Bob O’Connell devotes his practice to providing comprehensive trademark and copyright strategic advice, prosecution and enforcement for clients across many industries. He helps clients prevent and solve problems involving all aspects of domestic and international trademark law, as well as advertising and competition law and related disciplines.
His experience includes clearance, registration and protection of trademarks, trade dress and designs; opposition and cancellation proceedings in the TTAB; UDRP and other domain name proceedings; registration and protection of copyrights; negotiation and drafting of a variety of coexistence, licensing and other IP-related agreements; and providing IP support on various M&A and financing transactions, most recently including a groundbreaking series of securitization deals involving music and television rights involving household-name artists.
Businesses ranging from small start-ups to multi-billion-dollar corporations turn to Bob for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, apparel, retail and pharmaceutical industries, among others.
Bob’s significant transactional experience includes a trademark and merchandise license agreement for a large resort casino in Las Vegas, and naming rights and sponsorship agreements for a major league sports stadium and a prominent performing arts center.
He also has extensive commercial litigation and dispute resolution experience in both intellectual property and other matters in state and federal trial and appellate courts, in inter partes and appellate matters before the Trademark Trial & Appeal Board, and in UDRP arbitration proceedings. Noteworthy reported cases include: Coach Services, Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (TTAB September 17, 2010) affirmed, 668 F.3d 1356 (Fed. Cir. 2012).
In the 2023 edition of World Trademark Review 1000, a listing of the world’s top trademark practitioners based on peer and client surveys, Bob received top-tier rankings for trademark prosecution and strategy with clients praising him for his “pragmatism, calmness, under pressure and fine-grained, detailed work product. Previously, WTR 1000 reported that Bob “wins effusive praise for his “pragmatic approach and unparalleled attention to detail.” “Simply stated, he is among the most cost-effective, business-oriented lawyers in any specialty.” “He is of incredible value – he matches anybody on expertise and exceeds most, if not all, on responsiveness and efficiency.” In prior years, WTR 1000 reviewers have said: “He never fails to address domestic and global branding issues quickly and comprehensively, causing one client to profess: ‘He is the only lawyer that I would use for trademark work in the Boston area.’” Bob has been characterized as a “distinguished” and “highly respected practitioner” with “a great reputation” in multinational mandates, who is “a trusted adviser in helping to build value in…brands” and “commands respect” particularly in the strategy and commercial field.” He has been listed in WTR 1000 each year since its inaugural edition in 2011, as well as WTR’s Global Leaders short-list since 2019.
Noteworthy past and present client engagements include:
Mr. O’Connell has guest-lectured on trademark and copyright law at Boston University Questrom School of Business and the Carroll School of Management at Boston College.
Mr. O’Connell was previously a contributing author of a continuing blog on branding topics of interest to the beer, wine and spirits industries.
“Be Ready for the Next Internet Wave: Dot-Bank,” Massachusetts Banker, Fourth Quarter 2014.
“First-Class Protection for Second-Tier Trademarks,” with Molly M. Frankel of Citizens Financial Group, ACC Docket, September 2014.
“A Heady Mix”, article discussing the long-running Havana Club rum dispute, in World Trademark Review, Nov/Dec 2006.
“Building Stronger Brands,” Brands in the Boardroom, 2006.