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.