Joseph Welch's litigation motto is: "Fight hard, fight clean, and maintain a sense of humor." With over 25 years representing companies in litigation, business planning, and transactions, he understands that the client's goals are paramount and works hard to provide efficient analyses and advice. It helps, of course, that he enjoys what he does.
"Why wouldn't I? Knowledgeable clients, challenging issues, good results for our clients, a firm full of talented lawyers-you'd have to be a grinch not to enjoy this."
Welch currently serves as the firm's Managing Partner, and says clients looking for IP lawyers have come to the right place at Pattishall. "We literally wrote the book on non-patent IP law," he explains. "Our lawyers teach at major law schools, publish books and articles, speak at high-profile events, draft important legislation, and lead IP organizations at the local, national, and international levels. The breadth and depth of our experience can't be matched."
A recognized leader in the intellectual property field, Welch has handled a wide variety of IP matters, including ones involving brands, copyrighted materials, and advertising. He's been an expert witness in brand, copyright, advertising and IP tax cases.
Welch has extensive experience in advertising law. In a three-year period, he handled over 100 arbitrations for a single client in the highly-competitive telecommunications industry, going after a competitor's ads for alleged deception. "These cases have to be resolved quickly and efficiently," he notes. "If litigation drags on for years, even a winning client may have lost critical market share."
Welch, with his partner David Hilliard, won the Sun Life case in the Eleventh Circuit, which established the doctrine of "inevitable confusion." In that case--involving two companies that had coexisted for many decades using similar names--Welch and Hilliard used a "mystery shopper" survey and anecdotal evidence to show that the confusion had become intolerable and "inevitable."
Welch has experience in the wide variety of industries identified below, as well as with universities and non-profit organizations. Under his guidance, clients have implemented global licensing and registration programs, as well as policing programs aimed at preventing misuse, infringement, counterfeiting, gray market imports, and domain name cybersquatting.
In addition to being a mediator himself, Welch has represented clients in more than two hundred alternative dispute resolution proceedings. He's listed in the International Who's Who of Business Lawyers, Who's Who Legal, the World's Leading Trademark Practitioners and many similar publications. Both the American Bar Foundation and the American Intellectual Property Law Association have honored him as a Fellow. His peers voted him an Illinois "Leading Lawyer" and an Illinois "Super Lawyer," and he was the subject of a feature article in Illinois Super Lawyer magazine.
Welch encourages businesses to enlist IP counsel early on. "We can help you protect your intellectual property--internally and externally--by identifying your IP assets (and potential assets), guiding you in their proper use and protection, minimizing your risks through clearance and investigation, and identifying the best way to acquire, license, and sell your IP assets. Whether your company is a start-up or a multi-national, we can help you with the quality of service you deserve."
Active in the arts community, Welch serves on the board of Chicago Slam Works, an organization rooted in the poetry slam movement and devoted to promoting performance poetry.
Welch has been admitted to the following courts:
- Supreme Court of Illinois - State of Illinois (11/16/1984)
- United States District Court for the -Northern District of Illinois (12/19/1984)
- United States Court of Appeals for the Federal Circuit (12/23/2003)
- United States Court of Appeals for the Fifth Circuit (04/13/1989)
- United States Court of Appeals for the Sixth Circuit (11/12/1993)
- United States Court of Appeals for the Seventh Circuit (07/30/1993)
- United States Court of Appeals for the Eleventh Circuit (08/12/1991)
Welch also has been admitted pro hac vice to district courts across the country.
Honors & Awards
ˇ 2012 The International Who's Who of Trademark Lawyers 2012 : One of the world's leading Trademark lawyers
ˇ 2012 The International Who's Who of Business Lawyers : Recognized
ˇ 2012 World Trademark Review 1000 : Joseph N. Welch II is respected for "his encyclopaedic knowledge of trademark law"
ˇ 2012 Illinois Super Lawyers : An Illinois "Super Lawyer"
ˇ 2012 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
ˇ 2011 The International Who's Who of Trademark Lawyers 2011 : One of the world's leading Trademark lawyers
ˇ 2011 World Trademark Review 1000 : Joseph N. Welch II is described as "a true expert in the field"
ˇ 2011 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
ˇ 2011 Illinois Super Lawyers Magazine : An Illinois "Super Lawyer"
ˇ 2011 The International Who's Who of Business Lawyers : Recognized
ˇ 2010 Leading Lawyers Magazine, Business Edition : Selected as a "Top Business Lawyer in Intellectual Property Law in Illinois"
ˇ 2010 The International Who's Who of Trademark Lawyers 2010 : One of the world's leading Trademark lawyers
ˇ 2010 The International Who's Who of Business Lawyers 2010 : One of the world's leading Business lawyers
ˇ 2010 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
ˇ 2010 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Litigation
ˇ 2010 Super Lawyers, Corporate Counsel Edition : An Illinois "Super Lawyer" in Intellectual Property Litigation
ˇ 2009 Managing Intellectual Property : Selected as a "World's Leading Trade Mark Practitioner"
ˇ 2009 Chicago Lawyer Magazine : Selected as a "Top Intellectual Property Lawyer in Illinois" by Leading Lawyers Network
ˇ 2009 American Bar Foundation : Nominated by his peers to be a Fellow, an honor limited to one-third of one percent of the lawyers in America
ˇ 2009 Who's Who Legal, The International Who's Who of Business Lawyers : Recognized
ˇ 2009 Leading Lawyers Network Magazine : A "Leading Lawyer" in Intellectual Property
ˇ 2009 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
ˇ 2009 The International Who's Who of Trademark Lawyers 2009 : One of the Leading Trademark Attorneys in the World
ˇ 2008 Who's Who Legal Illinois : Described Joe Welch as a "seasoned litigator"
ˇ 2008 Who's Who Legal, The International Who's Who of Business Lawyers : Complimented on being "great to work with"
ˇ 2008 Martindale-Hubbell Bar Register : AV® Rated Preeminent Lawyer
ˇ 2008 Who's Who Legal: Illinois 2008 : An "Illinois leading lawyer in Trademark law"
ˇ 2008 Managing Intellectual Property : A "World's Leading Trade Mark Practitioner"
ˇ 2008 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
ˇ 2007 Who's Who Legal, The International Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
ˇ 2007 Marquis Who's Who in American Law, 30th Anniversary Edition : Recognized
ˇ 2007 The International Who's Who of Trademark Lawyers 2007 : Recognized
ˇ 2007 Leading Lawyers Network Magazine : Named a "Leading Lawyer" in Intellectual Property Law
ˇ 2007 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
ˇ 2006 Who's Who Legal, The International and U.S. Who's Who of Business Lawyers : A "world's leading practitioner" in intellectual property law
ˇ 2006 American Intellectual Property Law Association : Recognized as an AIPLA Fellow for outstanding service in the profession, learned contributions to the profession and highest standards of ethical conduct
ˇ 2006 Law & Politics : An Illinois "Super Lawyer"; subject of the feature article "The Lawyer With a Song in His Heart," in Super Lawyer Magazine
ˇ 2005 Law & Politics : An Illinois "Super Lawyer" in Intellectual Property Law
ˇ 2005 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law
ˇ 2004 Law Bulletin Publishing Company : Selected as a "Leading Lawyer" in Intellectual Property Law
Trials, Appeals & Litigation
ˇ Bayer HealthCare LLC v. Gidget Marks, LLC, Opposition No. 91196940 (TTAB 2011) (Trademark)
ˇ More Cupcakes, LLC v. Lovemore LLC, Case No. 1:2009cv03555 (N.D. Ill. 2009, Judge Kocoras) (Trademark Infringement)
ˇ Illinois Tool Works v. Phoenix American Holdings, Inc., Case No. 2:2008cv05721 (C.D. Cal. 2008, Judge Snyder) (Trademark Infringement)
ˇ Milwaukee Electric Tool Corporation v. Robert Bosch Tool Corporation, 2007 WL 2875232 (N.D. Ill. 2007, Judge Kendall) (Trademark Infringement)
ˇ FF Acquisition Corp. v. Pacific Cycle L.L.C. and Torpedo Sports USA, Inc., Case No. 1:2003cv00257 (N.D. Miss. 2005, Judge Davidson) (Trademark Infringement)
ˇ Darden Corp. et al (Olive Garden) v. IHOP Corp., Case No. 6:2004cv00149 (M.D. Fla. 2005, Judge Sharp) (Trademark Infringement)
ˇ BSH Home Appliances, et al v. Distribution Direct, et al, Case No. 2:2002cv00306 (D. Utah 2005, Judge Benson) (Trademark Infringement)
ˇ Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corporation, 383 F.3d 1337 (Fed. Cir. 2004, en banc) (Amicus Curiae brief filed on behalf of the ABA regarding attorney-client privilege) (General)
ˇ BSH Home Appliances Corp. v. Big John's Health Center, Case No. 4:2003cv00138 (D. Idaho 2004, Judge Winmill) (Trademark Infringement)
ˇ BSH Home Appliances Corp. v. Krakowski, Case No. 2:2003cv71311 (E.D. Mich. 2003, Judge Cleland) (Trademark Infringement)
ˇ S-B Power Tool Company v. Ryobi Technologies, Inc., Case No. 1:2002cv01056 (N.D. Ill. 2003, Judge Norgle, Sr.) (Trademark Infringement)
ˇ Ford Motor Co. v. A.C. Car Group Ltd., 62 U.S.P.Q.2d 1701 (E.D. Mich. 2002, Judge Roberts) (Copyright Infringement)
ˇ Ford Motor Co. v. Factory Five Racing, Inc., 2002 WL 32155850 (D. Mass. 2002, Judge Zobel) (Trade Dress Infringement)
ˇ S-B Power Tool Co. v. Grizzly Ind. Inc., Case No. 1:2000cv08046 (N.D. Ill. 2001, Judge Nolan) (Trademark Infringement)
ˇ Bayer Corp. v. Selfcare Inc., Case No. 3:2000cv00040 (N.D. Ind. 2000, Judge Miller, Jr.) (Trademark Infringement)
ˇ Chavez v. Arte Publico Press , 204 F.3d 601 (5th Cir. 2000, Judge Jones) (Amicus Curiae brief filed on behalf of AIPLA) (General)
ˇ Road Less Traveled v. Roads Less Traveled, 49 U.S.P.Q.2d 1061 (N.D. Ill. 1998, Judge Anderson) (Trademark Infringement)
ˇ Sun Life Assurance Co. of Canada v. SunAmerica Inc., 45 U.S.P.Q.2d 1621 (N.D. Ga. 1997, Judge Camp) (Trademark Infringement)
ˇ Avon Products, Inc. v. S.C. Johnson & Sons, Inc., 984 F.Supp. 768 (S.D.N.Y. 1997) (BENCH TRIAL-complaint and counterclaims dismissed) (Advertising Promotions)
ˇ Lebas Fashion Imports of USA v. ITT Hartford Insurance Group, 50 Cal.App.4th 548, 40 U.S.P.Q.2d 1809 (Cal. App. 2nd Dist. 1996, Judge Croskey) (Trademark Infringement)
ˇ SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 77 F.3d 1325 (11th Cir. 1996, Judges Carnes), 117 S.Ct. 79 (U.S. Sup. Ct., cert. denied 1996) (Trademark Infringement)
ˇ Libman Co. v. Vining Industries Inc., 69 F.3d 1360 (7th Cir. 1995, Judges Posner, Bauer and Coffee) (Trade Dress)
ˇ Ford Motor Co. v. Cook, 53 F.3d 333 (7th Cir. 1995, Judges Easterbrook, Ripple and Rovner) (Deceptive Trade)
ˇ SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F.Supp. 1559 (N.D. Ga. 1994, Judge Camp) (summary judgment) (Trademark Infringement)
ˇ AT&T v. MCI (Between 1994 and 1998, represented AT&T in over two hundred arbitrations or mini-trials on false advertising claims) (ADR, arbitration, Mediation, and Expert Witnesses)
ˇ The Walt Disney Co. v. Great American Corp., 28 U.S.P.Q.2d 1130 (M.D. Tenn. 1993, Judge Morton) ($1.5 million award) (Trademark Infringement)
ˇ SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 24 U.S.P.Q.2d 1505 (11th Cir. 1992, Judges Hill, Eschbach and Birch) (Trademark Infringement)
ˇ Ford Motor Co. v. Cook, 25 U.S.P.Q.2d 1050 (N.D. Ill. 1992, Judge Hart) (Deceptive Trade Practices)
ˇ Ford Motor Co. v. Keystone Automotive Industries, 23 U.S.P.Q.2d 1478 (E.D. Mich. 1992, Judge Kohn) (Ford awarded $1.8 million) (Copyright Infringement)
ˇ A-Veda Corp. v. Aura Inc., 19 U.S.P.Q.2d 1864 (D. Minn. 1991, Judge Alsop) (Trademark Infringement)
Expert Witness
ˇ Confidential Arbitration (Trade Dress)
ˇ Vermont Pure Holdings, Ltd. v. Thomas M. Sobol, et al., Case No. 06-1814-BLS (Comm. of Mass. Superior Court 2006, Judge Gants) (Advertising Promotions)
ˇ Prevue Pet Products, Inc. v. Avian Adventures, Inc., Case No. 1:1999cv08317 (N.D. Ill. 2002, Judge Norgle, Sr.) (Copyright Infringement)
ˇ Nestlé Holdings, Inc. v. Commissioner of Internal Revenue Service, Docket No. 021562-90 (U.S. Tax Court 2000) (Trademark Valuation)
ˇ Oasis Center for Human Potential v. May Department Stores, Case No. 1:1998cv05612 (N.D. Ill. 1999, Judge Schenkier) (Trademark Infringement)
Professional Activities
ˇ American Bar Association Intellectual Property Law Section Amicus Committee : Co-Chair, 2005-2006; Member, 2010-2012
ˇ American Bar Association Advisory Panel : Member
ˇ American Bar Foundation : Fellow
ˇ Chicago Intellectual Property Alliance : President
ˇ Chicago Intellectual Property Alliance : Director
ˇ American Intellectual Property Law Association : Fellow
ˇ American Intellectual Property Law Association : Board Member
ˇ American Intellectual Property Law Association Amicus Committee : Chair
ˇ American Intellectual Property Law Association Trademark Law Committee : Chair
ˇ American Bar Association Intellectual Property Law Section : Liaison to ABA Litigation Section
ˇ American Bar Association Intellectual Property Law Section Trademark and Unfair Competition Division : Chair
ˇ American Bar Association Intellectual Property Law Section Federal Trademark Legislation Committee : Chair
ˇ American Bar Association Intellectual Property Law Section Trademark Litigation Committee : Chair
ˇ The Trademark Reporter : Editorial Board Member
ˇ Intellectual Property Law Association of Chicago : Treasurer and Board of Managers
ˇ American Intellectual Property Law Association Quarterly Journal : Editorial Board
ˇ International Trademark Association : Projects Editorial Board Member
ˇ Trademark Public Advisory Committee (Appointed by U.S. Secretary of Commerce) : Member
Publications
ˇ Trademarks and Unfair Competition (law school casebook on trademark and unfair competition law), co-author (with Pattishall McAuliffe partners David C. Hilliard and Uli Widmaier) (9th ed. 2012); Supplement to 9th edition and Teachers Manual (2012, Lexis Nexis)
ˇ "Crash Dummies, Cyber-Ads, and the Internet Troika: Recent US Trademark and Unfair Competition Cases," The Computer & Internet Lawyer (October 2011)
ˇ Co-Author (with Pattishall McAuliffe partners David C. Hilliard and Janet A. Marvel, of a single volume treatise for practitioners: Trademarks and Unfair Competition (2001, 5th edition, 2011, Lexis Nexis); on-line edition (2011, Lexis Nexis)
ˇ "Trademark and Unfair Competition Cases in the United States" Year in Review," Advanced Seminar on Trademark Law (Practicing Law Institute 2011)
ˇ Book chapter, "Use of Experts in TTAB Proceedings," A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice (ABA 2010)
ˇ "Overview of 2009-2010 Decisions, Including Keyword Advertising and Auction Site Liability," Advanced Seminar on Trademark Law (Practicing Law Institute 2010)
ˇ "The Trademark Trial and Appeal Board Moves Closer to Federal Court Procedures: Using the New TTAB Rules to your Advantage," 25 The Computer & Internet Lawyer 11 (November, 2008)
ˇ Trademark and Unfair Competition Cases in the United States: 2009 Year in Review in Advanced Seminar on Trademark Law 2010 (Practicing Law Institute 2010)
ˇ Co-authored Real World Implications of Virtual Trademark Infringement, Pattishall Newsletter (Winter 2007)
ˇ "Searching for the Key to Keywords," AIPLA Annual Meeting (October, 2007)
ˇ "Google v. American Blind & Wallpaper: Settled Case Doesn't End National Key Word Debate," Lexis Nexis Expert Commentaries (October, 2007)
Presentations
ˇ "Overview of 2011-2012 Federal Court, TTAB and UDRP Decisions," Practicing Law Institute's Advanced Trademark Law Annual Review 2012, New York, NY (May 2012)
ˇ "Why Betty Boop Is/Isn't a Functional Component and Other Legal Conundrums: 2010-2011 Trademark and Unfair Competition Cases," AIPLA's Annual Meeting 2011, Washington, D.C. (October 2011)
ˇ "Overview of 2010-2011 Federal Court and TTAB Decisions," Practicing Law Institute's Advanced Seminar on Trademark Law 2011, New York City (May 2011)
ˇ "Fine Jewelry, Good Coffee and Judges as Pals: The 2009-2010 Year In Review," Practicing Law Institute's Advanced Seminar on Trademark Law, New York City (April 2010)
ˇ "Spinning the Branded World - Deception and Substantiation in U.S. Advertising," INTA Annual Meeting, Seattle, WA (May 2009) (Moderator)
ˇ "The Top US Trademark Cases of 2008," JurisDiction, the International Intellectual Property Law Podcast with Don Cameron of Cameron & MacKendrick LLP, Toronto, Canada (January 2009)
ˇ "The New TTAB Rules: Using Them to Your Advantage," Practising Law Institute (July 2008)
ˇ "Searching for the Key to Keywords," AIPLA Annual Meeting (October 2007)
ˇ "Trademark Clearance and Investigations" (December 2006)
ˇ "Trade Identity Protection Principles and Strategies," Chicago Bar Association (September 2005)
ˇ "Evidentiary Aspects of Trademark and Related Surveys," Chicago Bar Association (February 2005)