Marshall, Gerstein & Borun LLP

Representative Experience

Mr. Graham has successfully handled IP matters for individuals, corporations, and associations in a wide range of industries, including:

• Consumer products, apparel, and electronic products
• Pharmaceutical products
• Internet content providers and software developers
• Printing processes and equipment
• Artists, architects and designers
• Entertainment and media, including artists, musicians, writers and publishers
• Market and media research services

Background and Credentials

Mr. Graham focuses his practice on trademarks, copyrights, cyberlaw, licensing and intellectual property transactions and litigation.  He provides clients with counseling related to all phases of trademark, trade name, domain name, copyright clearance, registration and protection.

He has extensive experience negotiating and preparing intellectual property and software licenses, assignments and other agreements, as well as assisting clients in developing trademark and copyright use and protection programs.

With respect to the Internet, Mr. Graham has successfully aided clients in protecting their rights in trademarks, copyrighted works, and agreements; and guided clients through Internet domain name disputes under ICANN's Uniform Dispute Resolution Policy.  He has been one of the leading innovators in this area and remains so through his involvement in the International Trademark Association (INTA)’s Internet Committee.

Mr. Graham has also litigated trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and has litigated trademark, copyright and unfair competition cases before U.S. District Courts.

He regularly educates legal staff, marketing departments, and other employees on intellectual property issues and is a frequent speaker.  He has written numerous articles and presentations on trademark, Internet, and copyright law.

Mr. Graham was awarded a Martindale-Hubbell^® AV Peer Review Rating™, has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer," and was voted an Illinois Super Lawyer. Mr. Graham was recognized by the World Trademark Review (WTR) in their 2012 and 2013 WTR 1000 rankings. He was also was selected as a 2013 "Top Rated Lawyer in Intellectual Property" by American Lawyer Media (ALM) and Martindale-Hubbell.

He received his J.D. from Fordham University School of Law in 1986, his M.A. in English from Ohio University in 1978, and his B.S. in Education from Miami University in 1974.

Publications and Speeches

• "Protecting copyrighted works in the mobile app space," Intellectual Property, May 2013.
• "Contracts and the New Generic Top-Level Domains: Best Practices and Important Provisions in Contracts with Icann and Third-Party Domain Service Providers," Westlaw Journal: Computer & Internet, November 16, 2012 (with Colin I. James).
• "Trademark owners: Nine steps to defend your brands on the new Internet," The Illinois Manufacturer, Fall 2012 (with Michael Furmanek).
• "The fight over .XXX - Who owns a domain name?" Intellectual Property Magazine, October 2012.
• "Plan to expand list of Web address suffixes is suspended," Los Angeles Times, June 28, 2012 (featured quotes).
• "ICANN Reveals 1,930 Applications for gTLDs," INTABulletin, Vol. 67, No. 12. July 1, 2012 (co-author).
• "ICANN has nearly 300 registrants for its top-level domain program," Internet Retailer, March 19, 2012 (featured quotes).
• "Deadline Approaches for Internet Domain Names," Chicago Daily Law Bulletin, March 14, 2012 (featured quotes).
• "Protecting Corporate Brands," Moderator and speaker, Corporate Intellectual Property Law Conference, Law Bulletin Seminars, Chicago, Illinois, February 8, 2012.
• "Lawyers Discuss ICANN’s New Domain Names Rule," Chicago Daily Law Bulletin, November 25, 2011 (featured quotes).
• "Online Marketing Groups Slam ICCAN’s Proposal To Expand Web Domains," Internet Retailer, September 15, 2011 (featured quotes).
• "Introduction To ICANN's New gTLD Program," ICANN's New Generic Top-Level Domain (gTLD) Program, Live Presentation, September 9, 2011.
• "Trademarks In The New gTLDs,"  ICANN's New Generic Top-Level Domain (gTLD) Program, Live Presentation, September 9, 2011.
• "Nine things You should Know About New gTLDs," ICANN's New Generic Top-Level Domain (gTLD) Program, Live Presentation, September 9, 2011.
• "Google Propels Books Into a Whole New Digital World," Chicago Lawyer, December 2010/January 2011 (featured quotes).
• “The Growing Problem of Trademark Registration and Domain Name Scams,” IP Today, November 2010.
•  “What We Talk About When We Talk About The Google Book Settlement,” Mini-Plenary Session Panel Member for Licensing Executives Society annual Meeting, Chicago, Illinois. September 2010.
• "ICANN Approves Registration of Internationalized Domain Names," Lawcast podcast, January 2010.
• "Challenges of Intellectual Property and Branding on Regulatory Approvals," Nutraceutical and Functional Food Regulations in the United States and Around the World, September 2008.
• “The China Syndrome in The Internet Age: China and the Challenge of  Counterfeiting on the Internet,” Presentation for U.S. Patent and Trademark Office China Road Show, Kansas City, Missouri, September 2007.
• “The 10 Things Every Practitioner Should Know About Anti- Counterfeiting and Anti-Piracy Protection,” Co-Author with Bradley J. Olson, John Maltbie and Ron Epperson, 7 Journal of High Technology Law 106 (2007) and Presented at IPO Annual Meeting (2006).
•  “IP Eye For The Geek Guy,” INTA Trademarks in Cyberspace 2005 Forum panel, September 2005.
• “United States Accession To The Madrid Protocol,” Legal Education Institute/INTA Seminar, January 2002.
• “Understanding Trademarks” and “Introduction To Trademark Issues On The Internet,” INTA Trademark Administrators Forum, October 2001.
• "The Danger of an Industry Backlash," Managing Intellectual Property, October 2004.
• Co-Editor of Trademark Practice Forms, Trademark Protection And Practice by Jerome Gilson, Matthew Bender & Co., Inc. 1996 to 2001.
• “Internet Update — Current and Developing Trademark Issues,” INTA Annual Meeting, May 2000.
• “An Overview Of Trademark Searching and Policing on the Internet,”  INTA Cyberspace II Forum, October 1999.
• “An Introduction To Using the Internet for Trademark Clearance and Research,” INTA Trademark Administrators and Paralegal Forum, September 1998.
• “Trademarks in Cyberspace: Internet Trademark Issues,” and “Trademark Search Issues Panel,” INTA Mid-Year Meeting, November 1997.
• “Another Prometheus Unbound: Copyright and Copyright Protection in Cyberspace,” part of seminar sponsored by Thomson and Thomson, Inc. April 1996.
• “An Introduction to False Advertising Law and Industry Self-Regulation,” with Allen H. Gerstein, ALI-ABA Trademarks, Copyrights, and Unfair Competition for the General Practitioner, April 1996.
• "Procedures Before The United States Customs Service," APAA NEWS, No. 17, May 1990 (with Jack C. Berenzweig).
• "Copyright's New Clothes: The Berne Convention Implementation Act Of 1988 And Its Effects On United States Copyright Law,"  Licensing Law and Business Report, Vol. 12, No. 3, September- October 1989, Clark Boardman Company, Ltd.
• "U.S. Customs Policy Regarding Seizure Of Articles Containing Counterfeit Trademarks," presented at 1988 meeting of Asian Patent Attorneys Association (with Jack C. Berenzweig).
• "The Trademark Counterfeiting Act Of 1984: Remedies And Procedures For Civil Litigants," Global Competition: The Role Of Intellectual Property, 1988, Matthew Bender & Co., Inc. (with Dean  A. Olds).

Short Biography