Thomas Williams

Overview

Tom’s practice focuses on trademark infringement and false advertising litigation. He has successfully represented some of the world’s most famous brands in federal courts and in the USPTO Trademark Trial and Appeal Board. His career-long focus on Lanham Act matters gives Tom the unique ability to execute efficient and effective strategies to achieve his clients’ objectives.

Practicing for more than 25 years, Tom is an internationally recognized partner in BFKN’s Intellectual Property Group. Tom litigates trademark, false advertising, and trade secrets disputes on behalf of a number of the world's largest and most sophisticated brands. Tom represents his clients before federal district and appellate courts, and in proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office. He has litigated multiple TTAB oppositions and cancellation actions through final decisions on the merits.

Tom is well-versed in all aspects of Lanham Act litigation, including survey design and damages calculations. He has worked with many of the top consumer survey and economic damages experts in the field.

In addition, Tom represents clients in trademark prosecution and counseling matters, and manages global trademark portfolios for clients in multiple industries. Tom uses his trademark prosecution skills to quickly assess trademark claims and defenses in adversarial matters, including trademark litigation and TTAB inter partes cases.

He also represents brand owners in domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the Uniform Rapid Suspension (URS) System, and the Anti-cybersquatting Consumer Protection Act (ACPA).

Tom is a member of the International Trademark Association (INTA). He has earned recognition in the World Trademark Review 1000: The World's Leading Trademark Professionals multiple times, where he has been called a “meticulous litigator” and has been noted for his successful representation of clients in courts and administrative proceedings.

A field-leader, Tom frequently writes and speaks about trademark and unfair competition law and practice. He is well-versed in competitor false advertising disputes under the Lanham Act and has used his extensive knowledge of the field to author the annually updated Lexis-Nexis publication, “False Advertising and the Lanham Act.” Tom’s thorough and up-to-date book has been favorably reviewed by various sources, regarded as comprehensive, insightful, and a ‘must read.’ INTA’s The Trademark Reporter called it, “A helpful tool to practitioners, both in-house and in private practice.”

Credentials

Admissions

State of Illinois
U.S. District Court - Northern District of Illinois
U.S. District Court - Eastern District of Wisconsin
U.S. Court of Appeals - 7th Circuit
U.S. Court of Appeals - Federal Circuit

Education

University of Illinois College of Law, J.D., 1996
University of Wisconsin-Madison, B.A., 1993

Experience

Represented Anheuser-Busch in obtaining a reversal of a preliminary injunction in a high-profile competitor false advertising dispute arising out of the 2019 Super Bowl. Law360 named the appellate court’s decision the #3 most significant Lanham Act decision of midyear 2020. Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLC.
Represented Off-White in obtaining dismissal of federal trademark dilution claim on grounds that the asserted marks were not famous marks for purposes of the Lanham Act. Obtained dismissal of NY state law claim on grounds that the complaint failed to allege sufficient harm to the public. Walker Wear LLC v. Off-White LLC.
Represented Cavaliers Hockey Holdings in successful defense of a professional hockey franchise in consolidated USPTO Trademark Trial and Appeal Board trademark opposition proceedings and related cancellation action after full trial on the merits. Monster Energy Co. v. Cavaliers Hockey Holdings, LLC.
Lead counsel for Kaplan Professional in federal district court action under the Defend Trade Secrets Act involving former employees recruited to join a direct competitor. DF Institute, LLC d/b/a Kaplan Professional v. Dalton Education, LLC et al.
Defended How Money Works in trademark cancellation action in USPTO Trademark Trial and Appeal Board. Successfully moved to stay subsequent federal district court action pending outcome of TTAB proceedings. Primerica, Inc. v. How Money Works, LLC.
Represented National Futures Association in a UDRP action involving a fraudulent email phishing scheme where the registrant used a nearly identical domain name to solicit confidential information from NFA members. National Futures Association v. Dantata Ighodo/BrunelHCook.

Other Representative Matters

Manages global anti-counterfeiting and trademark enforcement matters for a leading manufacturer of welding, cutting, and joining equipment.
Manages global trademark portfolio for a leading metals and materials distributor.
Obtained a federal trademark and service mark registration covering an iconic 3-dimensional character mark used by one of the nation’s leading insurance providers.
Obtained a permanent injunction in trademark and trade dress infringement and dilution action involving a famous advertising spokesperson used by one of the nation’s largest insurance providers.
Obtained a permanent injunction against a competitor’s infringing and dilutive product configuration trade dress for game puzzles.
Obtained a permanent injunction and $2 million statutory damages award in a trademark counterfeiting civil action involving financial services fraud.
Obtained a temporary restraining order barring defendants from using, promoting, or displaying infringing trademark during industry’s largest trade show.
Obtained a summary judgment and permanent injunction for a plaintiff challenging a defendant’s unauthorized use of the plaintiff’s famous trademarks on merchandise bags sold to the plaintiff’s independent motorcycle dealerships.
Obtained a permanent injunction against a competitor’s use of infringing and dilutive color trademark used in connection with medical products.
Successfully opposed a competitor’s application to register similar hair care products trademark after a full trial on the merits in TTAB.
Obtained a reversal of USPTO genericness and descriptiveness refusal in ex parte appeal of “1-800”-formative trademark in the TTAB.
Represented an applicant in inter partes opposition in the TTAB involving audible sound marks used in connection with telecommunications goods and services.

Newsroom

Recognitions

Super Lawyer, Illinois Super Lawyers (2010-2024)
Leading Lawyers Network (2021-2023)
World Trademark Review 1000, The World’s Leading Trademark Professionals (2012-2016)

Organizations

Member, International Trademark Association (INTA)

Thomas M. Williams

View More Services

Practices

Industries