Mark argued his first appellate case as a student volunteer for the Harvard Legal Aid Bureau at Harvard Law School. Since then, he has successfully represented domestic and international corporations at trial and appellate proceedings.
Mark has been advising Fortune 500 companies on trademark issues since the late 1980s when he was brought as lead IP counsel to conduct due diligence for multiple national and international transactions involving the Nabisco/RJR Reynolds merger. Mark coordinated the transfer, licensing and registration of trademarks across borders while facilitating the launch of new products and businesses.
Mark was an early pioneer in the development of laws surrounding domain name disputes and cybersquatting in the mid-90s, His ruling on one of the first domain dispute cases filed by the singer Madonna is one of the most frequently cited cases in domain case history. Mark has since issued over 200 published decisions as a WIPO panelist for UDRP disputes and handled hundreds more as an advocate in cases involving computer fraud and abuse, spamming, phishing, copyright and trademark infringement, and data breach.
Mark is also a key player in the use of Alternative Dispute Resolution (ADR). He has served as an arbitrator for the American Arbitration Association and as a Lanham Act mediator in Illinois Federal Court. Mark has leveraged his ADR experience to achieve favorable, cost-effective mediated settlements across a variety of industries.
Awards & Recognitions
- Martindale-Hubbell AV Preeminent Peer and Judicial Review Rating
- Illinois Leading Lawyers
- Illinois Super Lawyers 2018
- WTR1000 National and Illinois Rankings
- Who’s Who Legal: Trademarks 2017
- 2017 WTR 1000 National Rankings (World Trademark Review)
- 2016 WTR 1000 National Rankings (World Trademark Review)
- 2010 IAM Top 250 IP Strategists in the World
Representative Experience/Transactions (represented party in bold):
- The Prudential Insurance Company of America v. Zhang
E.D. Va. 2021
- Intelligent Medical Objects, Inc. v. Baby Penguin LLC
N.D. IL. 2019
- The Whitehall Hotel, LLC v. Houston Hotel Owner, LLC
N.D. ILL, 201
- Clark Capital Management Group, Inc. v. RiverSource Life Insurance Company
E.D. Pa 2017
- Medical Transcription Billing, Corporation v. Ameriprise Financial, Inc.
- Intelligent Medical Objects, Inc. v. Health Fidelity Inc.
breach of contract, copyright
N.D. Ill. 2014
- Thoughtworks, Inc. v. Infor, Inc.
N.D. Ill. 2013
- Navistar, Inc. v. Hearst Corporation
N.D. Ill. 2013
- National Association of Realtors v. Fothergill
false advertising, trademark infringement, cybersquatting
N.D. Ill. 2011
- MasterCard International Incorporated v. Trehan
N.D. Ill. 2009
- Nike, Inc. v. Circle Group Internet, Inc.
N.D. Ill. 2004
- Lucent Information Management, Inc. v. Lucent Technologies Inc.
3rd Cir. 1999
Selected Presentations & Publications
- “Domain Names and Trademarks,” Overlapping Intellectual Property Rights, Oxford University Press (contributing author, 2012)
- “Trademark and Copyright Litigation: Forms and Practice,” Oxford University Press, 2011
- “Alternative Dispute Resolution: An Essential Competency for Lawyers,” Oxford University Press, 2009
- “Guiding Rights: Trademarks, Copyright and the Internet,” iUniverse (2003)
My hobbies include ballroom dancing, theatre and genealogy. I’m a direct descendant of a Catholic saint and a Salem witch.