Richard M. LaBarge is the founder of the Firm’s trademark practice. He was privileged to learn the fundamentals while working on cases with Saul Lefkowitz, for whom INTA’s moot court competition is now named. The seven figure judgment he won early in his career for one client was, at the time, one of the largest ever issued in that circuit in a trademark infringement case. Now recognized for his efficient handling of unusual cases, he successfully opposed the registration of the “thumpa-thumpa” sound of motorcycles as a federal trademark, is one of the few lawyers to have successfully registered a color alone as a trademark (green for one client, blue for another), and once secured allowance of an application to register the taste of apples as a trademark. He is currently coordinating the international trademark portfolios of pharmaceutical companies and guiding another of the world’s leading consumer products companies on portfolio management and graymarket issues.
In addition to his Martindale-Hubbell® AV Peer Review Rating™, he has been selected by the Law Bulletin Publishing Company’s Leading Lawyers division as a “Leading Lawyer.” In 2013, he was selected as a “Top Rated Lawyer in Intellectual Property” by American Lawyer Media (ALM) and Martindale-Hubbell. He was also recognized by the World Trademark Review (WTR) since 2014 in the WTR 1000 rankings. He was also selected by his peers for inclusion in the 2018–2020 editions of The Best Lawyers in America© in his practice area.
- Tailored an efficient suite of protection for a consumer goods company and its new style of paper packaging products. Under time pressure, he devised an effective strategy to consolidate the number of filings while also providing a broader scope of protection than commonly seen in the industry. This approach provided better control and market benefits for the company by making it tougher for competitors to copy without infringing, while also reducing client costs.
- In a litigious industry, combined utility patent and design patent filings for a world-leading manufacturer to provide broad protection for a new line of innovative sprayer products that help to prevent the spread of mosquito-borne diseases. This approach is helping to secure the client’s line in the marketplace and may help to provide defenses or possible counterclaims if competitors assert unjustified claims against the client.
Background and Credentials
The patents and trademark registrations that he has helped to obtain cover a wide range of products, and Richard has gained particular experience with consumer products companies and pharmaceutical companies. His litigation practice has brought him before U.S. district courts throughout the nation as well as before the Trademark Trial and Appeal Board for the U.S. Patent and Trademark Office and the U.S. International Trade Commission.
Internationally, he works closely with foreign agents in obtaining and enforcing foreign trademark rights, efficiently coordinating resolution of issues on a multi-national basis.
Richard brings an engineer’s mindset to his work. He is not just analytical, but also passionate about identifying the essence of what makes products and marketing valuable. He helps guides clients to portfolio of rights that efficiently and forcefully protects the most critical aspects of their business. In trademark counseling, he recognized—before “trademark bullying” became a buzzword—that overzealous trademark policing can damage something even more valuable than a company’s mark: its reputation.
- Wake Forest University School of Law (J.D.)
- University of Illinois, Urbana-Champaign (B.S.)
- Civil Engineering
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, Second Circuit
- U.S. Court of Appeals, Seventh Circuit
- U.S. District Court, Central District of Illinois
- U.S. District Court, District of Colorado
- U.S. District Court, Northern District of Illinois
- U.S. International Trade Commission
- U.S. Patent and Trademark Office
Publications and Presentations
- "Smells Like Trademark Infringement: Nirvana Sues Over Smiley Face Logo," IPWatchdog, January 18, 2019 (featured quotes).
- "Marc Jacobs Accused of Copying Nirvana's Smiley Face," Intellectual Property Magazine, January 11, 2019 (featured quotes).
- "Lawyers Cast Doubt on Nirvana Claims Against Marc Jacobs," World Intellectual Property Review, January 3, 2019 (featured quotes).
- "Hey! Wait! Nirvana's Got a New Copyright Complaint," Managing Intellectual Property, January 3, 2019 (featured quotes).
- "EU High Court Rejection of Copyrights for Food Tastes Worries Rights Holders," Intellectual Property Watch, November 15, 2018 (featured quotes).