Joseph T. Kucala, Jr

Direct: (773) 321-0237

Mobile:(630) 453-8380
Fax: (312) 268-5063
Email: jkucala@norvellip.com

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Joe Kucala is a partner at Norvell IP and regularly advises small and large companies alike on all areas of intellectual property law, with particular emphasis on issues related to trademark, copyright, and advertising/marketing law. Mr. Kucala's practice focuses on U.S. and international multi-jurisdictional intellectual property enforcement actions; advising start-up companies on corporate formation and structure; client counseling on marketing, sponsorship, and trademark licensing arrangements; conducting intellectual property audits; advising on anti-counterfeiting matters; and United States and international trademark and copyright prosecution. Mr. Kucala also leads the firm’s Green practice group, which is dedicated to assisting clients in the branding and marketing of eco-friendly or sustainable products and services. The Green practice group also advises clients on the different green certification programs and establishes enforcement programs to protect against the misuse by others.

In addition, Mr. Kucala provides extensive advice to clients regarding a variety of contractual matters, such as manufacturing agreements, distributorship arrangements, and the licensing of intellectual property assets. His clients rely on his knowledge and experience in a wide range of industries. Recent engagements have included private label manufacturing agreements and intellectual property asset acquisitions. Prior to joining Norvell IP, Mr. Kucala was in-house counsel with the Trademark & Copyright Group of Hewlett-Packard Company’s Legal Department. While at HP, he regularly advised his clients on a wide range of trademark and copyright issues, conducted regular client training, and provided extensive legal advice on worldwide anti-counterfeiting issues. His experience at HP also provided him with tremendous insight into the computer hardware, software and services industries. In addition, Mr. Kucala drafted, reviewed, and negotiated a variety of agreements across the business units.

Education

J.D., University of Illinois at Urbana-Champaign, 2001
B.S., Loyola University Chicago, 1998

Admissions

Illinois Supreme Court
U.S. Court of Appeals, Seventh Circuit
U.S. Dist. Court, E.D. Wisconsin
U.S. Dist. Court, N.D. Illinois
U.S. Dist. Court, C.D. Illinois

Areas of Emphasis and Experience

Intellectual property enforcement actions, including international litigation
Worldwide brand protection counseling and portfolio management
Worldwide anti-counterfeiting counseling and enforcement strategy
Contractual arrangements
Advertising and marketing review, in particular environmental claims
Formation of small and middle market entities
IP due diligence
Copyright counseling, including photography and digital rights management issues

View Representative Litigation Matters

Recent Federal Court Matters

Virgin Enterprises Limited v. Artistic Cube et al., (N.D. Ill.) Representing Virgin Enterprises in pending trademark infringement action
Brunswick Corp. v. PreRay Boats et al. (S.D.N.Y.) Represented plaintiff Brunswick Corporation in trademark infringement and cybersquatting action
Chicago Mercantile Exchange, Inc. v. Globex Foreign Exchange Corp. (N.D. Ill.)
Represented plaintiff Chicago Mercantile Exchange Inc. in trademark infringement and cybersquatting action
Swanson Tool Co., Inc. v. Illinois Industrial Tool, Inc. et al. (N.D. Ill.)
Represented Swanson Tool in trademark counterfeiting and trademark infringement action
The Chamberlain Group, Inc. v. GMI Holdings, Inc. et al. (N.D. Ill.)
Represented defendant Rhine Electronic Co., Ltd. in patent infringement lawsuit
Kingsbury International et al. v. Trade The News, Inc. (N.D. Ill.)
Represented defendant Trade The News in copyright infringement lawsuit
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
Deutsche Telekom AG v. Hewlett-Packard GmbH (Germany)
Managed lawsuits for defendant Hewlett-Packard alleging infringement of the color
magenta
Hewlett-Packard Development Company v. iRiver (N.D. Cal. and 4 foreign countries)
Managed U.S. and foreign lawsuits for plaintiff Hewlett-Packard regarding infringement of HP
trademark
Hewlett-Packard Development Company, L.P. v. Lexon et al. (M.D. Fla.)
Managed lawsuit for plaintiff Hewlett-Packard alleging sale of counterfeit HP computer and networking hardware
HHP, Inc. v. Hewlett-Packard Company (W.D.N.C. and 8 foreign countries.)
Managed U.S. declaratory judgment lawsuit for defendant Hewlett-Packard alleging noninfringement and foreign trademark infringements for plaintiff Hewlett-Packard
of HP trademark, and trademark infringement actions filed in eight different countries
Rockwell Automation, Inc. v. Schneider Automation, Inc. (E.D. Wisc.)
Represented defendant Schneider Automation in suit alleging patent antitrust claims
Francois Associates Architects v. Jack Ruch Quality Homes, Inc. et al. (C.D. Ill.)
Represented plaintiff architect in copyright infringement lawsuit relating to architectural works and technical drawings
YourVitamins, Inc. v. Bridgeport (D. Nev.)
Represented plaintiff YourVitamins in trademark infringement and domain name action
Davis & Small Décor v. Desperate Enterprises, Inc. (D.S.C.)
Represented co-defendant The Country Peddlers and Company of America, Inc. in copyright and trade dress infringement action
eSpeed, Inc. v. Chicago Mercantile Exchange (N.D. Tex.)
Represented co-defendant Chicago Mercantile Exchange in patent infringement litigation

Recent Trademark Trial and Appeal Board Matters

Brunswick Corp. v. Sunkissed Enterprises, Inc. (T.T.A.B.) Representing Brunswick in cancellation proceeding concerning the AQUAPALOOZAA trademark
Virgin Enterprises Limited v. Michael Casey (T.T.A.B.) Representing Virgin Enterprises in opposition proceeding concerning the VIRGIN trademark
Chicago Mercantile Exchange Inc. v. Clifton Group Investment Management Group (T.T.A.B.) Represented CME in opposition proceeding concerning the CME trademark
Playboy Enterprises International, Inc. v. William F. Braconi et al., (T.T.A.B.) Represented Playboy in opposition proceeding concerning Rabbit Head Design
Brunswick Corp. v. RMCL, Inc. (T.T.A.B.) Represented Brunswick in opposition proceeding concerning SEA RAY trademark
Brunswick Bowling & Billiards Corp. v. Pinworx Bowling International, LLC
(T.T.A.B.) Represented Brunswick in opposition proceeding concerning PINWORX trademark
Rodney Masri v. Martinellie, Inc. (T.T.A.B.) Pending: Representing Mr. Masri in opposition proceeding concerning ENERGY trademark
AtHome America, Inc. v. AMC, Inc. (T.T.A.B.) Represented AtHome America in opposition proceeding concerning AMERICA AT HOME trademark
Sanofi-Aventis v. Sanovi Technologies (T.T.A.B.) Represented Sanovi Technologies in opposition proceeding concerning the SANOVI trademark
KGS Diamond Holding v. Swanson Tool Co., Inc. (T.T.A.B) Represented Swanson Tool in cancellation proceeding concerning SPEEDLINE trademark
Apollo Tyres, Ltd. v. Tyres International (T.T.A.B.) Represented Indian tire manufacturer, Apollo Tyres, in cancellation proceeding concerning APOLLO trademark
PC Connection, Inc. v. Onaro (NetApp) (T.T.A.B.) Represented Onaro in opposition proceeding concerning SERVICE CONNECT trademark
International Profit Associates, Inc. v. Colombik & Associates (T.T.A.B.) Represented International Profit Associates in opposition to application to register the mark IPA.)
Blue Cross & Blue Shield Association v. World Cotton Textiles (T.T.A.B.) Represented Blue Cross Blue Shield in opposition to application to register the mark BLUE CROSS
Blue Cross & Blue Shield Association v. Chesapeake Health(T.T.A.B.) Represented Blue Cross Blue Shield in opposition to application to register the cross design
Blue Cross & Blue Shield Association v. Heartland Healthcare Coalition (T.T.A.B.) Represented Blue Cross Blue Shield in opposition to application to register the cross design

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