Jay M. Burgett

Direct: (773) 729-2239

Mobile: (312) 659-7157
Fax: (312) 268-5063
Email: jburgett@norvellip.com

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Jay Burgett counsels clients on all aspects of intellectual property law, including patent, trademark, trade dress, copyright, unfair competition, and rights of publicity law. Mr. Burgett specializes in preparing and prosecuting patent applications, prosecuting trademarks (U.S. and International) and copyrights, and drafting and negotiating agreements, including licensing, settlement and employment agreements. Mr. Burgett also has significant experience in proceedings before the Trademark Trial and Appeal Board in the U.S. Patent and Trademark Office, patent and trademark licensing, mergers and acquisitions, and development of patent and trademark protection and enforcement strategies/programs.

Mr. Burgett leads the firm’s Patent Prosecution practice group. His patent work involves a variety of technical areas, including computer software, electrical circuit design, business methods, on-line commerce, wireless communication, semiconductors, navigation systems, audio amplifiers and power tools. Mr. Burgett’s non-legal professional experience includes working at Caterpillar, Inc. as an Electrical Engineer where he designed and tested electrical systems for Caterpillar mining machinery. Mr. Burgett also worked at PSA, now PSA-Dewberry, as an Electrical Engineer where he designed electrical systems for architectural projects. Mr. Burgett is trained in a number of Computer Aided Design (CAD) programs, including Pro/ENGINEER, MicroStation and AutoCAD.

Prior to joining Norvell IP, Mr. Burgett was an associate at a full service intellectual property law firm where he specialized in patent prosecution for technologically advanced companies, such as Yahoo! Inc., Harmon International, and Ryobi Ltd.

Education

J.D., Chicago-Kent College of Law, 2005
B.S., Electrical Engineering with Minor in Mathematics, University of Illinois at Urbana-Champaign, 2001

Admissions

Illinois Supreme Court
U.S. Dist. Court, N.D. Illinois
U.S. Patent & Trademark Office

Areas of Emphasis and Experience

Patent prosecution and patent counseling, including providing infringement and patentability opinions
Worldwide trademark counseling, portfolio management and trademark enforcement actions
U.S. and International patent and trademark litigation
Proceedings before the Trademark Trial and Appeal Board in the U.S. Patent and Trademark Office
Trademark clearance opinions
Negotiating and preparing license, settlement and confidentiality agreements
Advertising and marketing review
IP due diligence
Copyright counseling
Rights of publicity law
Mergers and acquisitions
Entertainment

View Representative Litigation Matters

Recent Federal Court Matters

Swanson Tool Co., Inc. v. Illinois Industrial Tool, Inc. et al. (N.D. Ill.)
Represented Swanson Tool in trademark counterfeiting and trademark infringement action.
Robert Trent Jones Licensing Group v. GFSI, Inc. (N.D. Cal.
Represented plaintiff Robert Trent Jones Licensing Group in suit alleging trademark infringement and breach of licensing agreement
Rees Lee Jones v. Robert Trent Jones, Jr. (S.D. Fla.)
Represented plaintiff Robert Trent Jones in right of publicity case

Recent Trademark Trial and Appeal Board Matters

Swanson Tool Co., Inc. v. Cerwin Industries (T.T.A.B.)
Pending: Representing Swanson Tool in opposition proceeding concerning SPEED SNAP (stylized) trademark
PEI Licensing, Inc. v. Disney Online Studios Canada, Inc (T.T.A.B.)
Pending: Representing PEI Licensing in opposition proceeding concerning CLUB PENGUIN trademark
Vanity Fair, Inc. v. Jantzen Apparel, LLC (T.T.A.B.)
Pending: Representing Jantzen Apparel in opposition proceeding concerning CURVALLURE trademark
Swanson Tool Co., Inc. v. Bill Northrup (T.T.A.B.)
Represented Swanson Tool in opposition proceeding against registration of SPEED WRAP trademark based on a likelihood of confusion and dilution
Irwin Industrial Tool Co. v. Swanson Tool Co., Inc. (T.T.A.B.)
Pending: Representing Swanson Tool in opposition proceeding concerning SPEED trademark
KGS Diamond Holding v. Swanson Tool Co., Inc. (T.T.A.B)
Pending: Representing Swanson Tool in cancellation proceeding concerning SPEEDLINE trademark

View Publications

"INTA to Launch Association Mentor Program" INTA Bulletin, September 2009
"Hmmm, What's That Smell? Scent Trademarks – A United States Perspective" INTA Bulletin, March 2009
"Did You Know That INTA Has a Young Practitioners Subcommittee?" INTA Bulletin, Noevember 2008
"Battling Piracy in the EU: Is the EU Following the US Lead in Cracking Down on Piracy?" (co-author),The Patent Lawyer, Spring 2004

View Presentations

"Protecting [Client's] Identity" (client presentation), Peoria, Illinois, May 2006

View Memberships and Affiliations

International Trademark Association (INTA), Member of the Young Practitioners Subcommittee
Licensing Executives Society
American Intellectual Property Law Association