Profile
Jeffrey P. Dunning focuses his practice on advising clients regarding the management of their trademark portfolios, including trademark clearance, registration, maintenance, protection, enforcement, licensing and litigation. Jeff has managed a number of large international trademark portfolios on behalf of major multinational companies in the retail, industrial and food/beverage sectors. For clients needing assistance with patent, unfair competition, domain name and copyright matters, Jeff’s experience extends to providing opinions, prosecution, licensing, litigation and enforcement. In addition, he has deep experience in handling intellectual property litigation, including managing extensive discovery proceedings, obtaining dismissals and summary judgments, and representing clients in numerous evidentiary hearings and jury trials in trademark and patent litigation in federal courts throughout the United States.
Concentrations
- U.S. and foreign trademark clearance, registration, maintenance, protection, enforcement, licensing and litigation
- U.S. and foreign trademark opposition and cancellation proceedings
- Coordinating worldwide anti-counterfeiting enforcement programs
- Trademark, patent, copyright, trade dress, unfair competition and domain name litigation in federal and state courts
- Management of large, diverse international trademark portfolios, including formulation of trademark clearance, prosecution and enforcement strategies, managing foreign counsel, and evaluating and advising clients regarding overall brand protection strategy
- Representation of domestic and foreign trademark applicants in prosecution and adversarial matters before the U.S. Patent and Trademark Office, including in association with applications filed under the Madrid Protocol
- U.S. and foreign patent, design and copyright prosecution and opinions
Capabilities
Experience
- Managed trademark clearance, prosecution, maintenance and enforcement, including oversight of sizeable U.S. and foreign trademark portfolios, for numerous companies including:
- Fortune 500 global industrial supply company
- Global manufacturer and distributor of replacement parts, equipment, and accessories for the forestry, lawn, and garden industries
- International gaming company and operator of over 50 casinos and hotels worldwide
- Leading multinational manufacturer of breakfast cereals and other food and beverage products
- Fortune 500 retailer of sporting goods and outdoor equipment
- National operator of department and discount stores
- Worldwide manufacturer of children's toys and entertainment products
- Leading national provider of financial, corporate benefits and insurance brokerage services
- Represented a leading national provider of financial, corporate benefits and insurance brokerage services in pursuing trademark infringement claims arising out of a competitor’s use of a similar corporate logo, obtaining a preliminary injunction against further infringement.
- Represented a leading Internet search engine in defense of trademark litigation involving alleged infringement of a trademark for e-commerce software, resulting in the issuance of summary judgment of non-infringement which was affirmed on appeal.
- Represented a leading sporting goods retailer in defense of a trade dress infringement suit involving exercise equipment, resulting in the dismissal of the case with prejudice based on plaintiff’s failure to allege ownership of enforceable trade dress rights.
- Represented a leading distributor of exclusive brands of wine, beer and spirits for retailers in defense of a trade dress infringement suit involving the design of a beer bottle, resulting in a favorable settlement.
- Represented an Internet registrar in defense of litigation alleging cybersquatting and trademark infringement, resulting in summary judgment of non-liability.
- Represented a global manufacturer of children's toys and electronic learning aids in the prosecution of an international trademark portfolio, trademark oppositions before U.S. Patent and Trademark Office, and patent and trademark litigation and disputes.
- Represented a manufacturer of printing inks in a trademark dispute with a major chemical manufacturer, resulting in a favorable settlement including assignment of trademark registrations to client.
- Represented a major leading retailer of office supplies in unfair competition litigation arising out of a competitor's use of client's trademarks in Google "sponsored link" advertisements, which was settled by competitor agreeing to cease use of client's marks.
- Represented a Fortune 500 chemical manufacturer in defense of patent litigation with a competitor involving multiple patents in the area of chemical processes and formulations, resulting in favorable Markman rulings and summary judgment of patent invalidity.
- Represented a diamond wholesaler and importer in a three-week jury trial and appeal of an action alleging design patent infringement, resulting in a judgment of non-infringement, invalidity and inequitable conduct, which was upheld by U.S. Court of Appeals for the Federal Circuit.
- Represented a manufacturer of transit seating products in a jury trial and appeal of patent litigation with a competitor, resulting in summary judgment of infringement and favorable settlement.
Recognition & Leadership
- Listed, Leading Lawyers Network, 2019-2024
- Listed, World Trademark Review, "WTR 1000," 2015-2024
- Ranked in Illinois, Prosecution and Strategy, 2015-2024
- Team Member, a U.S. News - Best Lawyers® "Law Firm of the Year" in Trademark Law, 2020, 2022
- Listed, The Legal 500 United States, 2019-2020 and 2022-2024
- Intellectual Property - Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing), 2022-2024
- Intellectual Property - Trademarks Litigation, 2019-2020
- Listed, Super Lawyers magazine, Illinois Super Lawyers, "Rising Star," 2011 and 2013-2014
- Member, International Trademark Association
- Harmonization of Trademark Law and Practice Committee, 2020-2021
- Member, American Bar Association
- Member, American Intellectual Property Law Association
- Past Chair, Trademark Prosecution Subcommittee, Chicago Bar Association
- President, Phi Kappa Building Association of Alpha Chi Rho fraternity
Credentials
Education
- M.S., Aeronautical & Astronautical Engineering, University of Illinois at Urbana-Champaign, 2000
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J.D., Washington University in St. Louis School of Law, 1998
- Articles Editor, Washington University Journal of Urban and Contemporary Law
- B.S., Aeronautical & Astronautical Engineering, University of Illinois at Urbana-Champaign, 1995
Admissions
- Illinois
- Missouri
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Western District of Wisconsin
- U.S. Patent and Trademark Office
Languages
- German