Biography

Maureen Beacom Gorman regularly advises clients with global intellectual property rights in a multi-disciplinary approach on all aspects of intellectual property portfolio management strategy, including acquisition and protection of intellectual property rights, investigation of counterfeit and other infringing uses of trademarks and copyrights, and enforcement in federal, state, and foreign courts, international arbitration bodies such as WIPO, and administrative bodies including U.S. Customs and Border Patrol and the Trademark Trial and Appeal Board. Ms. Gorman’s invaluable familiarity with the inside workings of the United States Patent and Trademark Office as a former trademark examining attorney and her twenty years of practice are the background for her comprehensive understanding of the nuances of global portfolio strategy and guidance in trademark and copyright prosecution, enforcement, litigation, and licensing in the United States and internationally. She was also a member of the of International Trademark Association’s U.S. Subcommittee on Anti-Counterfeiting and led the Internet enforcement task force for that committee.

In 2017, Ms. Gorman was named the exclusive winner in the International Law Office (ILO) Client Choice Awards “Intellectual Property–Trademarks” category for Illinois, an honor also bestowed upon her in 2015. Ms. Gorman was named to the 2016 list of Litigation Trailblazers and Pioneers published by the National Law Journal, a list which identifies litigation professionals who bring about meaningful change through their work. Ms. Gorman has also been selected by her peers as a “Leading Lawyer” since 2016, and recognized by the World Trademark Review (WTR) in the WTR 1000 rankings since 2014.

                  

Representative Experience

  • Led team that developed the Firm's copyrighted social media take down database to better enable clients' brand protection online.
  • Secured transfer of domain name for software company through successful Uniform Dispute Resolution procedure.
  • Successfully secured trademark protection for consumer goods company, overcoming merely descriptive refusal.
  • Counseled consumer goods company in prosecution of consumer brand name and enforcement issues in 90 countries worldwide.

Ms. Gorman has handled matters for a wide variety of industries and organizations, such as:

  • Consulting Firms
  • Clothing retailers and manufacturers
  • Consumer goods and health products
  • Restaurants and hotels
  • Media
  • Religious organizations
  • Educational institutions
  • Advertising
  • Software
  • Insurance Companies

Background and Credentials

From 2000 to 2002, Ms. Gorman worked as a trademark examining attorney in the United States Patent and Trademark Office. She focused on food and electronic products and all service classes.

After her departure from the USPTO, Ms. Gorman continued to build her proficiency in the intellectual property field, founding her own trademark/copyright law practice in 2002. The guiding principles of her successful practice incorporated affordability, personal service, and ethical behavior. Her private practice began in insurance and commercial litigation.

Ms. Gorman has been selected as a trademark consultant in numerous Trademark Trial and Appeal Board (TTAB) actions as well as district court matters in numerous U.S. jurisdictions. Her litigation experience includes handling Opposition and Cancellation matters, ex parte appeals to the TTAB, and infringement and unfair competition actions in Illinois.

Ms. Gorman earned her J.D. from John Marshall Law School in 1997 and received a bachelor of arts degree from Marquette University in 1993.

Education

  • The John Marshall Law School (J.D.)
  • Marquette University (B.A.)

Bar Admissions

  • District of Puerto Rico
  • Illinois
  • Michigan
  • New Jersey
  • Northern District of Illinois
  • Southern District of New York
  • U.S. Bankruptcy Court of Eastern District of California
  • U.S. Bankruptcy Court of Western District of Washington
  • Western District of Missouri

Publications and Presentations

  • The budgeting piece of the business of law,” InsideCounsel, September 1, 2015 (featured quotes).
  • “E-commerce and Social Media: Defensive Strategies and Enforcement Options,” ICANN's New Generic Top-Level Domain (gTLD) Program, Live Presentation, September 9, 2011.
  • Not All Endorsements Are Alike,” Medical Device + Diagnostic Industry, August, 24, 2011 (co-author).
  • “Consumer Confusion or Profitable Promotion?” Served as panel speaker and discussed current copyright/trademark trends at the Law Bulletin Corporate IP Conference on February 8, 2011.
  • “The Future’s So Green, I Gotta Wear Shades: 'Greening' Your Brand Without 'Greenwashing' It.” Presented at the American Intellectual Property Law Association (AIPLA) Mid-Winter meeting’s plenary session on February 3, 2011.

Click here to see additional Publications and Presentations.

Community and Professional Involvement

  • Women's Bar Foundation (WBF), Vice President–External Affairs and Vice President–Fundraising
  • Member of INTA's U.S. Subcommittee on Anti-Counterfeiting, 2013–2015
  • International Trademark Association (INTA)

Representative Matters

  • Universal Protein Supplements Corporation vs. Dalech LLC, NAF Claim No. FA0908001278030 (2009) (Pfeuffer, Arb.). Attorney for petitioner in contested Uniform Dispute Resolution Action before the National Arbitration Forum (UDRP). Award: Domain name transferred.
  • General Council of the Assemblies of God vs. DomCollect Worldwide Intellectual Property AG, NAF Claim No. FA0904001259727 (2009) (Yachnin, Arb.). Attorney for petitioner in contested Uniform Dispute Resolution Action before the National Arbitration Forum (UDRP). Award: Domain name transferred.
  • AFN Broker LLC vs. Champion Performance Products, Inc. Attorney for petitioner in likelihood of confusion dispute. Settled.
  • The General Council of the Assemblies of God, DBA Gospel Publishing House vs. GPH Investments Incorporated. Attorney for opposer in likelihood of confusion dispute. Application withdrawn. Case dismissed.
  • The General Council of the Assemblies of God, DBA Gospel Publishing House vs. GPH Partners, LLC. Attorney for potential opposer in likelihood of confusion dispute. Settled.

Click here to see additional Representative Matters.