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

Neal, Gerber & Eisenberg LLP
2 NORTH LASALLE STREET
SUITE 1700
CHICAGO, IL 60602
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 integrates its trademark litigation practice with its portfolio management service to safeguard the IP of multinational brands at the state and federal levels, and before the Trademark Trial and Appeal Board. Experienced IP trial attorney Thomas McDonough leads the team, along with Michael Kelber, who provides risk management solutions to prevent litigation and builds pre-designed strategies for court appearances. Lee Eulgen brings expertise to domain name ownership disputes. Antony McShane acts for social media and tech companies, hospitality businesses, and sports franchises. Brand protection specialist Andrea Stein Fuelleman was promoted to partner in January 2022. Associate Lee Barrington Stark  provides additional support. All lawyers mentioned work in Chicago.