Mr Floyd Mandell > Katten Muchin Rosenman LLP > Chicago, United States > Lawyer Profile

Katten Muchin Rosenman LLP
525 WEST MONROE STREET
CHICAGO, IL 60661-3693
United States

Work Department

Intellectual Property

Position

Floyd A. Mandell is national co-chair of Katten’s Intellectual Property department and co-head of the Trademarks and Trademark Litigation practice. He has earned widespread recognition for his world-class intellectual property counseling and litigation practice, which covers trademarks, trade dress, unfair competition, trade secrets, copyrights, high-tech disputes, e-commerce/Internet disputes, false advertising, entertainment litigation and First Amendment litigation.

Clients have described Floyd as “an outstanding litigator and counselor in all respects” and as being “creative, insightful, practical, reliable, results-oriented and always the consummate gentleman and professional” (Legal 500). The general counsel of an international company stated that Floyd is “a brilliant intellect with integrity and a powerful personality capable of forging favorable settlements and favorable court decisions for clients” (The Lawdragon 500 Leading Lawyers in America). He is known for his work in the entertainment, media and technology industries, and for being a “go-to attorney” with an “extremely responsive, pragmatic and business-oriented” approach (Chambers USA). A trusted advisor, “Floyd continuously demonstrates the ability to grasp the client’s goals, foresee potential pitfalls, and then find the best path to resolution through creative advocacy and dogged attention to the client’s needs” (The National Law Journal).

In 2012, Floyd was recognized by Law360 as a winner of its MVP award for intellectual property and is profiled here. The MVP awards honor attorneys whose achievements in major litigation and transactions have set a new standard for accomplishment in their respective practice areas. Floyd was one of only 10 intellectual property lawyers from across the country to be named Law360 MVPs for 2012. In 2010, he was selected for Law360’s list of the 10 Most Admired Intellectual Property Attorneys in the United States, an award based on a survey taken of his peers at the 100 largest law firms in the country. Also in 2010, Floyd was selected to sit on the IP Law360 Editorial Advisory Board.

Floyd has been named to The Lawdragon 500 Leading Lawyers in America(2010–2013), legal affairs news and information company Lawdragon.com’s annual guide to the nation’s most elite group of lawyers. He is one of the few lawyers in the United States to have received this honor four times.

Nominated by in-house counsel and other leading trademark practitioners, Floyd has been listed in the Legal Media Group’s Guide to the World’s Leading Trademark Practitioners and recognized as a member of the Leading Lawyers Network. He has been selected for inclusion in Illinois Super Lawyers (2005–2015), is listed in The Best Lawyers in America and is named in Who’s Who Legal USA – Trademarks (2013–2016) as one of the country’s leading practitioners in this field of law.

Floyd has been listed as a top lawyer (Band 1) and a “Leader in the Field” by Chambers USA: America’s Leading Lawyers for Business for Intellectual Property (2005–2015) and for Entertainment Litigation (2005–2006). In 2011, he was selected as the top intellectual property attorney in the United States and in 2016, as the top trademark attorney in Illinois by the International Law Office (ILO), an affiliate and partner of the Association of Corporate Counsel and the International Bar Association. The ILO Client Choice award is unique because only corporate counsel can choose the winner and Floyd received the top recognition out of 2,000 nominations. The award focuses on client care, quality of service and adding value to clients’ business.

Floyd has been recognized as one of the top trademark litigation attorneys in the United States (Band 1) in the World Trademark Review (WTR) 1000 – The World’s Leading Trademark Professionals (2011–2016) and appears on World Intellectual Property Review’s “WIPR Leaders.” He is also named among the IP Stars for Illinois in the 2013–2016 editions of Managing Intellectual Property‘s IP Handbook, and was named to The National Law Journal’s list of the “50 Intellectual Property Trailblazers & Pioneers” (2014).

In 2009, 2010 and 2011, Floyd was selected by IAM Magazine as one of the 250 top intellectual property strategists in the world. Floyd has also been included each year since the expanded version of the publication, IAM Strategy 300, was created.

Floyd has a Martindale-Hubbell® AV® Preeminent™ rating and is recognized as an AV Preeminent® Top-Rated Lawyer in Intellectual Property Law. He also was recognized as a leading practitioner in the Legal Media Group’s 2016 Trade Mark guide.

Floyd has served as lead trial counsel for domestic and international clients including Microsoft Corporation; PepsiCo/Gatorade; Cracker Barrel; Forever 21; Cumulus Media; Westwood One; Boar’s Head; Tommy Hilfiger; Arcadia Group Limited and its Topshop brand; Yahoo!; Fruit of the Loom, Inc.; GTE Corp.; Allstate Insurance Company; Planet Hollywood International, Inc.; Polaroid; Sears; PriMedia, Inc.; Times Mirror, Inc.; Bausch & Lomb Incorporated; Universal Studios; Universal Music Group; Home Box Office, Inc.; the Chicago White Sox; the Chicago Bulls; Arkansas Best Corporation; Motorola; SANYO; E! Entertainment Television, LLC; PVH Corp.; USA Cable Entertainment LLC; AIG Technical Services, Inc.; Santa Margherita S.P.A.; and Sony Music Entertainment. His work on behalf of clients has resulted in more than 40 published decisions, many of which have involved novel or cutting-edge issues concerning emerging areas of intellectual property law and have garnered national attention. On more than one occasion, Floyd has litigated cases with more than $1 billion in value at stake for his clients.

Floyd is a sought-after media source on trademark litigation and alternative dispute resolution issues and frequently lectures on intellectual property litigation. He has been quoted in national publications including The Wall Street Journal, The New York Times, Law360, the Los Angeles Times and the Chicago Tribune, has been featured in Success magazine and has appeared on The Today Show. He has authored several written works concerning intellectual property and litigation, some of which have been published and later cited as authority in published cases. Each year he authors a chapter on trademark for the Thomson Reuters Westlaw and Association of Corporate Counsel (ACC) treatise Successful Partnering Between Inside and Outside Counsel. Among the other articles authored by Floyd or where he has made a significant and noted contribution are: “Personal Name Trademarks—Your Name May Not Be Your Own,” 60 Chicago Bar Record 282 (1979); San Francisco Brief/Case Law Review (July 1979); Stanford Agora Law Review (May 2001); 70 Trademark Reporter 326 (1980) (used as authority by Congress in its “cybersquatting” legislation); Pattishall-Hilliard, “Trademarks, Trade Identity and Unfair Trade Practices,” Matthew-Bender (1974); Pattishall, “The Dilution Rationale for Trademark-Trade Identity Protection, Its Progress and Prospects,” Northwestern Law Review, Vol. 71, No. 5 (197); 67 Trademark Reporter 607 (1977); “Trade Secrets—What They Are and How to Protect Them,” I.I.C.L.E. (1981); “The Disloyal Employee, Protection of Confidential Information from Breach of Fiduciary Obligations,” I.I.C.L.E. (1982); “Recent Developments in Trademark Law—An Overview,” I.I.C.L.E. (1983); “Recent Developments in Trademark Law—An Overview,” I.I.C.L.E. (1984); “Intellectual Property on Trial—Trade Dress Litigation Requires a Team Effort,” The National Law Journal (February 14, 1994); “Practice Pointers for the Trademark Litigator,” The National Law Journal (May 16, 1994); and Trade Dress Jury Instructions (INTA, 1998). In addition, Floyd is a member of Law360’s “Voices of the Bar” panel.

Recognized as a skilled mediator and arbitrator, Floyd is a member of the Panel of Neutrals for the Alternative Dispute Resolution Program sponsored jointly by the International Trademark Association and the International Institute for Conflict Prevention & Resolution and is on the list of mediators/arbitrators recommended by the US District Court for the Northern District of Illinois for Lanham Act cases filed in that district.

Memberships

American Bar Association, Intellectual Property and Litigation Sections Intellectual Property Law Association of Chicago International Trademark Association Patent Law Association of Chicago

Education

JD, University of Illinois College of Law, 1973; BA, Northern Illinois University, 1970

Lawyer Rankings

United States > Intellectual property > Copyright

Katten focuses on areas such as fashion, music, entertainment and technology, with a client roster that includes NBCUniversal, the estate of Michael Jackson, and Live Nation. David Halberstadter is a key figure who advised Starz Entertainment, Anchor Bay Entertainment and CBS Television Studios in relation to two separate lawsuits brought by writers who believed that the television series Power infringed upon their work.  Elsewhere, Karen Artz Ash advised Calvin Klein in licensing issues surrounding its use of imagery from the artist Andy Warhol and the photography of Dennis Hopper. Floyd Mandell is also a key figure and is very active in the technology sector.

United States > Intellectual property > Trademarks: litigation

Katten represents clients from a wide array of sectors with particular expertise in acting for clients in the fashion and entertainment industries. The ‘proactive’ attorneys are ‘excellent communicators’ and ‘experts in domestic and international matters’. Chicago-based Floyd Mandell successfully defended PepsiCo in a dispute where plaintiff SportFuel alleged that the client’s use of the tagline ‘Gatorade. The Sports Fuel Company’ infringed upon its trademarks. In another high-profile highlight, the team currently represents Forever 21 in a dispute with adidas concerning the use of striped designs on apparel. New York-based Karen Artz Ash ensures ‘that nothing is overlooked’, she leads the practice with Mandell. Kristin Achterhof and Roger Furey, respectively based in Chicago and Washington DC, are recommended.

United States > Media, technology and telecoms > Advertising and marketing: transactional

Katten has experience spanning from the consumer products, fashion, food and beverage and luxury sectors to technology and software and the medical, sport and gaming industries. The group handles a range of contractual issues and sponsorship agreements for its impressive client roster that includes Calvin Klein, Agave Loco and PepsiCo. The team also continues to act for the Chicago White Sox, Chicago Bulls and Chicago Blackhawks in connection with new telecast rights agreements and sponsorship agreements, and advised the Bulls on the negotiation of documents related to obtaining the right to host the NBA All Star Game at the United Center. New York-based Doron Goldstein heads the practice alongside Kristin Achterhof in Chicago. Other key names to note include Floyd Mandell, also in Chicago, and intellectual property partner Sean Wooden who recently joined the Washington DC office from Hunton Andrews Kurth LLP‘s legacy firm, Andrews Kurth Kenyon LLP.