Tamara A. Miller

Shareholder

Tamara A. Miller

Overview

Ms. Miller has practiced trademark law at Leydig for over 25 years.  She works in all areas related to trademarks, including litigation, domestic and foreign oppositions and cancellations, non-judicial enforcement and defense, domain name disputes, clearance, prosecution, global portfolio management, large-scale recordal projects, licensing, and trademark acquisitions.  In particular, Ms. Miller has developed specialized expertise in trade dress litigation and prosecution, as well as in dealing with trademark disputes in China.  In addition to trademark law, Ms. Miller also has significant experience in the fields of copyrights and false and comparative advertising.  Ms. Miller constantly strives to provide her clients with clear, practical advice and creative solutions.

Experience

Much of Ms. Miller’s practice is litigation, and she has represented clients in lawsuits throughout the U.S.  She is experienced in matters involving motions for emergency relief, such as motions for preliminary injunctions and temporary restraining orders.  She is engaged in all aspects of discovery, including taking depositions and working closely with trademark survey experts and damages experts.  Ms. Miller has successfully argued motions in court and has enjoyed many victories on behalf of the clients she represents due to the success of dispositive and other key motions.  She also has had experience supervising and coordinating foreign trademark litigation, oppositions, and cancellations on behalf of clients based in the U.S.

In particular, Ms. Miller has significant experience in trade dress matters, from litigation involving packaging and product configuration marks to prosecution of colors, product labels, bottles, and containers with the U.S. Trademark Office.  She particularly enjoys counseling clients about proactive steps they can take to maximize and protect trade dress rights.  In the course of her trade dress litigation experience, Ms. Miller has worked with experts in connection with surveys intended to evaluate the likelihood of confusion between parties’ product configuration marks.

Ms. Miller handles oppositions, cancellations, and ex parte appeals at the U.S. Trademark Trial and Appeal Board, and is active in non-judicial trademark and copyright enforcement and defense.  She is knowledgeable about Internet law as it relates to trademarks, copyrights, and jurisdictional issues.  She is active in domestic and international trademark clearance projects in a wide variety of industries.  Ms. Miller regularly counsels clients on advertising issues, such as advertising claim substantiation, comparative advertising, and proper trademark usage in advertising.  She is experienced in negotiating settlements, coexistence agreements, licenses, trademark and domain name purchases, copyright buy-outs, and litigation-sharing arrangements, and in preparing and analyzing complex agreements relating thereto.  She is responsible for supervising the maintenance and management of international trademark portfolios, including large-scale and international assignment and other change-of-ownership recordal projects.

In her years of practice, Ms. Miller has handled many situations for U.S.-based clients facing trademark-related troubles in China.  For example, she has worked to secure assignments for key marks from trademark squatters through anonymous purchases.  Ms. Miller regularly helps her clients formulate calculated defensive filing strategies so that they can lessen the likelihood of encountering future problems in China.  She has had success in oppositions and cancellations against applications and registrations owned by squatters, working with Chinese counsel to find creative ways in which to accomplish her clients’ objectives.  By way of example, Ms. Miller has successfully relied on U.S. copyrights covering logo works in opposing trademark applications by squatters for the same logos.  As another example, Ms. Miller secured a complete victory in hotly contested, consolidated trademark opposition against three Chinese applications by squatters attempting to register a “Fortune 50” U.S. company’s house mark for its primary goods and services.  The matter involved gathering substantial evidence of fame, working with the U.S. Embassy in China, coordinating investigations into the squatters, arranging for the retention of expert witnesses in China, working on briefs and other persuasive communications to the Chinese Trademark Review and Adjudication Board (TRAB) and the U.S. Embassy, and scripting the in-person presentation made to the TRAB by an executive of the client and Chinese counsel.  When the consolidated opposition was sustained in favor of the client, that paved the way for the client’s own applications to proceed to registration.

Ms. Miller serves as the Chair of the firm’s Professional Development Committee which is responsible for managing the firm’s associates, patent agents, and scientific advisors.  In addition, she serves as the Chair of Leydig’s Social Event Committee which plans fun events for all employees of the firm.

Representative Matters

  • Primary author of summary judgment motion on behalf of defendant in federal lawsuit alleging infringement of registered product configuration trade dress for candy. The Judge granted the motion based on functionality, dismissed the case, and ordered that the plaintiff’s registration be cancelled.  The decision was affirmed by the Third Circuit Court of Appeals.
  • Represented a Fortune 50 corporation as first chair of a hotly-contested and complex U.S. trademark opposition that lasted over four years and resulted in a detailed 76-page opinion in favor of the client, upholding key evidentiary objections and arguments against any likelihood of confusion which were pivotal in the determination of the matter.
  • Represented plaintiffs in a federal lawsuit against sellers of counterfeit consumer products on Amazon.com.  Issued multiple subpoenas to Amazon and financial institutions to determine the sellers’ identities in order to name them as defendants and serve them. Obtained Consent Judgment in favor of client including an injunction against further sales of the counterfeit goods.
  • Represented declaratory judgment plaintiff in trademark case involving a priority dispute related to a mark for a beverage product; case settled.
  • Authored trial briefs and evidentiary objections for opposer in contested opposition involving the likelihood of confusion between marks for beauty products and services.  Opposition sustained in favor of client.
  • Filed multiple Lanham Act lawsuits against client’s competitors for failing to mark tools as having been made in China in violation of the Tariff Act; cases settled.
  • Initiated trademark and cybersquatting case against online seller of appliance replacement parts.  Secured swift and favorable settlement and transfer of numerous domain names.
  • Acted as co-counsel representing defendant in a trade dress case involving tool packaging.  Primary author of summary judgment motion on the issue of functionality. The Court granted the motion in full and dismissed the case.
  • Represented plaintiff in federal lawsuit asserting infringement of trade dress in coloration scheme for the handles of pliers directed to electricians; case settled.
  • Represented plaintiff seeking to enforce an incontestable trademark registration for a mark for olive oil against a competitor’s use of a similar mark; case settled.
  • Represented plaintiffs in case involving trade dress for garage cabinets.  Case settled.
  • Represented defendant in a trademark infringement action involving consumer loan services; case settled after discovery.
  • Successfully enforced trade dress registration for the shape of an appliance against scrapbooking products through settlement.
  • In a case involving apparel, successfully moved for dismissal in a trademark case based on lack of personal jurisdiction.  Then, on behalf of declaratory judgment plaintiffs, secured early dismissal of defendant’s cybersquatting claim and the voluntary withdrawal of a dilution claim. Sought discovery from third parties and worked with multiple experts to show no likelihood of confusion.  Moved for summary judgment and exclusion of a trademark survey report, after which the case promptly settled.
  • Represented plaintiff in a federal court appeal of a Trademark Trial and Appeal Board opposition decision.  Worked with multiple experts and survey evidence.  Represented client at a trial on the merits but the case settled before a decision issued.
  • In a case involving a new mark for financial investment services, successfully defended defendant against a motion for preliminary injunction, including briefing and representation at an evidentiary hearing.
  • In a case involving financial investment services, won summary judgment for plaintiff on the question of liability.  Defendant appealed and summary judgment was affirmed by the Fifth Circuit Court of Appeals.
  • Obtained consent judgment for plaintiffs in a trade dress case involving an appliance trade dress registration.
  • Represented plaintiffs in federal lawsuit involving a secondary mark for appliances. Successfully moved for dismissal of numerous counterclaims and affirmative defenses raised by defendants.  Case settled prior to trial.
  • Represented defendant in cookie packaging trade dress case; case settled following mediation.
  • Successful assertion of rights and favorable resolution in favor of plaintiffs in counterfeiting case involving fuel pumps sold in the automotive aftermarket.
  • Represented defendant in trademark and trade dress case in the over-the-counter pharmaceutical field; case settled prior to trial.
  • Represented plaintiff in product configuration trade dress case involving key chains that copied lantern trade dress; case settled prior to trial.
  • Represented plaintiffs in copyright infringement case involving chiropractic text books; case settled prior to trial.
  • Achieved efficient and successful resolution for plaintiff in trademark case in retail clothing industry.
  • Successfully represented plaintiffs in a breach of contract and product configuration trade dress case involving plaintiff’s registration for appliance trade dress; consent judgment entered against defendants.
  • Efficiently asserted rights and achieved resolution for plaintiff in trademark case involving mark for moving services; order entered against defendant’s continued infringement.
  • Represented defendant in trade dress case involving the design of cookbooks and children’s books.  Successfully moved for summary judgment on liability, which was upheld on appeal to the Seventh Circuit and for which certiorari was denied.
  • Represented certain defendants in copyright case involving architectural plans. Successfully moved for dismissal of certain claims based on preemption by the Copyright Act, after which the case settled.

Education

  • Loyola University Chicago School of Law, J.D., cum laude, 1996
    • Law Review, Senior Member
    • Consumer Law Review, Chief Cases Editor
    • Loyola Law Scholar Award
    • Highest grade in Legal Writing
    • Loyola Legal Clinic experience
  • Indiana University, B.A. in Sociology, 1993
    • Member, Phi Beta Kappa
    • Sociology Department Award of Distinction

Admissions

  • Illinois, 1996

Courts

  • Illinois Supreme Court
  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the Central District of Illinois
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Western District of Michigan
  • U.S. District Court for the Eastern District of Wisconsin

Honors

  • Named in the Illinois Super Lawyers list, Intellectual Property, each year 2013-2024
  • Named as a top Illinois trademark Lawyer by the World Trademark Review 1000, each year 2013-2024
  • Named a leading practitioner for Trademarks in Euromoney’s Women in Business Law Expert Guide, 2022
  • Named in the Illinois Rising Stars list, as published in Illinois Super Lawyers, 2009, 2010
  • Named one of the Top Women Attorneys in Illinois by Chicago Magazine, 2013, 2014 and one of the Top Attorneys in Illinois, each year 2015-2021
  • Named a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network, each year 2014-2022
  • Named a “Trademark Star” by Managing IP based upon client and peer reviews, 2020, 2022-2024

Professional Affiliations

  • Intellectual Property Law Association of Chicago (IPLAC), Co-Chair, Trademarks & Anti-Counterfeiting Committee, 2023-2024; Treasurer, 2017-2019; Board of Directors, 2015-2019; Chair of the New Programming/Events Committee, 2011-2012
  • International Trademark Association (INTA) (Membership Committee, Academic Institution Recruitment Subcommittee (AIRCOM) from 2002-2005; Leader of the Student Membership Section of the AIRCOM subcommittee from 2003-March, 2005; Enforcement Committee, Monetary Remedies Subcommittee from 2006-2009)
  • Chicago Bar Association
  • National Association of Women Business Owners
  • Intellectual Property Owners Association (IPO)

Articles, Publications & Lectures

  • “Forming Strategies to Address the Challenges of Complex Trademark and Trade Dress Litigation,” Litigation Strategies for Intellectual Property Cases: Leading Lawyers on Analyzing Key Decisions and Effectively Litigating IP Cases, pp. 53-65 (2015 ed.). Aspatore Books from Thomson Reuters Westlaw
  • “Developing and Protecting Trade Dress: Leveraging Trademark Law to Protect the Look and Feel of Product Design,” speaker at a webinar sponsored by Strafford Publications, Inc. on August 4, 2015.
  • “Trademarks and Best Practices Overview and the Use of Trade Dress for Innovative Branding,” speaker at a one-hour CLE program on July 7, 2015.
  • “New Termination Rights to Shake Up World of Trademarks, Copyrights,” Chicago Daily Law Bulletin, April 5, 2013
  • “Expanding Your Market,” speaker at the Annual Corporate Intellectual Property Law Conference hosted by Law Bulletin Seminars, February 13, 2013
  • “Courts Review Legal Disputes Involving Trademarks and the Web,” Chicago Daily Law Bulletin, December 10, 2012
  • “Strategic Considerations for Trademark License Agreements,” Intellectual Property Licensing Strategies: Leading Lawyers on Analyzing Trends in IP Licensing and Drafting Effective Agreements, pp. 7–19 (2012 ed.). Aspatore Books from Thomson Reuters Westlaw
  • “Lawyers Benefit Clients by Talking Through Litigation Process,” Chicago Daily Law Bulletin, March 5, 2012
  • “Strive to Obtain Full Copyright Ownership: ‘Of Course I Own it, I Paid for it!’,” Chicago Daily Law Bulletin, October 3, 2011
  • “Ways to Be Proactive in Employing and Maximizing Trade Dress Protection,” speaker for a one-hour CLE program on October 28, 2010
  • “Seizing Trade Dress Opportunities through Creative Claims and Proactive Measures,” Thomson CompuMark’s Client Times Online newsletter, February 2009
  • “Trade Dress: From Brand Strategy to IP Best Practices,” speaker at a webinar sponsored by Thomson CompuMark on March 4, 2009
  • “Hey, I Know that Look! Maximizing Trade Dress Rights Before Infringement,” Corporate Counsel, October 2008
  • “Why Registering Trademarks in China Today is a No-Brainer,” Corporate Counsel, December 2007
  • “Aspirina Case Instructive for Trademark Practitioners,” IP Law360, June 18, 2007
  • “Protection of Bottle Design Marks in the United States,” moderator and presenter at the International Trademark Association Annual Meeting, May 1, 2007
  •  “Copyright Law,” presented to Executive Service Corp. of Chicago on Sept. 17, 2004
  •  Various presentations on trademark, trade dress and copyright issues made to clients

Insights

Education

  • Loyola University Chicago School of Law, J.D., cum laude, 1996
  • Law Review, Senior Member
  • Consumer Law Review, Chief Cases Editor
  • Loyola Law Scholar Award
  • Highest grade in Legal Writing
  • Loyola Legal Clinic experience
  • Indiana University, B.A. in Sociology, 1993
  • Member, Phi Beta Kappa
  • Sociology Department Award of Distinction

Admissions

  • Illinois, 1996

Courts

  • Illinois Supreme Court
  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the Central District of Illinois
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Western District of Michigan
  • U.S. District Court for the Eastern District of Wisconsin