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Thomas P. "Tom" Arden

Partner
Chicago
t: 312-715-5713

Thomas P. Arden concentrates on federal court litigation in the areas of unfair competition, trademark, copyright, advertising, and related areas; licensing and transfers of copyright and trademark interests; litigation before the United States Trademark Trial & Appeal Board; Internet domain name disputes throughout the world; and foreign copyright and trademark matters. Mr. Arden has represented clients on intellectual property matters in the publishing, computer, automotive, Internet services, personal care, food, restaurant, insurance, clothing, vitamin, pharmaceutical, musical instruments, telecommunications, chemical, entertainment and toy industries.

Mr. Arden's litigation experience includes appeals before the Seventh, Eighth and Tenth Circuit Courts of Appeals and Court of Appeals for the Federal Circuit and a successful petition for certiorari to the U.S. Supreme Court vacating an appellate court decision in a copyright case. Mr. Arden also has substantial experience in prosecuting and defending applications to register such diverse trademarks as cow-spotted packaging for computers and the exhaust sound of a motorcycle. He also served as a panelist for E-Resolution, a former domain name dispute resolution provider.

Professional Honors & Awards

  • The Best Lawyers in America guide, Intellectual Property Law, 2009-2011
  • Illinois Super Lawyers magazine, 2006, 2012
  • Yale Law Journal, Board of Editors
  • Nathan Burkan Award, Yale University Law School

Court Admissions

  • U.S. District Court for Northern Illinois
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Eastern District of Wisconsin
  • U.S. District Court for the Eastern District of Arkansas
  • U.S. District Court for the Eastern District of Michigan
  • U.S. Appeals Court, Seventh Circuit
  • U.S. Appeals Court, Eighth Circuit
  • U.S. Appeals Court, Federal Circuit
  • U.S. Supreme Court
  • U.S. District Court for Northern Illinois

Speaking Engagements

  • Copyright Protection of Computer Software, Illinois Technology Association (ITA), December 2006
  • Overview of Nontraditional Trademarks, International Trademark Association (INTA) Annual Meeting, May 2004
  • Issues in E-Commerce, ASIPI Regional Meeting, March 2004
  • Responding to Office Actions: Section 2(e), Section 2(f), INTA Trademark Administrators Forum, October 2001
  • Cutting Edge Trademark Issues, INTA Annual Meeting, May 2000
  • Update on U.S. Law Affecting Product Designs, Intellectual Property Law Association of Chicago (IPLAC) Annual Meeting, March 2000
  • Developments in the Area of Nontraditional Trademarks, New York Intellectual Property Law Association, March 1998
  • Litigation in the TTAB, Advanced Forum on Best Practices Before the U.S. Trademark Trial and Appeal Board INTA Conference, October 1997
  • Trademarks in the Online Context, Illinois Institute of Continuing Legal Education E-Commerce Law Seminar, September 1999; October 1997
  • Promotion of Product Characteristics as Brands, AT&T Brand Names Managers Conference, 1995

Published Articles & Books

  • "Dealing With Internet Theft in the Travel Industry," Intellectual Property and Technology, Internet Theft Alert - September 10, 2009
  • "Court Overturns Fraud Standard Applied to Trademark Filings in U.S. Patent & Trademark Office," Intellectual Property and Technology, Alert - September 4, 2009
  • "Protection of Nontraditional Marks: Trademark Rights in Sounds, Scents, Colors, Motions, and Product Designs," INTA Practice Series Book, 2001
  • "The Questionable Utility of Copyright Notice: Statutory and Nonlegal Incentives in the Post-Berne Era," 26 Intellectual Property Law Review 351 (Clark, Boardman, Callaghan 1994), 24 Loyola Chi. Law Journal 259, 1993
  • "European Commission Proposes Directive on Protection of Computer Databases," 3 Entertainment Law Review 66, 1992
  • "The Conflicting Treatments of Compilations of Facts Under the United States and British Copyright Laws," 19 AIPLA Quarterly Journal 267, 1992