Edward E. ClairPartner

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:

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.

Presentations

• "Asserting Patents and Responding to Threats in the Age of State Anti-Troll Legislation," Fitch Even Webinar, with David A. Gosse, September 25, 2014.
• "Developments in Intellectual Property Law," Marquette University CIRCLES program, October 29, 2013.
• "How to Get the Most Out of Design Patents," Fitch Even 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 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
• Cleantech Open
  • Mentor, Midwest-North Region
• Delavan Lake Yacht Club
  • Commodore, 2010–11
  • Vice President, Board of Directors, 2012–14
• Federal Circuit Bar Association
• Institute of Electrical and Electronic Engineers
• USPTO Patent Pro Bono Hub for Illinois at Chicago-Kent College of Law
  • Volunteer

• October 19, 2021

  IP Alert | "Words Matter" Trend Continues, Applying to Design Patent's Prosecution Prior Art