“[O]ne of the most knowledgeable and responsive attorneys out there.”
WTR 1000 2017

Overview

Michael D. Adams, a partner in Mayer Brown's Chicago office and co-leader of the Global Brand Management & Internet practice, has over 15 years of experience practicing intellectual property law. He represents clients in a wide range of IP matters, including trademark litigation and Trademark Trial and Appeal Board proceedings; national and international advertising campaigns; international brand management including trademark clearance, filing, prosecution, maintenance, and portfolio management; domestic and international licensing, franchise agreements, and related recordation requirements; mergers and acquisitions, joint ventures and strategic alliances involving intellectual property assets; securitization of intellectual property assets; and Internet-related intellectual property matters including federal Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP) actions. In addition, clients have recognized Michael for his client service. "Michael excels at effective client relations and is the best of all our outside counsel." – ILO Client Choice Guide - International 2013 and . . . “one enthralled patron asserts: “he is outstanding in so many respects; there is nobody else I would rather use” World Trademark Review 1000 2018. 

Michael’s IP counseling experience includes structuring and performing due diligence in corporate mergers and acquisitions, joint ventures, internal and external licensing programs, and strategic alliances involving intellectual property assets. He regularly advises clients in matters regarding ecommerce transactions, trademark and domain portfolio management and enforcement, and Top-Level Domain applications, and compliance.

Michael's trademark prosecution experience includes all aspects of US and foreign trademark clearance, filing, and maintenance. Michael manages the US and international trademark portfolios of numerous clients including major banking, telecommunications, software, real estate, cosmetic, and food industry corporations. His advice to these and other corporate clients encompasses trademark availability, procurement, protection, and monetization. In his corporate counseling, Michael also develops world-wide trademark protection and enforcement programs that include trademark use manuals. His work also involves all aspects of documenting the requirements for protecting intellectual property in domestic and international licensing and franchising agreements. For financial institutions, Michael offers guidance regarding the securitization of IP assets as loan collateral and performs related recording requirements in these transactions. His intellectual property-related advice to clients regarding national and international advertising campaigns involves selecting and clearing advertising slogans and logos, reviewing advertisements to ensure claim substantiation and proper incorporation of regulatory disclaimers and notices, and negotiating vendor and ad placement agreements.

Michael is also very active in advising clients regarding the use of brands on the Internet, including the counseling of financial services, specialty retail, and e-commerce organizations on their applications for generic Top-Level Domains. In addition, Michael undertakes domain name enforcement litigation under the federal ACPA legislation and UDRP forums, and is actively involved in enforcement actions against the importation and distribution of counterfeit goods. In related Internet counseling, Michael advises on the proper use of materials on web sites, and assists with domain name portfolio management and protection.

Michael currently serves as a UDRP panelist with the World Intellectual Property Organization (WIPO). Prior to joining Mayer Brown, Michael served as vice president and counsel for Diners Club International. Michael is also a veteran of the United States Marine Corps.

Spoken Languages

  • English

Experience

Litigation:    

  • advise clients regarding policing and enforcement of trademark rights
  • experience in trademark litigation in federal courts and the U.S. Trademark Trial and Appeal Board  
  • domain name litigation under the federal Anti-Cybersquatting Consumer Protection Act and Uniform Domain Name Dispute Resolution Policy. 

Advertising:

  • advise clients regarding national and international advertising campaigns  
  • provide counsel in selecting and clearing advertising slogans and logos  
  • review advertisements for claim substantiation as well as applicable regulatory disclaimers and notices  
  • negotiation of vendor and ad placement agreements. 

Prosecution:

  • experience in all areas of US and foreign trademark clearance filing, prosecution and maintenance  
  • responsible for management of US and international trademark portfolios of numerous clients including major banking, telecommunications, software, real estate and food industry corporations  
  • advise corporate clients regarding trademark availability, procurement and protection, deceptive/comparative advertising issues and FDA labeling requirements  
  • develop world-wide trademark protection and enforcement programs  
  • develop trademark use manuals for corporate clients. 

Corporate/Licensing:

  • experience in domestic and international intellectual property licensing, franchise agreements and related recordation requirements
  • experience in corporate mergers and acquisitions, joint ventures and strategic alliances involving intellectual property assets  

Internet:

  • experience with ICANN and all aspects of Top-Level and Second-Level procurement and protection  
  • advising clients on the use of materials on web sites and related copyright and trademark issues  
  • domain name portfolio management and protection  
  • recovery of domain names under the federal Anti-Cybersquatting Consumer Protection Act and Uniform Domain Name Dispute Resolution Policy

Education

DePaul University College of Law, JD, Dean's List, Journal of Art & Entertainment Law; National Moot Court Appellate Team; Dean's Scholarship

Illinois State University, BS, Economics and Political Science, Dean's List, Omicron Epsilon Delta Honorary Fraternity for Economics; Pi Sigma Alpha Honorary Fraternity for Political Science

Harvard Business School Executive Education

Admissions

  • Illinois

Court

  • US District Court for the Northern District of Illinois

Memberships

  • Treasurer (2014 & 2015) & Member of the Intellectual Property Constituency of ICANN (Internet Corporation for Assigned Names and Numbers) Generic Names Supporting Organizations (2010 to date)
  • World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy panelist (2015 to date)
  • Member of INTA Internet Committee (2012 to 2015)
  • Member of International Trademark Association Law Firm Committee (2010 to 2012)
  • Member of International Trademark Association Enforcement Committee (2008 to 2010)
  • Executive Council Chicago Bar Association’s Young Lawyers Section (2006 to 2008)
  • Member of International Trademark Association 2008 Annual Meeting United States Programming Planning Committee (2006 to 2008)
  • Member of International Trademark Association Young Practitioners’ Subcommittee (2007 to 2008)
  • Member of International Trademark Association Trademark Administrator’s Conference Planning Committee (2005 to 2006)
  • Co-chair of Chicago Bar Association’s Young Lawyers Section Intellectual Property Committee (2004 to 2006)
  • Recommended Lawyer in Illinois – World Trademark Review 1000 (2015-2017)
  • Winner of the 2013 ILO State Client Choice Award for trademark attorneys in Illinois
  • Winner of the 2013 ILO National Client Choice Award for trademark attorneys in the United States
  • Recognized by Trademark Insider as the number six trademark filer for 2008
  • Recognized by Trademark Insider as a top 3 trademark filer for third quarter 2008 year-to-date trademark applications
  • Recognized by Trademark Insider as a top 3 trademark filer in the first quarter of 2008
  • Recognized by Trademark Insider as a top 20 trademark filer in the fourth quarter of 2007