Thomas McDonough > Neal, Gerber & Eisenberg LLP > Chicago, United States > Lawyer Profile

Neal, Gerber & Eisenberg LLP
2 NORTH LASALLE STREET
SUITE 1700
CHICAGO, IL 60602
ILLINOIS
United States
Thomas McDonough photo

Work Department

Intellectual Property

Position

Co-Chair, Intellectual Property practice group

Career

Tom is the co-chair of the firm’s Intellectual Property practice group and a registered patent attorney. He develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licenses, patent and trademark licenses and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical intellectual property components. He also regularly performs thorough product clearance searches on behalf of clients. Tom represents clients in all aspects of intellectual property disputes, with an emphasis on patent, trademark, trade dress and copyright infringement litigation.

Tom has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications with a particular focus on hydraulic drive systems, transaxles, pumps, motors and related control systems, differentials and gearing systems, vehicle engines, rail transportation equipment, automotive components and systems, snow throwers, agricultural equipment and kitchen and household products.

Clients appreciate Tom’s aptitude for understanding their businesses and goals, and for finding efficient, cost-effective strategies for developing and protecting their intellectual property. His experience in all aspects of intellectual property law enables him to provide a comprehensive understanding of the issues involved in each project.

He is a member of the firm’s Diversity and Inclusion Committee and Associate Review Committee. He is an active volunteer and also serves as a member of the Board of Directors for Lawyers for the Creative Arts, an organization that provides pro bono legal services to low income artists and arts organizations.

Education

University of Wisconsin Law School (J.D., 1988), with honors

University of Illinois at Urbana-Champaign (B.S., 1985), with honors

Lawyer Rankings

United States > Intellectual property > Trademarks: litigation

Chicago-based law firm Neal, Gerber & Eisenberg LLP provides a one-stop-shop which integrates its counselling practice with its litigation offering, supporting clients in disputes at state and federal level, in addition to those before the Trademark Trial and Appeal Board (TTAB). The team is led by Thomas McDonough, who employs pre-designed litigation strategies to act for clients across the consumer electronics, hospitality, beverages, software, and entertainment sectors, and Michael Kelber, an expert in software licenses. Other key figures include Lee Eulgen, who advises clients on data ownership and online compliance, and Antony McShane, a specialist in traditional and digital IP assets. Andrea Stein Fuelleman develops international anti-counterfeiting programs and is recommended alongside associates Lee Barrington Stark, who serves on the firm’s sustainability committee, and Jessica Rissman Cohen, who handles social media and cybersquatting matters. Counsel Andrew Fraker brings strength to the tech sectors. All lawyers mentioned work in Chicago.