Mr. Dunn has extensive experience counseling clients on the selection, screening, prosecution, maintenance, and enforcement of trademarks both domestically and internationally.
For nearly 20 years, Mr. Dunn has successfully registered hundreds of trademarks for clients in a wide variety of industries, and has successfully litigated numerous trademark disputes both in court and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.
Mr. Dunn advises clients on copyright matters, as well, often in combination with trademarks to provide the most comprehensive brand protection strategy possible.
He also has extensive experience with intercompany agreements such as manufacturing, reseller, distribution, strategic alliance, e-commerce, non-competition, and other agreements.
- Represented Plaintiff Able Real Estate in a trademark infringement, copyright infringement and unfair competition action; favorable settlement with one party and $850,000 judgement against other.
- Represented Plaintiff Brightworks, Inc. in an in rem domain name action; favorable settlement and transfer of names.
- Represented Plaintiff GeoVantage, Inc. in trademark infringement action, defendant ceased infringing acts.
U.S. Trademark Trial and Appeal Board
- Represented Americana in trademark opposition proceeding; won motion for judgment in favor of Americana.
- Represented Defendant J. Gorgone against Plaintiff Rhode Island Novelty Co. in a trademark cancellation proceeding; obtained favorable license agreement.
- Represented Plaintiff Design Continuum in trademark cancellation proceeding; reached favorable settlement.
- Represented Plaintiff Specialty Brands of America against Defendant Kemps, LLC in a trademark opposition proceeding; reached favorable settlement.
- Represented Plaintiff CRF Health in combined notice of opposition and petition for cancellation proceeding; reached favorable settlement.
- Represented Plaintiff Forge Worldwide in a trademark opposition proceeding; reached favorable settlement.
- Represented Defendant Exposure 2000 in trademark opposition proceeding; reached favorable settlement.
International Trademark Oppositions
- Represented Plaintiff Lycos in trademark opposition proceedings in the United Kingdom and the European Union; defendant withdrew its pending applications and ceased use of the mark.
- Represented Defendant Optaros in trademark opposition proceeding against AMD in Canada; reached favorable settlement.
- Represented Plaintiff Hogy Lure Co. in trademark opposition proceeding in European Union; reached favorable settlement.
- Represented Defendant Corero Network Security in a trademark opposition in the E.U.; reached favorable settlement.
Uniform Domain Name Dispute Resolution Proceedings
- Innosight Consulting, LLC v. Kun Zhang (Nat’l Arbitration Forum) – Successfully represented Plaintiff Innosight in UDRP action to recover domain name from cybersquatter.
- Bear Creek Country Kitchens, LLC v. Domain Tech Enterprises (National Arbitration Forum) – Successfully represented Plaintiff Bear Creek Country Kitchens in UDRP action to recover domain name from cybersquatter.
Selected Presentations & Publications
- Speaker, Trademarks & Unfair Competition, New England School of Law, speaking on the topic of international trademark registration
- Speaker, Clearing, Registering, & Enforcing Trademarks, MCLE
- Multiple INTA Presentations
- USPTO Ruling on Washington Redskins Trademark, Boston Herald Radio
Charitable & Civic Involvement
- INTA Sub-Committee: INTA Bulletins – Law & Practice, North America (2018-2019)
- MassBio, Marketing & Communications Forum, Co-Chair (2015-2017)
- INTA Sub-Committee: The Trademark Reporter (2014-2017)
- Bare Hill Rowing Association, Director (2013-Present)
- The Creeley Foundation, Clerk (2012-Present)
- INTA Sub-Committee: Trademark Office Practices (2008-2013) (Project Team Leader, Trademark Office Benchmarking Portal)
- Acton Memorial Library, Corporate Trustee (2001-Present)
Tom served in the U.S. Marine Corps and worked at Harvard University as an Information Technology Manager before deciding to become an attorney.