Herbert H. Finn concentrates his practice on all aspects of patent, trademark and copyright law both within the United States and internationally with a particular emphasis on litigation. In addition to his vast experience in obtaining and defending his clients' various intellectual property rights, Herb has experience in the negotiation of all types of agreements related to intellectual property including acquisitions, licenses, non-competes and non-disclosures.
Areas of Concentration
· Patent, trademark and copyright prosecution - U.S. and foreign countries
· Patent, trademark, trade dress, copyright and unfair competition litigation and arbitration - U.S. and foreign countries
· Trademark oppositions and cancellations - U.S. and foreign countries
· Patent, trademark, trade secret and copyright transactions
· Intellectual property due diligence investigations and audits
· Counseling U.S. and foreign clients in varied aspects of U.S. and international intellectual property law
· Preparation and negotiation of licenses
· Patent searches for patentability, infringement and avoidance opinions
Significant Representations
· Representation of Google, and 50 other co-Defendants, in a coordinated defense to allegations of trademark infringement and unfair competition where Plaintiffs seek million in damages.
· Representation of Lorillard Tobacco enforcing its trademark rights against resellers (both wholesalers and retailers) of counterfeit goods.
· Representation and counseling of Canon Communications, an international leading provider of trade shows, conferences and publications dedicated to the advanced manufacturing sector, counseling, supervising and maintaining its international trademark and copyright portfolio and web presence.
· Representation and counseling of VTech Holdings, and its subsidiaries, in connection with international intellectual property matters including the obtaining, maintaining, licensing and enforcing patents, designs, trademarks, trade names, trade dress, copyrights and trade secrets rights as well as defending against accusations of infringement of third party rights.
· Representation and counseling of Laboratories De Biologie Vegetale (Yves Rocher), a leading French health and beauty company, to develop, obtain, maintain and protect its intellectual property in the U.S. In doing so, we have assisted with the marketing of products towards the expansion and maintenance of the company's entire patent and trademark portfolio as well as avoiding and defending against accusations of infringement of third party rights.
· Representation of Douglas Press, a novelty gaming manufacturer, in its industry-wide enforcement efforts asserting its patent and trademark portfolio.
· Representation of Se-Kure Controls, a manufacturer of retail anti-theft and loss equipment, in its industry-wide enforcement and licensing efforts asserting its patent portfolio.
· Representation of Primax Electronics in the defense of a patent infringement allegation through summary determination.
· Representation of Nucleus Technologies as its international intellectual property counsel handling all aspects of domestic and foreign intellectual property, including obtaining, maintaining, licensing, and enforcing patents, designs, trademarks, trade names, trade dress, copyrights, and trade secrets as well as negotiating various licenses and agreements.
· Representation of Verizon Wireless in defense of accusations of patent infringement.
· Representation of LG Electronics before the United States International Trademark Commission.
Professional & Community Involvement
· Member, American Bar Association
· Member, Illinois Bar Association
· Member, Chicago Bar Association
· Member, Association of Trial Lawyers of America
· Member, Decalogue Society of Lawyers
· Member, International Trademark Association
Awards & Recognition
· Listed, Strathmore's Who's Who
· Selected by Super Lawyers magazine, 2007 - 2012
· Selected by Leading Lawyers Network, 2009 - 2012
· Listed, Madison Who's Who
Articles, Publications, & Lectures
· Speaker, "Launching a Product in a Competitive Market: Avoiding IP infringement and developing a product that immediately differentiates itself," Medical Device & Manufacturing Midwest Exhibition and Conference, September 23, 2009
· Speaker, "Terrific! You're Mired Down in an Ugly Patent Dispute...Now What?" PricewaterhouseCoopers' General Counsel Forum, October 2006