Greer, Burns & Crain

Firm overview:

Greer, Burns & Crain (GBC) is a Chicago-based firm focusing entirely on intellectual property. While modestly sized, the firm counts among its clients a diverse array of large multi-national corporations, universities, small businesses and individuals.

GBC is consistently ranked as among the leading Chicago IP law firms for both contentious and non-contentious trademark legal services. Known both as an active filer of trademarks, and for its anti-counterfeiting work, the firm is considered one of the best for trademark enforcement in the US.

Its trademark attorneys are adept at both the transactional side of resolving trademark dispute resolution—including legal issues associated with domain name disputes—and in litigating trademark disputes when necessary.

While operating from just two US offices (Chicago and San Diego), GBC works with a network of colleagues internationally to represent US-based clients in establishing and protecting their IP portfolios.

Team overview:

GBC’s trademark team is led by partner Amy Ziegler and shareholder Justin Gaudio (Recommended, Contentious), who is recognised as “a trendsetter on the litigation side of non-traditional enforcement”.

Gaudio’s legal practice encompasses all aspects of IP law, with significant experience and emphasis on online trademark enforcement and technology law. He regularly handles matters related to developing and implementing programmes to combat online counterfeiting and infringement, helped by his technical background. As a result, GBC has seized hundreds of thousands of counterfeit domains and millions of dollars in assets.

Ziegler is considered among the top trademark attorneys in Illinois. She manages global trademark portfolios for a variety of businesses, including companies in the software, data, manufacturing, luxury and consumer goods industries.

Ziegler routinely handles high-profile trademark, anti-counterfeiting, patent and copyright enforcement matters, and also manages a substantial domestic and foreign trademark opposition and cancellation docket.

Key matters:

• Marc Jacobs Trademarks et al v The Partnerships and Unincorporated Associations, Case No. 24-cv-08809 , US District Court for the Northern District of Illinois, Eastern Division, 2024
  A Greer, Burns & Crain team, led by Amy Ziegler and Justin Gaudio, represented fashion brand Marc Jacobs against a raft of e-commerce traders, in a Lanham Act trademark infringement case.
  
  After filing a complaint in June 2024, GBC won a successful judgment in November 2024, which found the defendants liable for wilful trademark infringement and counterfeiting, and false designation of origin.
  
  The judge permanently enjoined the defendants from manufacturing, marketing or selling the infringing products, and from passing off any of Marc Jacobs’ trademarks.
  
  The judge also ordered third-parties assisting the defendants, such as online marketplaces, funds holders and domain name registrars (such as Amazon, PayPal and GoDaddy) to either delete listings, transfer domain name accounts or release monies to Marc Jacobs.

Clients:

Marc Jacobs, UGG footwear.