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.
U.S. Hanger Design Center, Inc. v. Caliber Corporation (E.D.N.Y. 2016). Represented Caliber in this matter that challenged the rights of Caliber to a unique configuration trademark. Following service of the complaint, we initiated discussions with the counsel for Plaintiff, which resulted in the complaint being withdrawn before the Answer was due based on those discussions.
Epic Provisions v. Luchi LLC (W.D. Tex. 2015). Represented Luchi in defense of its trademark rights. Case settled favorably for Luchi to maintain its trademark rights and control of the vegetarian protein supplement market.
Medefil, Inc. v. Messias Bassile (TTAB 2015). Represented Medefil in the enforcement of its trademark rights. Opposition was sustained on a default judgment resulting in the refusal of registration of the objectionable mark.
CTIA – The Wireless Association v. Enterprise Products Integration (TTAB 2015). Represented CTIA in the enforcement of its trademark rights. Opposition was sustained on a default judgment resulting in the refusal of registration of the objectionable mark.
Nature Delivered Ltd. v. The Purington Beverage Company, LLC (TTAB 2015). Represented Nature Delivered in the enforcement of its trademark rights. Opposition was sustained on a default judgment resulting in the refusal of registration of the objectionable mark.
Bullets2Bandages, LLC v. Caliber Corporation (S.D. Cal. 2014). Represented Caliber in defense of a trademark infringement action. Case was settled in six months with Caliber taking assignment of the registered trademarks.
The Federated Group, Inc. v. Forefront Enterprises, LLC (TTAB 2014). Represented The Federated Group in opposition to registration for RED & WHITE and negotiated settlement resulting in express limitations on the applicant’s use of its mark.
The Chamberlain Group v. VBN Sales LLC (TTAB 2013). Represented Chamberlain in this opposition to the mark Lockmaster. Successfully resulted in the applicant expressly withdrawing the application.
The Federated Group, Inc. v. Meals to Live, Inc. and QS Holdings, Inc. (TTAB 2013). Represented The Federated Group in this opposition to registration of the mark Quick Sticks. A settlement was obtained that resulted in a limiting amendment to the application and an express limitation on the use of the mark by the applicant.
Milbon Co., Ltd., et al. v. Hair Color Research Group, Inc., et al. (N.D. Ill. 2013). Represented Milbon in this action for trademark infringement. Settlement negotiations resulted in an agreed permanent injunction and judgment being entered in favor of Milbon.
Body & Soul Ministries, Inc. v. Martha Stewart Living Omnimedia, Inc. (TTAB 2012). Represented Body & Soul Ministries in opposition to BODY & SOUL and negotiated on behalf of our client to obtain withdrawal of application by applicant.
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.
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.
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.
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.