Gregory serves as Chair of Marshall Gerstein's Trademark and Copyright practice group. For start-up to multi-national companies with trademarks to develop and protect in the U.S. and internationally, Greg adeptly protects their brands—the ultimate value of a company. Similarly, for clients that gain a competitive advantage from novel product design, he counsels clients to capture maximum protection from design patents in order to enhance the value derived from industrial design. He also proactively counsels clients on copyrights, helping negotiate effective agreements and enforcing rights when necessary. Greg's balance, diverse experience, and pragmatic approach, together with an education and background in marketing and business, uniquely position him to serve as a critical legal resource for clients.
Greg holds a Martindale-Hubbell® AV Preeminent Peer Review Rating and was selected as a 2013 “Top Rated Lawyer in Intellectual Property” by American Lawyer Media (ALM) and Martindale-Hubbell. Since 2013, he has been recognized by the World Trademark Review (WTR), and as an “IP Star” in Managing IP’s IP Stars Survey (fka the World IP Handbook and Survey). He was selected for inclusion in the 2014–2021 Illinois Super Lawyers® list. Only five percent of the lawyers in the state are recognized each year. He was also voted a “Leading Lawyer” by his peers for 2015–2021.
- Counsels globally recognized airline on matters critical to its marketing functions such as trademark clearance, prosecution and enforcement. Greg assisted the client with protecting a family of marks born from a recent branding initiative internationally and provided strategic advice regarding filing strategy as to avoid possibly leaking the theme of the campaign prior to launch.
- Serves as primary trademark counsel to orphan drug company with proven track record for quickly bringing new pharmaceutical products to market. The client and Greg work closely to clear groups of proposed pharmaceutical names and to register and protect adopted marks, including for the client’s flagship drug, in more than 100 countries around the world.
- Handles trademark matters designated “complex” by in-house counsel for global healthcare company operating in the fields of medical devices, pharmaceuticals and, biotechnology.
- For an industry-leader in the manufacture of electronic components for hearing aids, phones, and headsets; Greg counsels the client on all trademark matters—from conception and clearance to prosecution and enforcement—to ensure protection of the client's brands, which are synonymous with high quality.
Background and Credentials
Greg counsels and assists clients with protecting goodwill that has been developed over many years and helps newer companies develop and protect brands that can become the most valuable assets of the business. During his years of trademark practice, he has provided hundreds of opinions to and prosecuted hundreds of applications on behalf of clients as well as represented clients in inter partes proceedings before the U.S. Patent and Trademark Office Trial and Appeal Board and trademark infringement cases. With many of the firm’s clients conducting business internationally, he also assists with registering and enforcing trademark rights worldwide.
In the area of copyright law, he has helped clients—including marketing professionals, artists, musicians, movie producers, photographers, programmers and software developers, writers, and others—protect, enforce and derive economic benefit from their artistic endeavors throughout the creative process.
Greg’s skill set is the result of these diverse work experiences as well as presentation of cases in the state Appellate and Illinois Supreme Court, which resulted in wins for clients in non-intellectual property related cases.
His education in marketing and personal business experience, as well as years of working with marketing professionals, has provided him with an intimate understanding of the business mind set. As a result, he understands the value of avoiding unnecessary legal posturing when a conflict arises so that the parties can resolve the matter and return to business as usual.
Greg received his J.D., cum laude, from Northern Illinois University College of Law and received his bachelor’s degree in marketing from Iowa State University.
- Northern Illinois University College of Law (J.D., cum laude)
- Iowa State University (B.A.)
- U.S. District Court, Northern District of Illinois
Publications and Presentations
- "Hand It Over—Trademark Infringers’ Profits at Risk Even Without Proof of Willfulness," Marshall Gerstein Alert, Co-Author, April 28, 2020.
- "Music to Your Ears: Best Practices for Prosecuting Sound Mark Applications," INTABulletin, Vol. 74 No. 17, Co-Author, October 1, 2019.
- "Challenges of Intellectual Property and Branding on Regulatory Approvals," Nutraceutical and Functional Food Regulations in the United States and around the World, Third Edition, Co-Author, June 2019.
- "U.S. Top Court Finds Law Banning Offensive Trademarks Unconstitutional," West Law Intellectual Property, June 21, 2017 (featured quotes).
- ""Simple and Correct" or "Tremendous Damage to Minorities?" Opinion Split on Matal v Tam Decision," World Trademark Review, June 20, 2017 (featured quotes).
Community and Professional Involvement
- Member of the firm's Finance Committee and former member of the firm's Marketing & Business Development Committee.
- International Trademark Association.
- Pharmaceutical Trademark Group.
- Lawyers for the Creative Arts, a not-for-profit organization, providing counsel on a pro bono basis for starving artists in need of legal assistance but without the financial means to pay for it.
- Chicago Jets Tier II Ice Hockey Coach.
- Licensed Real Estate Broker in Illinois.
- Former National Football League Players Association (NFLPA) Certified Contract Advisor.