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OVERVIEW

John A. Cullis
Partner

Chicago

One N. Wacker Drive
Suite 4400
Chicago, IL 60606-2833

P 312-214-4572

F 312-759-5646

OVERVIEW

John A. Cullis
Partner

Chicago

One N. Wacker Drive
Suite 4400
Chicago, IL 60606-2833

P 312-214-4572

F 312-759-5646

John Cullis focuses his practice on intellectual property litigation, counseling and procurement. Over the course of his career, John has been recognized among his peers as a preeminent litigator in the field of intellectual property.

John Cullis focuses his practice on intellectual property litigation, counseling and procurement. Over the course of his career, John has been recognized among his peers as a preeminent litigator in the field of intellectual property.

OVERVIEW

John Cullis focuses his practice on intellectual property litigation, counseling and procurement. Over the course of his career, John has been recognized among his peers as a preeminent litigator in the field of intellectual property.

John is an accomplished trial lawyer who has first-chaired trademark, trade dress, trade secret, copyright and unfair competition matters before judges and juries in numerous U.S. federal courts and the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board. John is known for his ability to develop highly effective case strategies that lead to an early resolution for the client. 

John’s trial experience and strategic approach has led to him being sought out and engaged by several major brands to take over highly contentious cases that were destined for trial. In many instances, John was able to develop and execute an effective case strategy that was designed to resolve the case in the most cost-effective manner possible. 

In addition, he routinely counsels clients on the clearance, registration, enforcement, licensing, acquisition, and disposition of IP rights. John prides himself on working collaboratively with each client and maintaining the highest level of professionalism in his enforcement efforts, as he recognizes that, as outside counsel, he is an ambassador for some of the world’s most valuable brands.  

Beyond IP matters, John leverages his dual Canadian-U.S. law licenses to advise many foreign-based clients on a wide range of U.S. legal issues, including U.S. acquisitions and dispositions, corporate formations, cross-border tax issues, insolvency and restructuring issues, licensing and transactional agreements, commercial real estate matters, and corporate and commercial disputes. 

Professional and Community Involvement

Past President, Canada-U.S. Business Council Board of Directors

Member, International Trademark Association (INTA)

Member, INTA Parallel Imports Committee 

Member, Chicago Bar Association

Honors

40 Under Forty, Chicago Daily Law Bulletin, 2011

World Trademark Review 1000

Illinois Super Lawyers

The Best Lawyers in America©

Experience

Federal Court Litigation

  • Northern District of Illinois: Lead trial counsel in successful defense of declaratory action of non-infringement in connection with a reverse confusion trademark dispute. Obtained very favorable settlement for the client.
  • Northern District of Texas: Took over 5+ year case as lead trial counsel in connection with an appeal of an adverse decision by the Trademark Trial and Appeal Board concerning an attack of trade dress registrations on the grounds of functionality. 
  • Northern District of Illinois: Lead trial counsel in successful defense of motion for temporary restraining order sought in trade dress infringement matter.
  • District of Minnesota: Architect of successful defense verdict of trademark infringement matter following a month-long jury trial on behalf of major credit reporting bureau. Also prevailed on counterclaim alleging that plaintiff committed fraud in obtaining its U.S. trademark registration
  • Western District of Washington: Took over ongoing case as lead trial counsel for major consumer brand. Developed successful defense strategy that resulted in a very favorable resolution for the client.
  • Southern District of Florida: Lead trial counsel in defense of trademark and trade dress infringement matter. Effective defense strategy resulted in a favorable settlement two weeks prior to the scheduled trial.
  • Middle District of Florida: Obtained dismissal of trademark infringement suit with prejudice at the initial pleading stage on jurisdictional grounds. Effectively shut down the plaintiff’s cause of action.
  • District of Colorado: Took over ongoing case as lead counsel for major consumer brand. Developed successful defense strategy that resulted in a very favorable resolution for the client.
  • Southern District of Indiana: Lead trial counsel in trademark infringement matter against key competitor. Effective and aggressive strategy resulted in early favorable settlement of the matter.
  • Southern District of New York: Lead counsel in the defense of a trade dress matter that resulted in a favorable settlement early in the case.
  • Southern District of Indiana: Lead defense counsel in declaratory action for non-infringement of client’s trademarks by asserting counterclaims for trademark infringement and related unfair competition claims. Matter resolved following settlement conference before a U.S. District Judge.
  • Northern District of Illinois: Successful defense of motion for temporary restraining order on behalf of Canadian manufacturer, which was brought by client’s U.S. distributor. Matter resolved following settlement conference before a U.S. Magistrate Judge.
  • Northern District of Illinois: Prepared all pre-trial motions, pre-trial preparation and attended the pre-trial conference in long-running copyright infringement matter. Matter settled following favorable rulings at the pre-trial conference on key motions.
  • Northern District of Illinois: Co-counsel in prosecution of claims for trademark infringement and deceptive trade practices on behalf of major litigation support vendor. Matter settled following initial motion practice with defendant agreeing to cease all use of client’s trademarks.
  • Middle District of Florida: Lead counsel in prosecution of claims for trade dress infringement and deceptive trade practices on behalf of major airport parking service provider. Matter settled following extensive discovery and motion practice with defendant removing all infringing trade dress from its premises and advertising material.
  • Southern District of Florida: Lead counsel in prosecution of complaint for trademark infringement, dilution and motion for temporary restraining order and preliminary injunction on behalf of major quick service restaurant chain. Matter resolved with all infringing uses being removed from the defendant’s premises.
  • Southern District of New York: Prosecuted claims for trademark infringement, deceptive trade practices, trade secret misappropriation and copyright infringement against former licensee of software program owned by international investment banking firm. Matter settled following extensive discovery and motion practice with defendants agreeing to cease use of client’s trademarks.

TTAB Litigation

  • Litigated more than 100 Opposition and Cancellation proceedings before the TTAB addressing issues such as likelihood of confusion, dilution, fraud, abandonment and genericism. Considerable experience arguing before the TTAB’s Trademark Judges, acquiring a unique understanding of TTAB practice.
  • Obtained verdict and ruling from the TTAB that client’s entire family of marks is famous.
  • Prevailed on motion for summary judgment in an Opposition proceeding on the basis that the Applicant did not have the requisite bona fide intent to use the proposed mark in connection with the claimed services. Entry of summary judgment here was significant because it is well established that the factual question of an applicant’s intent is particularly unsuited for disposition on summary judgment.
  • Retained to assume the defense of a Cancellation proceeding on behalf of small grocery store chain three years after matter was initially instituted. Implemented a defense strategy that resulted in plaintiff capitulating on its Cancellation claims just prior to the commencement of the trial testimony period.
  • Successfully handled multiple Uniform Domain Name Dispute Resolution Policy proceedings before the World Intellectual Property Organization, all resulting in the domain names in dispute being transferred to his clients.

Transactional and Counseling Matters

  • Represent European logistics company in connection with its U.S. labor and employment, intellectual property and litigation matters.
  • Represent Canadian customs brokerage and freight forwarding company in connection with its corporate commercial, litigation and employment matters
  • Represented Canadian technology company with respect to its acquisition of a U.S.- based competitor
  • Represented Canadian intermodal transportation company with respect to its U.S. incorporation, taxation, corporate/commercial and intellectual property matters
  • Represented major Canadian financial institution (and its U.S. subsidiary) with respect to several multimillion-dollar software licensing and development transactions with its U.S.-based vendors
  • Represented major Canadian financial institution (and its U.S. subsidiary) with its commercial client and vendor agreements
  • Represented client with respect to its management-led buyout of the software division of a major U.S. trade association
EXPERIENCE
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