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Charles A. Laff

Partner

Overview

Chuck represents clients in all phases of intellectual property law. In addition to vigorous and effective litigation, he helps them obtain, maintain, assess, and enforce ownership of valuable intellectual assets in the U.S. and worldwide.

Chuck has represented, among others, makers of medical and dental devices, commercial furniture, industrial ovens, packaging and packaging machinery, computer designed metal alloys, sporting goods, consumer electronic accessories, and toys. His clients appreciate his experienced practical approach to legal matters and his understanding of their business needs.

 

Chuck has been lead trial and appellate counsel in hundreds of lawsuits involving patents, trademarks, copyrights, trade secrets, and unfair competition in federal and state courts across the United States. He also regularly acts as a neutral in intellectual property cases and has attended many mediations on behalf of clients.

A frequent lecturer on IP and related issues, Chuck’s regional and national recognitions include ranking as a top Chicago lawyer by The Wall Street JournalManaging Intellectual Property Magazine named him an IP Star since 2015.

Experience

Chuck has:

  • Successfully represented clients in bench and jury trials and appeals before federal and state courts and U.S. Patent and Trademark Office (USPTO) tribunals, including the Federal Circuit and the Second, Seventh, and Eleventh Circuits
  • Recently obtained a dismissal for lack of personal jurisdiction in his successful defense of a pizza manufacturer in a case filed by a competitor in the U.S. District Court for the Southern District of Florida
  • Recently obtained an early dismissal of a design patent infringement case brought in the U.S. District Court for the Northern District of Illinois against his client, a specialty products manufacturer, thereby achieving a successful outcome without costly discovery proceedings and trial
  • Acted as lead counsel in obtaining a successful settlement of a utility patent infringement case brought on behalf of his client, an oral health products company, in the U.S. District Court of Illinois in which the defendant asserted a trademark infringement counterclaim. 
  • Successfully defended an attack initiated in the USPTO by a competitor against the client’s patent relating to a process for manufacturing interdental picks
  • Acted as lead counsel in prosecuting copyright infringement suits for a well-known performance rights organization in U.S. district courts throughout Illinois
 
  • Involved in a number of noteworthy trademark cases in the Courts of Appeal, including:
    • obtaining a finding in the Seventh Circuit that Disney’s use of TRON for arcade games would likely be confused with his client’s trademark TRON for fuses
    • obtaining a finding from the Seventh Circuit that his client’s use of MAXIM’S for a Chicago restaurant would not infringe the famous MAXIM’S de Paris restaurant name
    • securing a judgment from the Seventh Circuit that his client’s use of COMPUTER AND SOFTWARE NEWS for a magazine title did not infringe the trademark SOFTWARE NEWS for a magazine
    • obtaining a judgment from the Second Circuit finding priority of use of his client’s trademark based on an intent-to-use trademark application in a case of first impression
    • obtaining a holding from the Federal Circuit that the mark FIRE CHIEF was not generic for his client’s magazine devoted to fire fighting
  • Involved in other noteworthy patent, copyright and trademark cases, such as: 
    • obtaining dismissal of a patent infringement claim asserted against his client’s manufacture of lysine, an essential amino acid, which involved billions of dollars of lysine sales
    • obtaining a judgment for infringement of his client’s design patent for an interdental toothbrush, awarding the client a permanent injunction and substantial damages
    • obtaining numerous preliminary injunctions on behalf of a number of clients for copyright and trademark infringement, including injunctions on behalf of Universal City Studios of well-known licensed movie properties, such us ET, JAWS, etc.

Honors & Recognitions

  • AV Preeminent Rated by Martindale-Hubbell®
  • IP Stars, Managing Intellectual Property magazine2015-present
  • The Best Lawyers in America®, Litigation - Intellectual Property and Litigation - Patent, 2008-present
  • Leading Illinois Lawyer by the Leading Lawyers Network
  • "Illinois Super Lawyer" list, 2006-present
  • International Who's Who of Patent Lawyers list, 2013
  • "Chicago Best Lawyers Litigation - Patent Lawyer of the Year" by The Best Lawyers in America®, 2012
  • "Lawyers of the Year" in the area of patent law published by Woodward/White, Inc., 2012

Professional Activities

  • Member, Illinois Bar Association
  • Member, Florida Bar Association
  • Member, Chicago Bar Association
  • Member, American Bar Association
  • Member, Bar Association of the Seventh Federal Circuit
  • Member, American Intellectual Property Law Association
  • Member, Intellectual Property Law Association of Chicago, Vice-President (1991), President-Elect (1992) and President (1993)
  • Member, International Trademark Association, Member of the Panel of Trademark Mediators
  • Adjunct Professor, Loyola University of Chicago School of Law
  • Merit Selection Panel to Assist the Selection of Magistrate Judge for the U.S. District Court for the Northern District of Illinois, 1995
  • Voting Member, United States District Court Civil Justice Reform Act Advisory Committee

Education

Admissions

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