Leo M. Loughlin
Leo M. Loughlin, a partner in the firm’s trademark practice, has over 20 years of experience assisting clients with registering and protecting trademarks through counseling, prosecution, and litigation. To date, Mr. Loughlin has filed over 1,000 trademark applications with the USPTO and abroad. From large multinational corporations to start-up companies in the fashion, automotive, food and beverage, software, and consumer products industries, Mr. Loughlin counsels clients on trademark strategies, including selection, clearance, and portfolio management; files and prosecutes applications in both the U.S. and foreign trademark offices; and represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office.
Mr. Loughlin has extensive first-hand knowledge of Federal District Court litigation involving patents, trademarks, and other intellectual property matters, having represented both plaintiffs and defendants. Mr. Loughlin has also litigated patent disputes at the International Trade Commission (ITC). He has substantial experience counseling clients on appropriate litigation strategies, both prior to and after the commencement of litigation.
Prior to joining Rothwell Figg, Mr. Loughlin spent over 10 years at the Washington, D.C. office of a prominent AM LAW 100 firm.
Mr. Loughlin graduated from Albany Law School, cum laude, in 1998, and earned his B.S. in chemical engineering from Manhattan College. He is a member of the International Bar Association (IBA), the International Trademark Association (INTA), and the International Network of Boutique Law Firms (INBLF).
Mr. Loughlin represents well-known clients such as fashion powerhouse Valentino, automobile company FCA (Fiat Chrysler), international confectionary company Ferrero, food company Barilla, and pharmaceutical company Geistlich, as well as other clients in the food, automobile, software, pharmaceutical, and agricultural equipment business.
Mr. Loughlin's experience includes:
- Handling trademark portfolio management, including searching, filing, prosecution, and maintenance of trademark applications, as well as monitoring filings by third parties for U.S. and international clients.
- Successfully representing clients in a large number of TTAB actions. For example, Mr. Loughlin represented Lavazza, an Italian coffee company, in a TTAB proceeding in which the Board ruled in favor of Lavazza. Its opposition to registration of Favazza’s for “Bar services; Catering services; Restaurant service” was refused.
- Working closely with foreign trademark associates to file trademark applications for U.S. clients, and managing disputes outside the U.S.
- Obtaining favorable outcomes for clients in numerous trademark infringement and unfair competition cases in Federal District Court.
- Successfully representing clients in patent litigations in Federal District Court and at the ITC.
- Representing clients in appeals of patent cases before the U.S. Court of Appeals for the Federal Circuit.
- Successfully appealing refusals of patent applications before the Patent Trial and Appeal Board (PTAB).
- Handling cybersquatting proceedings under the Uniform Dispute Resolution Procedure (UDRP). Mr. Loughlin has been victorious in over 30 proceedings.
Areas of Concentration
Federal District Court
Publications & Presentations
- Co-author, “Litigating at the ITC: Caught in a Grey Zone,” World Trademark Review Issue 71, January 1, 2018.
- Speaker, “Social Media: Legal Ramifications,” AIPF Annual Meeting October 1, 2012.
- Speaker, “Aesthetic Functionality In Trademark Cases,” AIPF Annual Meeting September 20, 2011.
- Co-author, “Protecting Company and Trademark Nicknames,” The Intellectual Property Strategist, Volume 8, Number 9, June 2002.
Professional Affiliations, Honors & Recognition
International Trademark Association (INTA)
International Bar Association (IBA)
International Network of Boutique Law Firms (INBLF)