Kelley Drye

Attorneys & Professionals 

Paul R. Garcia

Partner Email vCard
Chicago
Phone: (312) 857-7099
Fax: (312) 857-7095
Stamford
Phone: (203) 351-8014
Fax: (203) 327-2669

Paul R. Garcia is a partner who focuses his practice in the trial and appeal of trademark, false advertising, trade dress, trade secret, unfair competition, copyright, and patent matters. Mr. Garcia, a former Assistant U.S. Attorney, has substantial experience as lead counsel in jury and bench trials and in seeking and defending against motions for preliminary injunction and TROs. Mr. Garcia is an experienced appellate litigator who has successfully briefed and argued numerous appeals, including in “bet-the-company” cases. Litigants have selected Mr. Garcia to serve as an arbitrator in intellectual property matters. Mr. Garcia also has had great success in proceedings before the International Trade Commission.

The Legal 500 notes that Mr. Garcia “is a recurrent name on clients’ lips due to his wide trial experience and his reputation as a ‘top-notch lawyer.’” Mr. Garcia is regularly recognized as a “Super Lawyer” in the area of intellectual property law, is listed in the Guide to the World’s Leading Trade Mark Law Practitioners, and has been selected by his peers as a “Leading Lawyer” in the areas of Advertising and Intellectual Property Law. Mr. Garcia is a “Master of the Court” in the Richard Linn Inn of Courts and, in 2007, was elected to the prestigious American Law Institute.

Mr. Garcia is dedicated to pro bono service and regularly represents indigent federal criminal defendants in their direct appeals. See, e.g., United States v. Turner, 594 F.3d. 946 (7th Cir. 2010) (obtaining new trial for defendant whose Sixth Amendment right to counsel was violated); United States v. Washington et. al., 622 F.3d. 658 (7th Cir. 2010) (obtaining new trial for defendant whose constitutional right to an impartial jury was violated); United States v. Berry, 565 F.3d 385, 387 (7th Cir. 2009) (noting the defendant’s representation by “top-notch lawyer” Paul Garcia).

From 1996 to 2000, Mr. Garcia was an Assistant U.S. Attorney in the Criminal Division of the U.S. Attorney’s Office for the Northern District of Illinois. As an AUSA, Mr. Garcia investigated and prosecuted a wide range of federal crimes, including “white collar” fraud, computer hacking, theft of trade secret, political corruption, and various other offenses. Mr. Garcia tried many cases to verdict in jury and bench trials and briefed and argues many cases in the U.S. Court of Appeals for the Seventh Circuit.

Representative Experience
Trademark Cases
  • Successfully defended a capital investment firm against charges that its expanded use of a trademark into new areas of service infringed the alleged senior user’s rights.
  • Successfully defended an investment management company against charges of trademark infringement based on the alleged expansion into the plaintiff’s space.
  • Successfully enforced the trademark rights of a manufacturer of health care products against infringement by a company selling related goods.
  • Successfully represented a public interest organization pro bono in its efforts to preclude a junior user from using an identical acronym and a similar trademark in connection with legal services.
  • Successfully defended a company’s use of “Fresh-Top Canister” on its tobacco product against claims of trademark infringement. Top Tobacco v. North Atlantic Operating Co. 2007 WL 118527 (N.D. Ill. Jan. 4, 2007). Successfully moved for a determination of the case as “exceptional,” 2007 WL 1149220 (N.D. Ill. April 17, 2007), and obtained an award of over $1,000,000 in attorneys’ fees and costs, 2007 WL 2688452 (Sept. 6, 2007). The Seventh Circuit affirmed on the merits, 509 F.3d 380 (7th Cir. 2007), and the parties settled on confidential terms before the fee appeal was heard.
  • Successfully defended a food manufacturer in an action in which a competitor claimed trademark rights in “brick oven” for use in connection with frozen pizza and challenged the client’s use of “brick oven style” in connection with its own frozen pizza. Schwan’s v. Kraft Pizza Company 379 F.Supp. 2d 1016 (D. Minn. 2005), affirmed 460 F.3d 971 (8th Cir. 2006).
  • Successfully represented the debtor in its effort to reject as “executory” under the Bankruptcy Code a trademark license for a competitor to use a key trademark in connection with industrial battery products. In re Exide Technologies et. al., 340 B.R. 222 (D. Del. 2006).  (Represented by different counsel, the decision was later reversed by the court of appeals.)
False Advertising Cases
  • Successfully defended a manufacturer of industrial products against allegations of false advertising by a major competitor.
  • Successfully defended a department store against allegations of false advertising concerning sales of figurines by a well-known designer.
  • Successfully defended a manufacturer of medical supplies against allegations of false advertising, tortious interference, and defamation.
  • Successfully defended a manufacturer of dental impression materials in a false advertising case.
  • Successfully defended a tobacco company in a false advertising, unfair competition, and defamation case. Republic Tobacco v. North Atlantic Operating Co. 2007 WL 1424093 (N.D. Ill. May 10, 2007).
Trade Dress Cases
  • Defend national retailor against charges of trade dress, utility patent, and design patent infringement relating to barbecue grill.
  • Successfully defended an SUV manufacturer against allegations of trade dress infringement based on a grille design. The denial of a preliminary injunction was affirmed on appeal. On remand, the district court dismissed the case on summary judgment.
  • Successfully defended a provider of financial services against claims of trade dress infringement by an Internet bank.
  • Successfully defended a coffee company against allegations of trade dress and design patent infringement concerning a coffee press.
  • Successfully represented a medical supply manufacturer in the enforcement of rights in its logo.
  • Successfully defended a manufacturer of snowmobiles against a claim of trade dress infringement based on color
Trade Secret/Former Employee Cases
  • Obtained a TRO on behalf of a filtration company against a former employee alleged to have taken trade secrets and confidential information.
  • Obtained a TRO on behalf of a snack food manufacturer against a former employee alleged to taken trade secrets when he joined a competitor.
  • Defended a hedge fund against allegations of trade secret misappropriation by a provider of stock advising services.
Utility & Design Patent Cases
  • Defend national retailor against charges of utility patent, design patent, and trade dress infringement relating to barbecue grill.
  • Successfully enforced rights in a patent for cured and curable silicone prepolymer compositions, including certain ones related to dental impression materials.
  • Successfully defended a manufacturer of valves for food product containers against allegations of patent infringement.
  • Successfully defended a manufacturer of filters in a patent infringement case.
Expedited Remedy Cases
  • Successfully defended a pharmaceutical company in a false advertising case in which the plaintiff sought a TRO based on an alleged misstatement on the product’s label concerning its ingredients.
  • Successfully defended a satellite television provider against a cable company’s request for a TRO to stop certain sports television advertisements because of alleged false and misleading statements.
  • Obtained a TRO on behalf of a potato chip company because of a competitor’s misleading superiority claims based on a faulty taste test survey. The case was widely reported in the local and national press, including in The Wall Street Journal.
  • Successfully defended an SUV manufacturer against a competitor’s motion to preliminarily enjoin the use of a grille design. The denial of the preliminary injunction was affirmed on appeal.
  • Successfully dissolved a TRO that a telephone manufacturer had obtained ex parte against a nationwide reseller of electronics based on allegations of copyright and trademark infringement.
  • Successfully defended a barbecue potato chip manufacturer against a motion for preliminary injunction by a barbecue sauce company alleging trademark infringement.
Appellate Cases
  • Successfully defended a breach of contract and fraud verdict after a two-week bench trial. Metavante v. Emigrant, 619 F.3d 748 (7th Cir. 2010). Successfully opposed the petition for certiorari.
  • Successfully defended an award of summary judgment in a trademark case. Top Tobacco v. North Atlantic Operating Co., 509 F.3d 380 (7th Cir. 2007).
  • Successfully defended an award of summary judgment in a trademark case. Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006).
  • Obtained a new trial pro bono for a defendant whose Sixth Amendment right to counsel was violated. United States v. Turner, 594 F.3d. 946 (7th Cir. 2010).
  • Obtained a new trial for a defendant whose constitutional right to an impartial jury was violated. United States v. Washington et. al., 622 F.3d. 658 (7th Cir. 2010).
Internet Cases
  • Successfully enforced a website owner’s rights under the Computer Fraud and Abuse Act based on a competitors unauthorized use of website materials.
  • Successfully defended a provider of financial services in a case brought by an Internet bank alleging infringement of a logo design.
  • Successfully defended a provider of Internet banking services against allegations of fraud and breach of contract.
Commercial Litigation Cases
  • Represented a provider of outsourcing services in its affirmative contract claims and in defense of tort counterclaims alleging over $250 million in damages. After a two-week bench trial, the court ordered judgment in the client’s favor for over $15 million, rejected the counterclaims in their entirety, and awarded the client $10 million in attorneys’ fees and costs. After successfully defending the verdict on appeal, the district court awarded over $1 million in post-trial and appellate fees and costs.
  • Successfully defended an auto manufacturer against a putative class action alleging race discrimination.
  • Successfully defended a manufacturer of tape and related products against allegations of breach of a license agreement.
Memberships & Associations

Trial Bar, U.S. District Court for the Northern District of Illinois
Elected Member of the American Law Institute (ALI)
Master of the Court, Richard Linn Inn of Courts (Chicago, IL)
International Trademark Association (INTA)
Editorial Board, The Trademark Reporter
Hispanic Lawyers Association of Illinois
Hispanic National Bar Association
Mexican American Legal Defense & Education Fund (MALDEF)

Community Activities

Secretary & Treasurer, St. Thomas’s Day School Foundation, Inc.

Mentor, LINK Unlimited, an organization that provides educational college preparatory opportunities for economically disadvantaged African American high school youth.  www.linkunlimited.org

Honors & Awards

Selected as one of The Best Lawyers in America in Trademark Litigation
Selected as Leading Trademark Attorney by World Trademark Review
Selected by peers as “Super Lawyer” in Trademark Litigation
Selected by peers as “Leading Lawyer” in Trademark Litigation
Recognized in US Legal 500 in Marketing & Advertising

Pro Bono

Mr. Garcia regularly represents indigent criminal defendants in their direct appeals to the U.S. Court of Appeals for the Seventh Circuit.

Successfully defended, pro bono, a former college basketball player accused by the university’s former assistant basketball coach of making defamatory statements concerning alleged payments by that coach to college recruits.

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