Marshall, Gerstein & Borun LLP

Representative Experience

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

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

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 solo 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 New Jersey, Michigan and Illinois.  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.

Publications and Speeches

• "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. 
• “What Does It Mean to Be Green: A Short Analysis of Emerging IP Issues in 'Green' Marketing.” This article was presented at John Marshall Law School's Green Issue Symposium on April 9, 2010 and published in the John Marshall Review of Intellectual Property Law.
• "It Isn't Easy Being Green-"Green" Trademark Issues." John Marshall Law School’s 53rd Annual Intellectual Property Law Conference Developments in Patent, Trademark, Copyright & Trade Secrets Law. February 27, 2009.
• "Trademarks for Entrepreneurs." Dominican University. July 14, 2008. Guest Speaker.

Community and Professional Involvement

• American Bar Association (ABA)
• Illinois State Bar Association (ISBA)
• Chicago Bar Association (CBA)
• Lawyers for the Creative Arts (LCA)

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.
• Linda S. Potter vs. Stephanie Flanagan, NAF Claim No. FA0801001139692 (2008) (Johnson, Arb.). Attorney for petitioner in Uniform Dispute Resolution Action before the National Arbitration Forum (UDRP). Award: Domain name transferred.
• In re Surveys & Forecasts, LLC. Attorney for appellant in ex parte appeal of genericness refusal. Refusal withdrawn. Appeal terminated.
• Los Angeles Lakers, Inc. vs. Margaret Kilbane. Attorney for potential defendant in likelihood of confusion dispute. Settled.
• CAPSIM Management Simulations, Inc. formerly Park Li Management Simulations, Inc. vs. The Fund for American Studies. Attorney for opposer in likelihood of confusion dispute. Opposition sustained.
• Universal Protein Supplements Corporation d/b/a Universal Nutrition vs. Natural Organics Inc. Attorney for petitioner in likelihood of confusion dispute. Settled.
• CAPSIM Management Simulations, Inc. vs. Sharon Bender. Attorney for opposer in likelihood of confusion dispute. Opposition sustained.
• Universal Protein Supplements Corporation DBA Universal Nutrition vs. Discovery Communications, Inc. Attorney for potential opposer in likelihood of confusion dispute. Settled.
• Hormel Foods Corporation vs. The Creative Concept. Attorney for potential defendant in likelihood of confusion dispute. Settled.
• Entoleter LLC vs. Grain Machinery Mfg. Corp. Attorney for defendant in likelihood of confusion dispute. Opposition withdrawn pursuant to settlement.
• Park Li Management Simulations, Inc. d/b/a Management Simulations vs. Interpretive Software, Inc. Attorney for opposer in likelihood of confusion dispute. Settled.
• Park Li Management Simulations, Inc. v. Interpretive Software, Inc., Case No. 1:05-cv-06627 (N.D. Ill. Settled May 16, 2007). Attorney for plaintiff/counter-defendant in suit alleging trademark infringement with Anti-Cybersquatting Act counterclaim.
• In re James J. O’Brien. Attorney for appellant in ex parte appeal of likelihood of confusion refusal. Refusal withdrawn. Appeal terminated.
• Park Li Management Simulation, Inc. vs. LaPorte Holdings, Inc., NAF Claim No. FA0411000363984 (2005) (Yachnin, Arb.). Attorney for petitioner in Uniform Dispute Resolution Action before the National Arbitration Forum (UDRP). Award: Domain name transferred.
• In re Donna Lee Murphree. Attorney for appellant in ex parte appeal of identification refusal. Amendment filed. Appeal terminated.
• Revolution, Incorporated v. Revolution Bodywear, Incorporated et al., Case No. 4:05-cv-40083 (E.D. Mich. Settled August 3, 2005). Subsequent attorney for defendant in suit alleging breach of prior settlement of Lanham Act suit.
• The North Face Apparel Corp. vs. Xueyan Liu. Attorney for defendant in likelihood of confusion dispute. Settled.
• K-2 CORPORATION vs. Xueyan Liu. Attorney for defendant in likelihood of confusion dispute. Settled.
• Universal Nutrition v. Carbolite Foods, Inc., et al., Case No. 3:03-cv-03265 (D. N.J. Stipulated Dismissal September 20, 2004). Member of plaintiff’s team of attorneys in Lanham Act suit.
• In re Robert J. Dunn. Attorney for appellant in ex parte appeal of likelihood of confusion refusal. Refusal withdrawn. Appeal terminated.
• In re Continuum Care Corp., App. No. 75026799 (TTAB 2001). Attorney for USPTO in ex parte appeal of USPTO’s genericness refusal. TTAB affirmed USPTO genericness refusal.

Short Biography