Photograph of David S. Fleming

Education

  • Georgetown University School of Foreign Service (1975)
  • Northwestern University, B.A. (1978)
  • University of Illinois College of Law, J.D. (1981)

Admissions

  • Illinois
  • Supreme Court, United States
  • U.S. District Court, Northern District of Illinois, Trial Bar
  • U.S. District Court, Central District of Illinois
  • U.S. Court of Appeals, Seventh Circuit

David S. Fleming

Partner
Chicago
dfleming@crowell.com
Phone: +1 312.321.7734
455 N. Cityfront Plaza Drive
Suite 3600
Chicago, IL 60611

Dave Fleming has 40 years of litigation experience, focusing on intellectual property issues for clients in many different industries. He also advises clients with complex branding, clearance, licensing, due diligence, and similar intellectual property rights issues.

Dave has served in leadership roles in the global trademark community. For example, he has served as counsel to the board of the International Trademark Association, and he also has served INTA on its board of directors and as chair of its annual meeting and other programs. INTA recognized Dave with its President’s Award in 2016. Dave also speaks frequently on trademark issues, and he was a co-author of a trademark book, Trademark Litigation Practice, published by Bloomberg BNA, from 2010 through 2018.

Dave is the managing partner of Crowell & Moring's Chicago office. Prior to joining the firm, he was a shareholder at Brinks Gilson & Lione and served as a member of its board and Executive Committee and as Brinks' General Counsel.



Recognition

  • World Trademark Review 1000, National
    Silver Band, Enforcement & Litigation, 2017–2021 
  • World Trademark Review 1000, Illinois
    Gold Band, Enforcement & Litigation, 2013, 2016–2021 
  • World Trademark Review Global Leaders, 2020
  • International Trademark Association President’s Award, 2016 
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005–2017 
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009–2012, 2014 
  • Who’s Who Legal—Trademarks, 2012, 2014 
  • Leading Lawyer, Computer & Technology Law, 2009 
  • Listed, “Guide To The World’s Leading Trademark Law Practitioners,” Euromoney Legal Media Group, 2002, 2009 
  • University of Illinois Law Review, University of Illinois College of Law


Affiliations

  • International Trademark Association
    Counsel, 2014–2015
    Board of Directors, 2010–2012
    CEO Search Committee, 2011–2013
    Co-Chair, 2011 Advanced Trademark Symposium
    Co-Chair, 2007 Annual Meeting
    Co-Chair, 2004 Trademark Administrators Program
    U.S. Amicus Committee, 2016–present
    Programs Committee, 2007–2011
    Past committee memberships: Trademark Reporter Editorial Board
    Oral argument judge, Saul Lefkowitz Moot Court Competition, Midwest Region, 2008–2018
    Faculty member, INTA Trial Advocacy Program, Chicago, Illinois, July 14–15, 2000 
  • Intellectual Property Law Association of Chicago
    Board of Managers, 2009–2011
    Chair, Creative Achievement Award Committee, 2007–2009
    Chair, Internet Law Committee, 2005–2006 
  • American Bar Association
    Annual Review Vice Chair, Trademark Division, Intellectual Property Law Section, 2010–2011 
  • Richard Linn American Inn of Court
    Mentorship Chair, 2007–2008

Admissions

Admitted to practice: Illinois; Supreme Court of the United States; U.S. District Court for the Northern District of Illinois, Trial Bar; U.S. District Court for the Central District of Illinois; U.S. Court of Appeals for the Seventh Circuit



Representative Engagements

Federal and State Courts

  • Represented sports apparel manufacturer as defendant in trademark infringement action. Summary judgment granted in favor of client, and case subsequently settled in 2016 before appeal. 
  • Represented a consumer products company in a copyright action involving use of music in videos posted on social media sites. Case settled in 2016. 
  • Progressive Casualty Insurance Company v. All Web Leads, Inc., Case No. 1:12-cv-01545-JG (N.D. Ohio). Represented Progressive in trademark infringement suit relating to keyword advertisements. Settled. 
  • eSolar Inc. v eSolar Exchange LLC, Case No. 2:12-cv-04134-MRW (C.D. Cal.). Represented plaintiff in trademark infringement action. Settled. 
  • Dazzlesmile, et al. v. Epic Advertising, et al., Case No. 2:09-cv-01043-PMW (D. Utah). Represented Yahoo!, Inc. in trademark infringement suit relating to keyword advertisements. Settled. 
  • NTN Corporation, et al. v. Mandas, et al., Case No. 2:10-cv-00257-JWS (D. Ariz.). Represented NTN Corporation in trademark infringement suit relating to counterfeit bearings. Settled. 
  • Mary Kay, Inc. v. Yahoo! Inc., Case No. 3:09-cv-01278-M (N.D. Tex.). Represented Yahoo! in trademark infringement suit relating to shortcuts appearing in emails. Settled. 
  • Yahoo! Inc. v. National Football League Players Association, Inc. et al., Case No. 09-cv-01272-PJS-FLN (D. Minn.). Represented Yahoo! Inc. in declaratory judgment action relating to right of publicity and fantasy football game. Settled. 
  • International Information Systems Security Certifications Consortium v. Degraphenreed, et al., Case No. 2:07-cv-1195 (S.D. Ohio). Represented Yahoo! Inc. in trademark infringement dispute. Settled. 
  • Heartbrand Beef, Inc. v. Lobel's of New York, LLC, et al., Case No. 6:08-cv-00062 (S.D. Tex.). Represented Yahoo! Inc., one of the defendants in a trademark infringement dispute. Dismissed. 
  • Trilink Saw Chain, LLC, et al. v. Blount, Inc., et al., Case No. 1:07-CV-0409-CAP (N.D. Ga.). Represented Blount, Inc. in false advertising claim. Settled. 
  • Bernini, Inc. v. Fragrancenet.com, Inc., et al., Case No. CV 06-4829 RGK (C.D. Cal.). Represented Yahoo! Inc. in trademark infringement dispute. Settled. 
  • Munchkin, Inc. v. Wm. Wrigley Jr. Company, Case No. CV 06-6342 PA (C.D. Cal.). Represented Wm. Wrigley Jr. Company in trademark infringement matter. Settled.
  • Children's Memorial Medical Center, Inc. v. Kid's Doc, S.C., et al., Case No. 1:06-cv-05844 (N.D. Ill.). Represented Children's Memorial Medical Center, Inc. in suit alleging trademark infringement. Settled. 
  • JP Enterprises, Inc. v. Yahoo! Inc., et al., Case No. 06-cv-01046-REB-PAC (D. Col.). Represented Yahoo! Inc. in suit alleging trademark infringement. Settled. 
  • Motorola, Inc. v. Razor USA, LLC, Case No. 2198-N (Del. Chancery Ct. 2006). Represented Motorola in declaratory judgment action concerning license agreement. Settled. 
  • Government Employees Insurance Company ("GEICO") v. Google, Inc. and Overture Services, Inc., Case No. 04-CV-507 (E.D. Va.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled. 
  • R. J. Reynolds Tobacco Company, et al. v. Premium Tobacco Stores, Inc., et al., Case No. 99 C 1174 (N. D. Ill.), 462 F.3d 690, (7th Cir. 2006). Gray market case; lead counsel for plaintiffs in trial of trademark claims, secured jury verdict finding, among other things, federal trademark infringement, unfair competition and willful dilution, and awarding $3.5 million in defendant's profits; prejudgment interest later awarded. Affirmed on appeal. 
  • Caterpillar, Inc. v. The Walt Disney Company, Case No. 1:03-cv-01334 (C.D. Ill. 2003). Represented Caterpillar in connection with Disney's use of Caterpillar marks in film George of the Jungle 2. Settled. 
  • Mark Nutritionals, Inc. v. Overture Services, Inc., Case No. SA-02-CA-0086 OG (W.D. Tex.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled. 
  • Mark Nutritionals, Inc. v. AltaVista Company, Case No. SA-02-CA-0087 EP (W.D. Tex.). Represented AltaVista Company, an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled. 
  • PlasmaNet, Inc. v. Overture Services, Inc., Case No. 02 CV 3075 (AGS) (S.D. N.Y.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled. 
  • Robert Novak d/b/a Pets Warehouse, etc. v. Overture Services, Inc., et al., Case No. CB 02 5164 (E.D. N.Y.). Represented Overture Services, Inc., an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademark of plaintiff. Settled. 
  • 800-JR Cigar, Inc. v. GoTo.com, Inc., et al., Case No. 2:00 CV 03179 (D. N.J.). Represented Overture Services, Inc. (formerly GoTo.com, Inc.), an Internet search engine, in trademark infringement suit concerning bidding on search terms that include trademarks of plaintiff. Settled. 
  • Federal Cartridge Co. v. Cyrus, Inc. d/b/a Federal Arms Corp. of Amer., Case No. 00-1569 (D. Minn., Fourth Division). Secured consent judgment on behalf of owner of FEDERAL mark in suit concerning use of name and mark FEDERAL ARMS for firearms. 
  • GoTo.com, Inc. v. The Walt Disney Company, et al., 202 F. 3d 1199, 1207 (9th Cir. 2000). Secured preliminary injunction for GoTo.com, an Internet search engine, in trademark infringement suit concerning use of logo appearing on Web sites and television and in print media. Affirmed on appeal. Case settled for $21.5 million following filing of contempt petition against defendants. 
  • Sargent & Greenleaf, Inc. v. Masco Corporation, et al., Case No. 99-6 (E.D. Ky., Lexington Div. 1999). Secured preliminary injunction for manufacturer of dial and ring locks used on gun safes. Case subsequently settled. 
  • R.J. Reynolds Tobacco Company, et al. v. Allstate Cigarette Distributors, Inc., et al., Case No. 99-348-CIV-T-25F (M.D. Fla., Tampa Div.). Secured consent judgments against various defendants in gray market cigarettes case. 
  • Motorola, Inc. v. Fonorola Corporation, Case No. 97 CV 9157 (RPP) (S.D. N.Y.). Trademark infringement action to prevent use of FONOROLA trademark for use with telephone services. Settled. 

Trademark Trial and Appeal Board Matters

  • Jonathan Drew, Inc. v. GMB, Inc., Opposition No. 91183057 (TTAB). Represented applicant for mark CAMEL CRUSH. Settled.
  • Danjaq, LLC v. Jason & Jean Products, Inc., Opposition No. 120,980 (TTAB). Represented owner of JAMES BOND and 007 service marks in opposition to application for registration of mark 007 HAIR WEAVING BOND. Summary judgment granted in favor of client. 
  • Danjaq, LLC v. Jason & Jean Products, Inc., Cancellation No. 31,532 (TTAB). Represented owner of JAMES BOND and 007 service marks in cancellation proceeding concerning registration of mark 007 WEAVING BOND. Summary judgment granted in favor of client. 
  • Wm. Wrigley Jr. Company v. Lotte Co., Ltd., Opposition No. 115,237 (TTAB). Opposition to application for registration of mark LOTTE SPEAR MAX. Settled. 
  • Wm. Wrigley Jr. Company v. Lotte Co., Ltd., Opposition No. 115,236 (TTAB). Opposition to application for registration of mark LOTTE JUICY MAX. Settled. 
  • Danjaq, LLC v. LVIII Group, LLC, Opposition No. 113,226 (TTAB). Represented owner of JAMES BOND and 007 service marks in opposition against application to register mark CLUB 007—A GENTLEMAN'S CLUB. Opposition sustained May 12, 1999. 
  • Danjaq, LLC v. Double-O-Seven, Ltd., Cancellation No. 28, 013 (TTAB). Represented owner of JAMES BOND and 007 service marks in cancellation proceeding concerning registration of mark DOUBLE-OH-SEVEN, LTD. & Design. Cancellation granted August 16, 1999. 
  • Navistar International Transportation Corp. v. Mack Trucks, Inc., Opposition No. 107,707 (TTAB). Opposition proceeding filed in 1997 against application to register truck grill design. Settled.


Publications

  • Trademark Litigation Practice (Bloomberg BNA) (2010 (Supplements through 2017)). Author: David S. Fleming
  • Trademark Litigation Practice (Bloomberg BNA) (2010 (Supplements through 2017)). Author: David S. Fleming
  • ""TTAB sustains opposition based on likelihood of dilution by blurring," Globe Business Publishing," World Trademark Review (July 12, 2010). Author: David S. Fleming
  • "La Cafeti?re Can Continue Selling its Coffee Makers, Says Court," World Trademark Review Daily (May 5, 2009). Author: David S. Fleming
  • "A Closer Look at Rescuecom v. Google," Law360 (April 8, 2009). Author: David S. Fleming
  • "Rescuecom and Keyword Advertising Issues," Law360 (April 2, 2009). Author: David S. Fleming
  • "Keyword Advertising Remains Unsettled," Landslide (November/December 2008). Author: David S. Fleming
  • "Win Some, Lose Some," World Trademark Review (September/October 2008). Author: David S. Fleming
  • "Jury Awards Over $300 million for "Adidas-inspired" Running Shoes," World Trademark Report (July 29, 2008). Author: David S. Fleming
  • eBay Defeats Tiffany's Counterfeit Sales Suit (July 18, 2008). Author: David S. Fleming
  • Ninth Circuit Rejects "Trademark Disparagement" Claim (October 26, 2007). Author: David S. Fleming
  • "Perfect 10 strikes out over DMCA and CDA claims," World Trademark Law Report (April 27, 2007). Author: David S. Fleming
  • "Cost-effective strategies for resolving US trademark litigation," World Trademark Review (March/April 2007). Author: David S. Fleming
  • "Ninth Circuit Heightens DMCA Notice Requirement and Clarifies CDA Immunity," Journal of Intellectual Property Law & Practice (March 2007). Author: David S. Fleming
  • "audisport.com Cybersquatter Hit with Exceptional Fees," World Trademark Law Report (February 27, 2007). Author: David S. Fleming
  • "No rescue for "keying" complaint against Google," World Trademark Law Report (October 19, 2006). Author: David S. Fleming
  • "Major League Baseball Right of Publicity Case Strikes Out," World Trademark Law Report (September 19, 2006). Author: David S. Fleming
  • "Recognizing Initial Interest Confusion," National Law Journal (May 8, 2006). Author: David S. Fleming
  • "Fifth Circuit Rules That Inconclusive Trademark Settlement Is Crackers," World Trademark Law Report (April 13, 2006). Author: David S. Fleming
  • "Initial Interest Confusion Likely from Metatag and "Keying" Use," World Trademark Law Report (March 27, 2006). Author: David S. Fleming
  • "Evolution of Nominative Fair Use - From Ninth to Third," World Trademark Law Report (March 22, 2006). Author: David S. Fleming
  • "Third Circuit Adopts Nominative Fair Use Defense," The National Law Journal (January 23, 2006). Authors: David S. Fleming and Howard Michael
  • "Nominative Fair Use Defense Recognized by Third Circuit," World Trademark Law Report (October 31, 2005). Author: David S. Fleming
  • "Transparent Container Clearly Functional," World Trademark Law Report (September 1, 2005). Author: David S. Fleming
  • "Second Circuit Finds No Trademark "Use" in WhenU Pop-up Ads," World Trademark Law Report (July 5, 2005). Author: David S. Fleming
  • "US House Seeks to Close Anti-Counterfeiting Loophole," World Trademark Law Report (June 23, 2005). Author: David S. Fleming
  • "Second Circuit Reignites US Company's Rights in COHIBA Mark," World Trademark Law Report (April 14, 2005). Author: David S. Fleming
  • "Fraudulent Online Identity Sanctions Act Implemented," World Trademark Law Report (February 10, 2005). Author: David S. Fleming
  • "Bad-Faith Renewal Insufficient to Win Back "dinkybomb.com"" World Trademark Law Report (September 1, 2004). Author: David S. Fleming
  • "WhenU Pops Up with Another Victory," World Trademark Law Report (January 14, 2004). Author: David S. Fleming
  • "Tenerife Government Fails in Bid for "tenerife.info"" World Trademark Law Report (October 17, 2003). Author: David S. Fleming
  • "Transfer of "eurailpass.biz" and "eurailpasses.biz" Passed Up by WIPO Panelist," World Trademark Law Report (September 29, 2003). Author: David S. Fleming
  • "Honeywell's Circular Shape Mark Given the Cold Shoulder," World Trademark Law Report (August 1, 2003). Author: David S. Fleming
  • "Taxing "Nominative Fair-Use" Issue Forces District Court to Think Again," World Trademark Law Report (June 19, 2003). Author: David S. Fleming
  • "Virginia Dismisses Falwell's Cybersquatting Suit," World Trademark Law Report (May 22, 2003). Author: David S. Fleming
  • "Baby Bell Company Loses Fight for "ebell" Domain Names," World Trademark Law Report (January 16, 2003). Author: David S. Fleming
  • "Seventh Circuit Overturns Beanie Baby Dilution Decision," World Trademark Law Report (December 12, 2002). Author: David S. Fleming
  • "Copyright Law in the Digital Age," Business, Law and the Internet: Essential Guidance for You, Your Clients and Your Firm (ICLE) (2002). Author: David S. Fleming
  • "IP: Trademarks/Unfair Trade Practice," Business, Law and the Internet: Essential Guidance For You, Your Clients and Your Firm (ICLE) (2002). Author: David S. Fleming
  • ""Wal-Mart Puts Pressure On Trade Dress Owners," pp. 14-18." Managing Intellectual Property (May 2000). Author: David S. Fleming
  • "Is U.S. Advertising Of Foreign Services ?Use In Commerce'?" Intellectual Property Worldwide (November/December 1998). Author: David S. Fleming
  • "Intellectual Property Insurance," Managing Intellectual Property (May 1998). Author: David S. Fleming
  • Co-Author, Note, 84 620-621, reviewing article entitled "Lever Bros. v. United States and the Legality of Gray Market Imports: A New Shield for United States Trademark Owners in Transnational Markets." (September/October 1994). Author: David S. Fleming


Client Alerts & Newsletters



Media Mentions