Overview

Wendi has more than 40 years of experience in all aspects of trademark, copyright, and design patents. Wendi combines a depth of experience with a creative and practical approach to protecting and policing both famous brands and start-ups to enhance the value of their intellectual property.

Wendi concentrates her practice on intellectual property law and false advertising, including FDA and FTC regulatory compliance relating to beauty-related products.

As co-chair of BFKN’s Intellectual Property Group, Wendi has extensive experience in all areas of non-utility patent intellectual property. She combines her skill and experience as a trial attorney with her knowledge of copyright, trademark, design patent, and trade secret law to service the firm’s diverse clientele. She actively assists clients in identifying, protecting, valuing, and preserving their intellectual property assets in the United States and internationally. Wendi counsels high profile clients on international trademark filing strategies and clearing new global brands in multiple jurisdictions, registering marks with the relevant trademark offices, and policing marks against infringers or defending a client’s use of a mark from threat of attack. She also handles the intellectual property aspects of U.S. and international corporate transactions, including mergers and acquisitions, persona licenses, and trademark licenses.

In addition, Wendi has extensive experience in evaluating the risks associated with advertising claims and advertising campaigns to minimize potential litigation and regulatory enforcement actions, and to ensure compliance with the FDA and FTC rules and regulations that apply to beauty products, including cosmetics, sunscreen, and over the counter supplements. She has handled false advertising claims and claims under the California Consumers Legal Remedies Act when they arise. Wendi has litigated a wide variety of intellectual property cases across the country, including trademark infringement, trade dress infringement, unfair competition, counterfeiting, domain name issues, false advertising, right of publicity, copyright infringement, and design patent infringement. She has also handled a number of opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

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Wendi is well-versed in alternative dispute resolution, both as a litigant handling mediations and arbitrations, and as a member of the Panel of Neutrals for the International Trademark Association and a mediator at ARD Systems in Chicago. She is a frequent speaker at a variety of IP industry seminars and meetings, and a guest lecturer at Northwestern University Pritzker School of Law and the University of San Diego Law School.

In 2017, Wendi received an Award of Excellence in Pro Bono Work from the Northern District of Illinois. In 2009, Wendi was honored as a Corporate Woman of Achievement by the National Association of Women Business Owners (NAWBO Chicago Chapter) for her contributions to advancing the success of women in the field of law. She was a member of the Trademark Reporter Committee from 2014-2018 and a member of the International Trademark Association Bulletins Committee from 2018-2019. She is an active member of Trademark, and Copyright committees of the American Intellectual Property Law Association and currently serves as the Chair of the Trademark Litigation Committee after serving as Vice Chair from 2020-2022.

Credentials

Admissions

  • State of Illinois
  • U.S. District Court - Northern District of Illinois
  • U.S. Supreme Court

Education

  • The University of Chicago Law School, J.D., 1982
  • Brown University, B.A., magna cum laude, 1979

Languages

  • French

Experience

Trademark Litigation

  • Defended Mari’s Gifts, Inc. in a trademark infringement and alleged grey goods action. Settled the lawsuit on favorable but confidential terms. Vetnique Labs, Inc. v. Mari’s Gifts, Inc. (N.D. Ill.). 
  • Defended Hublot of America in a trademark infringement action. Settled the lawsuit on favorable but confidential terms. Solid 21, Inc. v. Hublot of America, Inc. (C.D. Cal.). 
  • Defended Louis Vuitton in a trade dress infringement action. Obtained summary judgment in Louis Vuitton’s favor, which was affirmed by the Court of Appeals for the Second Circuit. LVL XIII v. Louis Vuitton Malletier S.A. (S.D.N.Y.).
  • Defended Make Up Forever in a trademark and copyright infringement claim. Settled the lawsuit on favorable but confidential terms. VladaMUA, LLC v. Make Up Forever S.A. (C.D. Cal.). 
  • Represented Moёt Hennessy U.S.A., Inc. in a false advertising claim. Settled the lawsuit on favorable but confidential terms. Moët Hennessy U.S.A., Inc. v. Ace of Spades Holdings, LLC (S.D.N.Y.). 
  • Defended Marc Jacobs in a false advertising claim. Settled the case on favorable but confidential terms. Whitsette v. Marc Jacobs, International, LLC (Ohio Court of Common Pleas). 
  • Represented Louis Vuitton Malletier in a successful appeal to U.S. Court of Appeals for the Second Circuit; we obtained a reversal of the District Court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action. Louis Vuitton Malletier S.A. v. Dooney & Bourke, Inc.
  • Represented Louis Vuitton in a trademark infringement action; we obtained a consent injunction and the plaintiff’s agreement to pay the legal fees our client incurred in the action. Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A.
  • Defended Moët Hennessy in a trademark infringement action. Settled the lawsuit on favorable but confidential terms. Zodiac Spirits, Inc. v. Moët Hennessy U.S.A.
  • Defended De Beers Diamond Jewellers Ltd. in a trademark infringement action. Settled the lawsuit on favorable but confidential terms. DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd.
  • Represented the defendant in a trade dress and design patent infringement action. Settled the lawsuit on favorable but confidential terms. Nuwave, LLC v. Farberware Licensing Company (N.D. Ill.).
  • Defended Main Event Entertainment in an Opposition Proceeding before the TTAB. Settled the proceeding on favorable terms that enabled our client to continue to use and register its slogan. Dave & Buster’s L.P. v. Main Event Entertainment L.P. (T.T.A.B.). 
  • Represented GoSmile, Inc. in a trademark and trade dress infringement action. Settled the lawsuit on favorable but confidential terms.GoSmile, Inc. v. CVS Caremark Corporation.

Acquisition & Counseling: Luxury Goods

  • Represented various divisions of LVMH Moët Hennessy Louis Vuitton, S.A. in the intellectual property aspects of their acquisitions of Bliss, Fresh, Benefit, Urban Decay, Hard Candy, Donna Karan, Belvedere Vodka, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.
  • Represented Le Labo Holding, Inc. in the intellectual property aspects relating to its acquisition by Estee Lauder, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.
  • Represented Kendo Holdings, Inc., a cosmetics and beauty incubator company owned by LVMH Moët Hennessy Louis Vuitton and affiliated with Sephora, in strategic transactions related to the formation and launch of the brand Fenty Beauty by Rihanna.
  • Represented LVMH Moët Hennessy Louis Vuitton (LVMH) in strategic corporate and intellectual property transactions related to the formation and launch of Fenty by Rihanna, a new luxury fashion maison of ready-to-wear clothing, shoes, and accessories. The historic collaboration made Rihanna the first woman to create an original LVMH brand, and Fenty the first LVMH-established fashion house in more than 30 years.
  • Represented LVMH Luxury Ventures, an investment arm of LVMH Moët Hennessy Louis Vuitton SE, aimed at taking minority stakes in emerging, iconic brands, in its equity investment in Gabriela Hearst LLC. Launched by its founder and namesake, Gabriela Hearst, the company is a New-York based luxury ready-to-wear, leather goods, and lifestyle company.
  • Represented Moët Hennessy USA in its acquisition of Woodinville Whiskey Company, LLC.
  • Represented Moët Hennessy USA in connection with the acquisition of a majority interest in Colgin Cellars.
  • Represented LVMH Moët Hennessy in its acquisitions of a majority stake in Off-White LLC, the trademark owner of Virgil Abloh's Off-White brand. LVMH and Virgil Abloh came to an agreement that will give the designer leeway to launch brands and seal partnerships across the full range of the luxury conglomerate's activities, beyond just the fashion division.

Trademark Prosecution & Counseling

  • Counseling, clearing, prosecuting, and developing the strategy for clients’ worldwide trademark portfolios, including for Belvedere Vodka, Woodinville Whiskey, Fresh, Pixi Beauty, and PopBeauty.
  • Advising clients on intellectual property issues in advertising.
  • Advising clients on false advertising and California Legal Remedies Act claims.

Newsroom

Speaking Engagements

  • Loyola University Law School Mediation Seminar - A Practical Approach to a Successful Mediation
  • University of San Diego Law School IP Speaker Series “The Cult of Celebrity: Right of Publicity and False Endorsement
  • University of San Diego Law School, Trademark Litigation: "Damage Experts in Trademark Litigation"
  • AIPLA: Balancing Trademark and Free Speech Rights in Trademark Registration and Enforcement Laws
  • AIPLA: “Daubert-Proofing Your Survey: Best Practices for Survey Evidence in Trademark Infringement and False Advertising Litigation"
  • University of San Diego Law School IP Speaker Series "The Cult of Celebrity: Right of Publicity and False Endorsement"

Recognitions

  • Coordinator of the Year Award, American Intellectual Property Law Association (2023)
  • Super Lawyer, Illinois Super Lawyers (2013-2024)
  • World Trademark Review 1000, The World’s Leading Trademark Professionals (2020-2022)
  • Award of Excellence in Pro Bono Work, Northern District of Illinois (2017)
  • Corporate Woman of Achievement by the National Association of Women Business Owners (NAWBO Chicago Chapter) (2009)

Organizations

  • Intellectual Property Mediator, ADR Systems of America, LLC
  • Member, American Intellectual Property Law Association (AIPLA)
    • Chair, Trademark Litigation Committee (2022-2024)
    • Vice Chair, Trademark Litigation Committee (2020-2022)
    • Liaison, AIPLA Amicus Committee
    • Member, Trademark Law Committee
    • Member, Working Group, Trademark Modernization Act (2020)
    • Member, Working Group on proposed Right of Publicity Legislation
    • Member, Copyright Law Committee
    • Member, Trademark Internet Committee
    • Member, Topics Subcommittee
  • Member, International Trademark Association (INTA) Trademark Mediators Network
    • INTA Member, Bulletins Committee (2018-2019)
    • INTA Member, Trademark Reporter Committee (2014-2017)
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