Joan L. Long is retired of counsel in the Chicago and Grand Rapids offices of Barnes & Thornburg, where she was a member of the Intellectual Property Department and chaired the Advertising and Marketing Group. Joan's practice focused on intellectual property protection and enforcement with an emphasis on Lanham Act compliance and enforcement.
Joan provided clients with advice and evaluation in connection with advertising claims, including assessment of the substantiation for the claim and potential liability for false or misleading representations of both express and implied claims. Joan assisted clients in negotiating the terms of consent orders, responding to FTC subpoenas and submitting comments to the proposed FTC consent orders. She successfully defended a client's challenged environmental claim brought before the National Advertising Division (NAD) of the Better Business Bureau. She routinely advises clients on compliance with Federal Trade Commission guidelines.
Joan also represented clients in federal court litigation involving Lanham Act issues, trade secrets and copyright, including a six-day federal jury trial defense victory in May 2013, which was upheld in a 2015 appeal by the Federal Circuit Court of Appeals in a per curium judgment.
Joan also represented clients in hundreds of proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), including successful appeals, oppositions, and cancellation proceedings. She conducted mediation proceedings, including international mediations, to resolve multiple opposition/cancellation proceedings. In one international mediation she resolved 36 pending opposition proceedings in different jurisdictions. In more than 20 years of practice, Joan has frequently negotiated settlement and co-existence agreements that not only resolved the dispute, but provided protection for the clients' marks going forward. Joan also provided IP advice regarding mergers, acquisitions and other transactions involving IP licenses or transfers, including international transactions.
Prior to joining Barnes & Thornburg, Joan was a partner at Mayer Brown LLP in Chicago.
Professional and Community Involvement
Former member, Panel of Neutrals for the ADR program sponsored by the International Trademark Association (INTA)
Mediator, World Intellectual Property Organization (WIPO)
Illinois Super Lawyers
The Best Lawyers in America, 2016-2019
Managing IP's 2016 Top 250 Women in IP worldwide