Brett M. Tolpin
Brett Tolpin has over 20 years of experience practicing intellectual property (IP) law and guiding his clients in achieving their intellectual property goals. Since 2008, as the founder of Tolpin & Partners, P.C., he has first-hand knowledge of the challenges of running a business and what it takes to overcome them. As a result, he takes a unique blended legal/business approach to achieving the best outcomes for his clients pertaining to IP and business matters.
Brett counsels and advises clients in all areas of intangible property and media/entertainment law including maximizing protection and defining rights. He manages domestic and international copyright and trademark portfolios, as well as policing and enforcement of IP rights. He has led IP due diligence along with negotiating purchase and sale agreements for numerous brand driven acquisitions with significant trademark, copyright, software and IP licenses. He is also experienced in dispute resolutions and has a unique talent for resolving conflicts, helping businesses stay healthy and productive.
Prior to founding Tolpin & Partners, Brett was a Trademark Examining Attorney with the United States Patent and Trademark Office (USPTO) for 5 years. At the USPTO, he reviewed trademark applications for all goods (products) and services, and determined the registrability of proposed trademarks. He defended those determinations with numerous briefs and oral hearings before the Trademark Trial and Appeals Board of the USPTO. After the USPTO, he spent another 5 years at a mid-sized IP boutique firm which rounded out his skills-set in private practice.
In order to minimize clients’ potential legal exposure prior to using a name, Brett conducts trademark clearances. He provides comprehensive searches, opinions and reports before clearing use, advising for registration, and maps out trademark and copyright prosecution strategies. He also represents clients who need to police against online piracy, counterfeiting and infringement including a number of high-profile recording artists. Brett prosecutes and defends domain name disputes via arbitration forum, and provides advice concerning advertising and trademark use, right of privacy and publicity, data privacy and security compliance, licensing, unfair and deceptive trade practices, trade secrets and defense and plaintiff’s litigation.
Brett completed advanced course study in international law through the University of Iowa and studies unfair competition, patent law, patent litigation, copyrights and intellectual property licensing at George Washington School of Law in Washington, D.C. He completed deposition and pre-trial skills course via the National Institute of Trial Advocacy and is a two-term chair the International Trademark Association’s (INTA) famous and well-known marks committee. Since 1998, he has attended every annual conference of INTA and participated in most of the leadership meetings. He has been published and has been a featured speaker and panelist on the subjects of false advertising, trademark, copyright and entertainment law at legal and trade conference throughout the world.
Illinois State Bar
Washington State Bar
U.S. District Court, Northern District of Illinois
U.S. District Court, Western District of Washington
U.S. Supreme Court
George Washington School of Law, Intellectual Property Advance Course Study, 1998 – 2000
Gonzaga University School of Law, J.D., 1996
University of Iowa-Bordeaux International Law Program, 1994
University of Iowa, B.A., English, 1993
Chair for two terms, Famous and Well-Known Marks U.S. Subcommittee of the International Trademark Association (INTA) 2012-2015
USPTO Subcommittee of the Trademark Office Practices Committee INTA 2008-2011
Pro bono representation of clients for Lawyers for the Creative Arts Intellectual Property Law Association of Chicago
Prior Memberships and Associations: Intellectual Property Owners Association of Chicago, Copyright Law and Practice Committee Vice-Chair, Chicago Bar Association Young Lawyers Section Intellectual Property Committee
Conferences and Legal Seminars
International Trademark Association Annual Meeting
International Trademark Association Leadership Meeting
American Intellectual Property Law Association Annual Meeting, Washington DC
Corporate Counsel Leadership Forum, Chicago, IL
Asian Patent Attorneys Association Annual Meeting, Singapore & Manila, Philippines Promotion Marketing Association Annual Integrated Marketing Conference, Chicago, IL
Midem Music Business Conference, France
Midem Music Business Conference in Cannes, France – Topic: Trademarks and the Music Industry
Chicago Bar Association Cyberlaw Committee in Chicago, IL – Topic: Counterfeiting and Contributory Infringement.
Montreal International Music Festival (PopMontreal): Topic: The Mechanics of Legal Disputes in Independent Music
University of Chicago Graham School in Chicago, IL, Topic Branding for Competitive Advantage: