About Jeffrey P. Dunning

Jeffrey P. Dunning focuses his practice on advising clients regarding the management of their trademark portfolios, including trademark clearance, registration, maintenance, protection, enforcement, licensing and litigation. Jeff has managed a number of large international trademark portfolios on behalf of major multinational companies in the retail, industrial and food/beverage sectors. For clients needing assistance with patent, unfair competition, domain name and copyright matters, Jeff’s experience extends to providing opinions, prosecution, licensing, litigation and enforcement. In addition, he has deep experience in handling intellectual property litigation, including managing extensive discovery proceedings, obtaining dismissals and summary judgments, and representing clients in numerous evidentiary hearings and jury trials in trademark and patent litigation in federal courts throughout the United States.

Concentrations

•U.S. and foreign trademark clearance, registration, maintenance, protection, enforcement, licensing and litigation
•U.S. and foreign trademark opposition and cancellation proceedings
•Coordinating worldwide anti-counterfeiting enforcement programs
•Trademark, patent, copyright, trade dress, unfair competition and domain name litigation in federal and state courts
•Management of large, diverse international trademark portfolios, including formulation of trademark clearance, prosecution and enforcement strategies, managing foreign counsel, and evaluating and advising clients regarding overall brand protection strategy
•Representation of domestic and foreign trademark applicants in prosecution and adversarial matters before the U.S. Patent and Trademark Office, including in association with applications filed under the Madrid Protocol
•U.S. and foreign patent, design and copyright prosecution and opinions

Recognition & Leadership

Awards & Accolades

•Listed, Leading Lawyers Network, 2019-2025
•Listed, World Trademark Review, 'WTR 1000,' 2015-2025
•Ranked in Illinois, Prosecution and Strategy, 2015-2025
•Team Member, a U.S. News - Best Lawyers 'Law Firm of the Year' in Trademark Law, 2020, 2022
•Listed, The Legal 500 United States, 2019-2020 and 2022-2025
•Intellectual Property - Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing), 2022-2025
•Intellectual Property - Trademarks Litigation, 2019-2020
•Listed, Super Lawyers magazine, Illinois Super Lawyers, 'Rising Star,' 2011 and 2013-2014

 

Awards

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Services

Areas of Law

  • Other 5
    • Intellectual Property & Technology
    • Intellectual Property Litigation
    • Anti-Counterfeiting
    • Trademark & Brand Management
    • Restaurant Industry

Practice Details

  • Languages
    German
  • Firm Information
    Position
    Shareholder
    Firm Name
    Greenberg Traurig, LLP
  • Representative Cases & Transactions
    Cases
    Experience: Trademark Portfolio Management / Counseling: Managed trademark clearance, prosecution, maintenance
    enforcement, including oversight of sizeable U.S.
    foreign trademark portfolios, for numerous companies including: Fortune 500 global industrial supply company
    Global manufacturer
    distributor of replacement parts, equipment,
    accessories for the forestry, lawn,
    garden industries
    International gaming company
    operator of over 50 casinos
    hotels worldwide
    Leading multinational manufacturer of breakfast cereals
    other food
    beverage products
    Fortune 500 retailer of sporting goods
    outdoor equipment
    National operator of department
    discount stores
    Worldwide manufacturer of children's toys
    entertainment products
    Leading national provider of financial, corporate benefits
    insurance brokerage services
    Trademark
    Trade Dress Litigation: Represented a leading national provider of financial, corporate benefits
    insurance brokerage services in pursuing trademark infringement claims arising out of a competitor's use of a similar corporate logo, obtaining a preliminary injunction against further infringement.
    Represented a leading Internet search engine in defense of trademark litigation involving alleged infringement of a trademark for e-commerce software, resulting in the issuance of summary judgment of non-infringement which was affirmed on appeal.
    Represented a leading sporting goods retailer in defense of a trade dress infringement suit involving exercise equipment, resulting in the dismissal of the case with prejudice based on plaintiff's failure to allege ownership of enforceable trade dress rights.
    Represented a leading distributor of exclusive br
    s of wine, beer
    spirits for retailers in defense of a trade dress infringement suit involving the design of a beer bottle, resulting in a favorable settlement.
    Represented an Internet registrar in defense of litigation alleging cybersquatting
    trademark infringement, resulting in summary judgment of non-liability.
    Represented a global manufacturer of children's toys
    electronic learning aids in the prosecution of an international trademark portfolio, trademark oppositions before U.S. Patent
    Trademark Office,
    patent
    trademark litigation
    disputes.
    Represented a manufacturer of printing inks in a trademark dispute with a major chemical manufacturer, resulting in a favorable settlement including assignment of trademark registrations to client.
    Represented a major leading retailer of office supplies in unfair competition litigation arising out of a competitor's use of client's trademarks in Google sponsored link advertisements, which was settled by competitor agreeing to cease use of client's marks.
    Patent Litigation: Represented a Fortune 500 chemical manufacturer in defense of patent litigation with a competitor involving multiple patents in the area of chemical processes
    formulations, resulting in favorable Markman rulings
    summary judgment of patent invalidity.
    Represented a diamond wholesaler
    importer in a three-week jury trial
    appeal of an action alleging design patent infringement, resulting in a judgment of non-infringement, invalidity
    inequitable conduct, which was upheld by U.S. Court of Appeals for the Federal Circuit.
    Represented a manufacturer of transit seating products in a jury trial
    appeal of patent litigation with a competitor, resulting in summary judgment of infringement
    favorable settlement.
  • Additional Links

Experience

  • Bar Admission & Memberships
    Admissions
    Missouri
    U.S. Court of Appeals for the Federal Circuit
    Illinois
    U.S. District Court for the Western District of Wisconsin
    U.S. Patent and Trademark Office
    U.S. District Court for the Northern District of Illinois
    Memberships

    Professional & Community Involvement

    •Member, International Trademark Association
    •Harmonization of Trademark Law and Practice Committee, 2020-2021
    •Member, American Bar Association
    •Member, American Intellectual Property Law Association
    •Past Chair, Trademark Prosecution Subcommittee, Chicago Bar Association
    •President, Phi Kappa Building Association of Alpha Chi Rho fraternity

  • Education & Certifications
    Law School
    Washington University in St. Louis School of Law
    Class of 1998
    J.D.
    Articles Editor, Washington University Journal of Urban and Contemporary Law
    Other Education
    University of Illinois at Urbana-Champaign
    Class of 2000
    M.S.
    Aeronautical & Astronautical Engineering

    University of Illinois at Urbana-Champaign
    Class of 1995
    B.S.
    Aeronautical & Astronautical Engineering
  • Personal Details & History
    Age
    Born in 1974
    Belleville, Illinois, April 20, 1974
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Attorneys FAQs

  • Is this attorney admitted to the bar in more than one state?
    Yes, Jeffrey P. Dunning is admitted to practice in Illinois and Missouri.
  • Is this attorney admitted to practice in any U.S. Federal Courts?
    Jeffrey P. Dunning is admitted to practice before the Patent Trial and Appeal Board, United States Court of Appeals for the Federal Circuit, United States District Court for the Northern District of Illinois and United States District Court for the Western District of Wisconsin.
  • Is this attorney Martindale-Hubbell Peer Review rated?
    Yes, Jeffrey P. Dunning has a 4.7 Peer Rating from Martindale-Hubbell.
  • How many attorneys are in this law firm?
    Greenberg Traurig, LLP has 2750 attorneys at this location.
  • What year was this attorney's law firm established?
    Greenberg Traurig, LLP was established in 1967.