Firm / Organisation

Banner & Witcoff, Ltd

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This content is provided by Banner & Witcoff, Ltd.

Managing Partner: Charles L . Miller
Number of partners: 60
Number of lawyers: 107
Languages: English

Firm Overview:
A national law firm with more than 100 attorneys and agents and nearly 100 years of practice, Banner & Witcoff provides legal counsel and representation to the world’s most innovative companies. The firm’s attorneys are known for having the breadth of experience and insight needed to handle complex patent, trademark and copyright issues as well as handle and resolve difficult disputes and business challenges for clients across all industries and geographic boundaries.

Main Areas of Practice:

Litigation:

Banner & Witcoff has represented significant clients at the center of cases that reached the Federal Circuit, Supreme Court and International Trade Commission. In recent years, the firm represented NIKE in its case involving the trademark registration on its Air Force 1 sneaker trade dress and Lexmark International in its case over patent exhaustion for printer toner cartridges. The firm currently represents Converse in its case involving the iconic trade dress of the Chuck Taylor All Star shoes. The firm has also achieved successful results for significant clients, including YETI Coolers, in district court litigation. Banner & Witcoff recently helped YETI reach a settlement agreement with RTIC Coolers, ending the infringement lawsuits YETI filed against them and requiring the company and its owners to pay YETI an unspecified amount and to stop selling all products accused of infringement.
Contact: Joseph M Potenza
Tel: 202 824 3000   Email: [email protected]
Contact: Christopher J Renk
Tel: 312 463 5000   Email: [email protected]

Patent Post-Issuance Proceedings:
Banner & Witcoff has been involved with post-issuance proceedings since the America Invents Act was signed into law in 2011, and was recently recognized for filing more IPR petitions than any other law firm in the first half of 2017. The firm filed 45 IPR petitions for Comcast alone in those six months, and appeared in nearly double that number of proceedings for both petitioners and patent owners. The firm’s involvement in post-issuance proceedings also increased its involvement in litigation at the Federal Circuit. The firm successfully defended an IPR for a multinational leader in electronic design automation through appeal, and handled several other appeals from IPRs before the Federal Circuit. The firm is a founding member of the PTAB Bar Association and introduced a first-of-its kind class at Northwestern University that prepares law students for handling post-issuance proceedings.
Contact: Christopher L McKee
Tel: 202 824 3000   Email: [email protected]
Contact: J Pieter van Es
Tel: 312 463 5000   Email: [email protected]

Patents:
Preparation and prosecution of utility patent applications, both in the United States and abroad, was the historical basis for the firm’s practice at its founding in the 1920s. The prosecution teams manage large patent portfolios that range from several hundred to several thousand patents and patent applications, and typically include substantial numbers of foreign patents and applications. The firm also has extensive experience in obtaining and enforcing design patents. The firm became the first law firm in history to obtain more than 1,000 US design patents in a single year in 2016. Banner & Witcoff accomplished this again in 2017, by obtaining 1,424 US design patents for its clients. It was also the 15th consecutive year that the firm obtained more US design patents than any other law firm in the country.
Contact: Gary D Fedorochko
Tel: 202 824 3000   Email: [email protected]
Contact: Charles L Miller
Tel: 312 463 5000   Email: [email protected]
Contact: Robert S Katz
Tel: 202 824 3000   Email: [email protected]
Contact: Richard S Stockton
Tel: 312 463 5000   Email: [email protected]

Trademarks:
Banner & Witcoff works to protect, defend and enforce famous brands and handle complex trademark issues for significant clients, including Allstate, NIKE and Toshiba. The firm recently represented complainant Converse in one of the largest trademark cases in International Trade Commission history, In re Certain Footwear Products, and was a leading filer of trademark litigation complaints before federal district courts in the second quarter of 2017. Globally, the firm manages more than 12,000 active trademark applications and registrations in more than 170 countries on behalf of nearly 1,000 clients.
Contact: Helen Hill Minsker
Tel: 312 463 5000   Email: [email protected]

IP Strategy & Protection:
Companies spend valuable time and money developing new techniques and designing innovative products, and call on us to help them understand laws that protect these assets. Banner & Witcoff works with clients on patents, trademarks, copyrights, domain names and trade secrets, all of which can be used alone or in combination, to help them gain an edge over their competitors, create a revenue source and enhance the value of their business. The firm provides counseling and opinions services, including landscape studies, infringement/non-infringement opinions, validity/ invalidity opinions, freedom to operate evaluation and global filing strategies. Banner & Witcoff also helps clients establish invention award, review and prosecution programs, and provides support when they launch new products or want to maintain commercial advantage for existing products.