Boris Umansky

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Boris Umansky

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Phone: (312) 427-1300 | Fax: (312) 427-6668

Boris Umansky is an attorney in the Chicago office of Ladas & Parry.

Boris is involved in various aspects of trademark, copyright and unfair competition counseling and litigation. He has substantial experience in the clearance, registration, maintenance and enforcement of trademarks and copyrights, as well as with domain name disputes. He handles oppositions, cancellations, and ex parte appeals at the Trademark Trial and Appeal Board level, and has represented clients before various United States courts.

In addition to his prosecution and litigation practice, Boris has performed due diligence work on behalf of clients intending to purchase or divest businesses. He negotiates and prepares settlement agreements, co-existence agreements, licenses and assignments, and has instructed clients on proper usage of trademarks and copyrights. He leads the Digital Brands Practice in the Chicago office and has particular expertise with regard to the protection of intellectual property on the Internet.

Prior to joining Ladas & Parry, Boris  practiced intellectual property law at other IP boutiques in Chicago. He also spent approximately two years in the Washington, D.C. area as a Trademark Examining Attorney with the U.S. Patent & Trademark Office (USPTO) where he obtained valuable experience relating to the trademark prosecution and examination processes, including successfully defending his decisions through appeal briefs and oral arguments before the Trademark Trial and Appeal Board.

In his free time, Boris enjoys trying out new restaurants with his family, watching films, rooting for his favorite football and basketball teams, and keeping up with current events, world affairs and politics. He also does not like to admit that he was once a competitive bowler.

REPRESENTATIVE MATTERS:

Studex Corporation v. Richline Group, Inc., Opposition No. 91211267 (TTAB 2014). Represented Opposer in a trdemark opposition proceeding; concluded with express abandonment by Applicant of its trademark application.

At World Properties, LLC v. @ Rentals, Inc., Opposition No. 91210058 (TTAB 2014). Represented Applicant in a trademark opposition proceeding; settled on favorable terms.

David A. Kay and Christopher N. Cramer v. Apollo Sprayers International, Inc., Opposition No. 91202948 (TTAB 2012). Represented Opposer in a trademark opposition proceeding; moved for judgment on the pleadings, after which Applicant expressly abandoned its trademark application.

Nau Holdings, LLC and Horny Toad Activewear, Inc. v. Dlorah, Inc., Case No. 08-02743 (D. Colo. 2010). Represented declaratory judgment plaintiffs in a trademark and cybersquatting case. Assisted with various motions and briefing, including moving for summary judgment and exclusion of a trademark survey report, after which the case promptly settled.

American Express Marketing & Development Corporation v. Gilad Development Corporation, Opposition Nos. 91183362 and 91193143 (TTAB 2010). Represented Opposer in three related trademark opposition proceedings; matters settled after summary judgment stage.

Lincoln Financial Advisors Corp. v. Sagepoint Financial Inc. (N.D. Ind. 2009). Assisted in the successful defense of defendant against a motion for preliminary injunction.

Hobbs Limited v. Associated Footwear, Inc., Cancellation No. 92048403 (TTAB 2008). Represented Petitioner in trademark cancellation proceeding; matter settled.

American International Group, Inc. v Traverito Traverito, Case No. 1011737 (Nat. Arb. Forum 2007). Represented complainant and secured transfer of the aiginvestment.com domain name.

Biggs v. Bass Pro Outdoor World, L.L.C. et al., Case No. 04-1920 (N.D. Tex. 2006). Represented defendant video game developer, marketer and operator in a copyright infringement suit brought by a photographer; case settled prior to trial.

Dermaide Research Corp. v Melanie Summers, Case No. 649697 (Nat. Arb. Forum 2006). Represented complainant and secured transfer of the dermaide.com domain name.

Swanson Tool Company, Inc. v. United General Supply Company, Inc., et al., Case No. 04-1280 (N.D. Ill. 2005). Represented defendant in a trademark infringement and counterfeiting case involving sales and distribution of tools; case settled prior to trial.

Western Pennsylvania Conservancy vs. Heinz, Case No. 05-0294 (N.D. Ill. 2005). Represented defendant photographer in a copyright infringement suit; case settled prior to trial.

Education

Indiana University (B.A., 1997)
Indiana University Robert H. McKinney School of Law (J.D., 2000)

Practice Areas
  • Trademarks
  • Digital Brands/Domain Names
  • U.S. Litigation
  • Copyrights
Admissions

Illinois
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Central District of Illinois
Indiana (inactive)
U.S. District Court for the Northern District of Indiana
U.S. District Court for the Southern District of Indiana

Key Industries
  • Insurance
  • Real estate and financial services
  • Industrial technology products
  • Restaurants
  • Food and beverage products
  • Software
  • Pharmaceutical and medical-related devices and services
  • Clothing and other consumer products
Associations & Organizations

International Trademark Association (INTA)

  • Trademark Office Practices Committee
  • USPTO Subcommittee, 2010-2013

Chicago Bar Association (CBA)

  • Director, Young Lawyers Section, 2007-2009
  • Co-chair, YLS, Intellectual Property Committee, 2005-2007

Intellectual Property Law Association of Chicago (IPLAC)

  • Vice-chair, Internet Law Committee, 2005-2006

Intellectual Property Owners Association (IPO)

  • Domain Names and Social Media Committee and various past committees

American Bar Association (ABA)

  • Member, Section of Intellectual Property Law
Publications & Presentations

Naming the Product: The Intersection of FDA and Trademark Law, IP Litigator, Volume 15, Number 1, January / February 2009, Co-authored by Frances M. Jagla, Leydig, Voit and Mayer
Google It – The internet giant’s businesses are under the microscope in courts around the world, IPProTheInternet – Issue 6.
Introduction to Copyright, Trademark and Other IP Law, LawReviewCle, Chicago, IL, April 2011
U.S. Trademark Workshop for Paralegals, Half Moon Seminars, Wheaton, IL, June 2009
Protecting A Business’ Assets, sponsored by UBS, Chicago, IL, February 2009
Basics of U.S. Trademark Practice, Half Moon Seminars, Chicago, IL, July 2006
Strategies for Intellectual Property Enforcement for Individuals and Small Businesses, Chicago Bar Association seminar, February 2006

Languages:
Russian, French