco, May 17, 2011 (Moderator).
• "A Primer on Trademark Office Actions," Illinois State Bar Association Intellectual Property Section, Chicago, May 10, 2011.
• “Learn the Secrets of Beating Your Competition by Protecting Your Business Assets Globally,” Chicago Intellectual Property Alliance and the Alliance for Illinois Manufacturing/NORBIC, Chicago, June 23, 2010 (Moderator).
• “Hot Topics in Intellectual Property Counseling: From Start-up to Initial Public Offering,” Illinois State Bar Association, Chicago, April 28, 2010 (Moderator).
• “Rambus is Final: Where Do We Go From Here?,” Illinois State Bar Association, Chicago, September 11, 2010 (Moderator).
• “Intellectual Property Essentials and IP on the Internet,” Illinois State Bar Association, Chicago, June 9, 2009 (Moderator).
• “Basics of Trade Secret Law,” Illinois State Bar Association, Chicago, June 9, 2009.
• “Ethical issues in Intellectual Property Representation,” Illinois State Bar Association, Chicago, June 9, 2009.
• “TTAB Practice: Tips, Tricks and Pitfalls Encountered Along the Way,” American Intellectual Property Law Association Annual Meeting, Washington, D.C, October 24, 2008 (Moderator).
• “The Trade marks Practitioner An Advanced Course” and “U.S. and Canadian Trade Mark Prosecution Practice: A Comparative Analysis,” Intellectual Property Institute of Canada / McGill University, Montreal, Canada, 2001–08.
• “Trademark Dilution: New Angles After the Trademark Dilution Revision Act of 2006 and Why You Should Care,” American Intellectual Property Law Association, Washington, D.C., March 9, 2007.
• “What Every Lawyer Should Know about Intellectual Property,” Illinois State Bar Association, Bloomington, Ill., January 6, 2006.
• “What Every Lawyer Should Know about Intellectual Property,” Illinois State Bar Association, Chicago, January 27, 2006.
• “Intellectual Property and the Classroom: Reading, Writing Arithmetic and Litigation in the Internet Age,” Illinois State Bar Association, Chicago, March 5, 2004.
• “A Day in the Life of an IP(LAC) Attorney—And How to Get There,” IIT Chicago-Kent College of Law, November 15, 2012.
• Joe has regularly spoken on trademark and copyright topics at Chicago Bar Association programs since 1996.
• “Trademark Law Treaty Implementation Act of 1998,” ISBA Intellectual Property newsletter, Vol. 39, No. 1, November 1999.
• “Trademark Prosecution” in Antitrust and Unfair Competition (Ill. Inst. for CLE, 1998).

• American Bar Association
• Chicago Bar Association
  • Federal Civil Procedure and Patent, Trademark & Copyright Committees
  • Trademark & Copyright Subcommittee, Chair, 1999–present
  • Patent and Copyright Committee, Chair, 2001–02
• Chicago Intellectual Property Alliance
  • Founding Board Member, 2004–present
  • President, 2012–13
  • Treasurer, 2008–11
• Illinois State Bar Association
  • Intellectual Property Section, Member, 1989–present
    • Intellectual Property Section Council, Chair (1997–98; 2007–08); Vice Chair (1996–97; 2008–09); Secretary (1995–96; 2006–07)
  • Standing Committee on the Attorney Registration and Disciplinary Commission Member (2011–present); Executive Officer (1998–99; 2009–10)
• Intellectual Property Law Association of Chicago
  • Member, 1994–present
  • Member, Board of Directors, 1999–2001
  • Historical Records Committee, Chair, 2011–present
  • Various Committees, Chair or Vice-Chair, 1994–99
• International Journal of Innovation
  • Editorial Board, 2008–present
• International Trademark Association
  • Saul Lefkowitz Moot Court Competition National Committee, 2006–present
  • Saul Lefkowitz Moot Court Competition Midwest Regional Committee
    • Chair, 2012–13
    • Vice-Chair, 2008–11
• West Suburban Bar Association