Julie A. Katz

Julie A. Katz

Julie A. Katz

Julie A. Katz, JD, has over 20 years of experience in the field of litigating and prosecuting intellectual property spanning various technologies, industries and consumer markets. Her practice includes international IP portfolio management & consulting, copyright protection, patent infringement litigation, trade dress protection, trademark protection, trade secret protection, IP litigation, e-discovery, alternative dispute resolution, US PTO Trademark Trial and Appeal Board proceedings, strategic branding & re-branding, IP Audits, domain name disputes, domain name acquisition, IP investigations, IP licensing, U.S. Customs.

Julie has extensive knowledge about protecting trademarks and copyrights through the US Customs and Border protection system designed to stop counterfeits and parallel imports from entering the US.

All of the aspects of Julie’s practice involve focus on identifying, defining, and maximizing her client’s intellectual property rights. As part of this practice, she routinely works with the US PTO and Copyright Office; prepares trademark and packaging risk assessments regarding use and registration; counsels and monitors portfolios to confirm that the IP is used properly and effectively; negotiates and drafts licenses and other transactional agreements relating to IP whether obtained domestically or internationally; creates enforcements programs and procedures that promote effective use of IP and policing against improper use by others; and works with her clients to establish internal policies for them to avoid conflicts with and respect the IP rights of others.

In the area of litigation, Julie’s trademark litigation experience has extended from toys to kitchen appliances; copyright litigation concerning video game rights, computer software and toys; patent litigation involving antibiotics, hard disk drive motors, and audio equipment. She has extensive experience litigation Hatch-Waxman Act/ANDA patent infringement actions involving prescription pharmaceutical drugs, including successfully invalidating the patent on Floxin Otic® (ofloxacin) (Daiichi Sankyo Co., Ltd. v. Apotex, Inc. et al., 501 F.3d 1254 (Fed. Cir. 2007). Julie works with clients to protect trade secrets through preemptive litigation strategies and copyright registration where appropriate.

In the area of contentious trademark disputes, Julie has won 100s of proceedings before the Trademark Trial and Appeal Board. She has also won many victories for trademark owners through ICANN’s domain name dispute resolution procedures.

Prior to founding Katz Group, Julie was a partner at the independent intellectual property law firm Welsh & Katz, Ltd. and the general practice firm Husch Blackwell, LLP.

 

Contact Julie

Julie A. Katz represents clients in a broad range of intellectual property fields.

Noteworthy:

Received AV Preeminent® Rating from Martindale-Hubbell®

“Millions of Clients & Attorneys turn to Martindale-Hubbell Peer Review Ratings™ to help them determine who they should choose or recommend for appropriate legal counsel. ”

AV Preeminent® is the highest peer rating standard. “This is given to attorneys who are ranked at the highest level of professional excellence for their legal expertise, communication skills, and ethical standards by their peers.”

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AV Preeminent Martindale-Hubbell Peer Review Rating

Julie A. Katz

Selected to Super Lawyers: 2005–2006, 2008–2013, 2015–2022

Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive this honor. Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys.

The chances of resolving conflicts to your satisfaction is greatly enhanced when represented by a lawyer who understands your goals and represents your case with your best interests in mind. That’s how attorneys make a difference. At Katz Group LLC, we believe our clients get better results because we combine passion with experienced-based strategy, and that’s how we became one of the firms recognized by the Super Lawyers program.

Rated by Super Lawyers Julie Katz graphic

2018 & 2021, Named as a Leading Lawyer in Intellectual Property Law and Copyright & Trademark Law by Leading Lawyers Network (nominated by peers)

  • 2018, Who’s Who Legal, Trademark Litigation section
  • 2017, Featured in Chicago Lawyer’s 2017 Women in Law
  • 2016 Acquisition International IP Copyright Litigation Award
  • 2015 Who’s Who Legal, Trademark Litigation section
  • 2014, Recognized by World Trademark Review (WTR) for inclusion in its 2014 edition of WTR 1000  [The World’s Leading Trademark Professionals 2014]
  • WTR 2104 Recommended Individual 2014
  • AV rated, Martindale-Hubbell
  • 2013, Named as one of The World’s Leading Women in Business Law (Trademark Law Section), published by Legal Media Group/Euromoney
  • 2013, Named as a Leading Lawyer in Intellectual Property Law by Leading Lawyers Network (nominated by peers)
  • 2012, Linn Inn Alliance (American Inns of Court) Distinguished Service Medal Recipient
  • 2012, Guide to the World’s Women in Business Law – Trademark Section
  • 2011, The Martindale-Hubbell® Bar Register of Preeminent Women Lawyers, inaugural ed.
  • 2011, 2010, 2009, 2008, Chicago Magazine’s Super Lawyer Section, Top Attorneys in Illinois – Intellectual Property Section
  • 2011, Corporate Women of Achievement Award Recipient awarded by the Chicago Chapter of the National Association of Women Business Owners
  • 2010, Corporate INTL Global Awards, Intellectual Property Advisor of the Year in Illinois

Representative Cases:

  • Elite Group/Sensio v Bella Cucina Artful Food (ND GA 2011) Pretrial discovery and settlement advisor for Elite Group regarding trademark infringement, termination of license for small electric kitchen appliances.
  • Propex Operating Company v Western Excelsior (ED TN 2010-2011) Pretrial discovery, motion practice, and settlement negotiations in this patent and trade dress infringement litigation concerning erosion control land coverings.
  • Roe & Sheppard v NASCAR, CCI Screenprinting, Baby Tracks (CD CA 2010- 2011) Settlement negotiations to fruition on behalf of certain defendants in this trademark and copyright infringement litigation concerning use of a trademark on clothing and on television.
  • Centurion v Surgical Design (ND IL 2010-2011) Discovery and settlement negotiations in this patent infringement litigation on behalf of the defendant concerning design patents for medical devices.
  • UCF America v UCF Trading Company (D NJ 2010-2011) Represented defendant through mediation in this trademark infringement litigation involving axle automotive parts and family members splitting up company assets.
  • Otsuka v Apotex (D NJ 2007-2008) Pretrial discovery for ANDA patent infringement litigation regarding an antipsychotic drug Abilify® and the generic aripiprazole.
  • Daiichi v Apotex, 501 F.3d 1254 (Fed. Cir. 2007). Successfully defended Apotex against patent infringement claims relating to the ear infection medicine Floxin® and the generic ofloxacin, invalidating the Plaintiff’s patent.

Education:

BA, English/BS, Design, Indiana University, Bloomington, Indiana; JD, University of Illinois College of Law.

Bar Memberships:

Illinois, Tennessee

Court Admissions:

US District Court for the Northern District of Illinois; US Courts of Appeals for the Federal Circuit and the Seventh Circuit.

Associations:

Federal Circuit Bar Association; The Richard Linn American Inn of Court (2011-2012 Executive Board, Linn Inn Alliance Liaison); Pharmaceutical Trade Mark Group; Intellectual Property Law Association of Chicago (2010-2011 Co-Chair Women in IP Committee: Federal Judicial Panel, entitled, From the Bench to the Bar: Advice for IP Litigators, Chicago, Illinois – July 2010); International Trademark Association (2010-2012 Law Firm Program Committee; 2010-2012 Saul Lefkowitz Moot Court Competition, Advisory Board); American Bar Association, Illinois Bar Association, Chicago Bar Association.

Publications:

Recent Presentations:

  • 2011, Defense Research Institute, Intellectual Property and Commercial Litigation Conference, “Patent Damages”, Chicago, Illinois
  • 2010, Guest lecturer, Northern Illinois University Law School, Intellectual Property course, DeKalb, Illinois
  • 2007, International Trademark Association Trademark Administrators Conference: “Trademark Enforcement and Anti-Counterfeiting”, Long Beach, California
  • 2006, Sky Radio and American Airlines Interview, “Intellectual Property, Trademark Protection and Creation of a Famous Mark”
  • 2004, Licensing Executive Society Spring Meeting, Liberty and Leverage Through Licensing, “Madrid Protocol: Successful Implementation in the U.S.”, New York, New York
  • 2004, ALI-ABA Intellectual Property Licensing Today, “The Business Perspective: Why License/Accept a License for Use of IP”, Chicago, Illinois

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