His expertise includes registration and protection of copyrights; clearance and selection of pharmaceutical names; and negotiating and drafting a variety of licensing and technology transfer agreements and other IP-intensive transactions.
Businesses ranging from small start-ups to multi-billion dollar corporations turn to Mr. O’Connell for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, alcohol, 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 agreement 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 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 2021 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. Previously, WTR 1000 reported that Mr. O’Connell “wins effusive praise for his “thoughtful and practical approach.” “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.
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.
Mr. O’Connell was previously a contributing author of a continuing series of blog posts 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.