Michael G. Kelber

Michael, chair of the firm’s Intellectual Property practice group, provides strategic counsel to established enterprises and entrepreneurs concerning the development and protection of extensive global intellectual property portfolios. He represents clients from a wide range of industries, including consumer electronics, restaurants, retail housewares, beverage manufacturing, software, entertainment and a variety of technology-focused industries.

Michael has served as lead counsel in trials before state and federal courts throughout the country, and he represents clients in all phases of complex copyright, trademark and patent disputes. Michael also develops proactive risk management strategies that enable brand portfolios to successfully launch and evolve, avoid costly litigation, and overcome intellectual property attacks with a pre-designed litigation strategy.

Michael has prepared and prosecuted thousands of successful U.S. and foreign patent and trademark applications covering numerous brands, products and designs. He frequently negotiates and prepares critical agreements connected to his clients’ portfolios, including patent, trademark and software development licenses, information technology and development agreements, music and book publishing agreements, and film production and distribution agreements.

Before his legal career, Michael worked for a large communications company for six years managing all of its Midwest and Northwest internal office telecommunications needs. This practical business experience has given him valuable insight into how concise communication, risk assessment and pooling resources are critical to enabling clients to make sound business and legal decisions.

Representative Matters:

Camarata v. McDonald’s Corp. (W.D. Wash.; D. Wash.; U.S. Court of Appeals for the Ninth Circuit) – Successfully represented defendant against a domain name squatter who registered domain names that mimicked client’s email domain name suffixes and who thereby acquired incorrectly sent emails intended for employees. Won two UDRP proceedings awarding the transfer of the disputed domain names back to client. After the squatter subsequently appealed to the Washington federal district court, we prevailed on summary judgment, which was ultimately upheld by U.S. Court of Appeals for the Ninth Circuit.

GI Sportz, Inc. v. APX Gear, LLC (C.D. Cal.) – Upon appeal to the U.S. Court of Appeals for the Ninth Circuit, won complete reversal regarding a trade dress infringement claim, paving the way for pursuit of a preliminary injunction.

GI Sportz, Inc. v. Valken, Inc. (D. N.J.) – Won a preliminary injunction against Valken Inc. prohibiting the sale or offer for sale of paintballs of similar appearance to GI Sportz’s Marballizer® paintballs.

GI Sportz, Inc. v. Valken, Inc. (D. N.J.) – Achieved favorable settlement in patent and trade dress enforcement of a paintball marker following Markman briefing.

Heartland Consumer Products LLC and TC Heartland LLC v. DineEquity, Inc. (S.D. Ind.) – Mounted strong defense in a novel trademark lawsuit relating to the protectability of colored packaging, leading to a productive settlement.

Beats Electronics LLC. v. Fanny Wang Headphone Company Inc. (N.D. Cal.) – Obtained a favorable settlement in a product configuration trade dress infringement case over audio headphones.

Neuros Co., Ltd. et al. v. Kturbo, Inc. (N.D. Ill.) – Obtained a favorable victory at trial on several counts for a supplier of turbo blowers against allegations of unfair competition and defamation.

Snap-On Incorporated v. Robert Bosch, LLC. (N.D. Ill.) – Successfully defended a manufacturer of automotive technology products against a temporary restraining order in a patent infringement case.

World Impressions, Inc. v. Disney Enterprises, Inc. and McDonald’s Corporation (N.D. Ill.) – Prevailed on summary judgment and secured award of attorneys’ fees in this case involving unfair competition, dilution, anticybersquatting, copyright infringement and related state claims case.

McDonald’s Corporation v. Moses Samuel, d/b/a McFleishig’s Express (S.D. N.Y.) – Obtained preliminary injunction and consent judgment in a trademark infringement case.

Coca-Cola Company et al. v. William S. Purdy et al. (U.S. Court of Appeals for the Eighth Circuit) – Successfully enjoined domain name infringer from using client’s trademarks in pursuit of a socially charged political purpose.

R.P. Scherer Technologies, Inc.; R.P.S. Technical Services, Inc. and Pursuit Marketing, Inc. v. Brass Eagle, Inc. (W.D. Ark.) – Argued for preliminary injunction against an infringer of a novel product configuration trade dress, forcing a settlement under which the defendant ceased all sales of the infringing paintball product.

McDonald’s Corporation v. 2 Bell, N.V (Trademark Trial and Appeal Board) – Obtained judgment sustaining opposition after trial, barring U.S. trademark registration of infringing mark.

Alexander Global Promotions v. McDonald’s Corporation (D. Wash.) – Successfully defeated plaintiff’s attempt to halt major regional product promotion and ultimately reached favorable settlement on the eve of trial in a copyright infringement claim.

Sea-Watch v. Maptech, Inc. (N.D. Ill.) – After Markman hearing briefing, forced dismissal with prejudice of patent infringement suit against our client.

Zenith Electronics Corp. v. Elo Touchsystems, Inc. (N.D. Ill.) – Upon appeal to the U.S. Court of Appeals for the Federal Circuit, established right of a defendant to assert an unfair competition claim in response to a plaintiff’s public claim of patent infringement.

R+L Carriers, Inc. v. Pegasus TransTech Corporation (S.D. Ohio) – Forced an early dismissal against the client in a multidistrict litigation patent infringement case.

Dixon v. State of Illinois Lottery (Ill. State Ct.) – Successfully defended our client against an alleged violation of Illinois Right of Publicity Act claim.

Frankel v. RPG (S. Ct. N.Y.) – Defeated right of publicity claim on summary judgment.

Intellectual Property Counseling Experience:

Regularly manage the global trademark and patent portfolio for a famous electronics brand consisting of more than 1,000 domestic and foreign trademark registrations and 140 patents in more than 60 countries.

Regularly advise several international restaurant chains regarding policing and maintaining their trademark rights in their family of famous marks.

Regularly represent clients on issues relating to disseminating intellectual property and conducting promotional activity over the Internet.

Regularly represent clients in the acquisition, sale or merger of businesses with respect to due diligence and deal points relating to intellectual property rights.

Spearheaded a worldwide anti-counterfeiting program for a famous consumer electronics brand.

Represented a significant online travel company in a multimillion-dollar outsourcing private label deal.

Represented a major Illinois utility in negotiating a $50 million enterprise resource management consulting agreement to integrate the software and hardware acquired from four different providers to create a comprehensive customer service, billing and technician-dispatch system.

Prepared and negotiated various book publishing agreements.

Prepared patent clearance opinions related to automotive transmissions, e-commerce business method patents, sporting goods, numerous household goods, pneumatic equipment and other technologies.

Prepared and prosecuted patents related to e-commerce platforms, computer equipment, home products, sporting goods and other technologies.