Leo M. Loughlin
Primary Areas of Practice
"The fulcrum around which the practice turns is enforcement ace Leo Loughlin, an 'immediately responsive, quick and efficient attorney who is a pleasure to partner with.'"
- 2021 World Trademark Review1000: The World's Leading Trademark Professionals
Leo Loughlin has over 20 years of experience assisting clients with registering and protecting trademarks through counseling, prosecution, and litigation. Leo has filed well over 1,000 trademark applications both with the U.S. Patent and Trademark Office (USPTO) and abroad. And thanks to his degree in chemical engineering, he is typically and easily very conversant in the technologies at issue in his matters.
His client base is exceptionally diverse. He counsels both large multinational corporations and startups in industries including fashion, automotive, food and beverage, software, financial services, agricultural equipment, and consumer products. At the most fundamental level, Leo assists clients in developing and protect their brands. On the development side, he assists in searching when a new brand is needed and filing for protection of that name. Once protection is obtained, he further assists the client in maintaining that protection, often through enforcement. This can mean simply sending letters to potential infringers. It can also mean initiating opposition or litigation actions when necessary.
From a more comprehensive perspective, Leo’s role is to help clients make their business profitable. To that end, he strives to operate as a true partner, and focuses on delivering consistent, exemplary client service. This extends from seemingly minor things, such as providing quick answers to small questions without billing, to responding promptly to a client’s inquiry. When a client has a decision to make and seeks Leo’s input, providing it expeditiously, yet carefully, is a fundamental part of how he sees his role. To him, there is no compliment higher than a client telling him he’s part of the team.
As befits a trademark attorney, Leo is also exceptionally detail-oriented. Working with the USPTO is procedurally exceptionally unforgiving. There are countless rules that can trip up applicants. Providing the wrong state of incorporation can, for example, be both an easy and expensive mistake. Leo’s thorough, careful approach ensures that everything is correct, timely, and effective.
Leo is a skilled negotiator, an ability which is augmented by the sheer quantity of his experience. Negotiating with the USPTO is a fundamental aspect of trademark law, and the relationships Leo has built during his two-decade career are a major asset in this regard. As a known, respected entity, he is often able to resolve issues in informal discussions that would take weeks or months through formal processes. He can often anticipate which issues will be of concern to the USPTO, can decipher unstated meanings and implications in office actions, and because he’s known to many examining attorneys, can expedite the process. Effective relationship management is key to getting results. Leo gets results.
Leo represents well-known clients such as fashion powerhouse Valentino, automobile company FCA (Fiat Chrysler), international confectionary company Ferrero, food company Barilla, and pharmaceutical company Geistlich, as well as other clients in the food, automobile, software, pharmaceutical, and agricultural equipment business.
Leo's experience includes:
- Handling trademark portfolio management, including searching, filing, prosecution, and maintenance of trademark applications, as well as monitoring filings by third parties for U.S. and international clients.
- Successfully representing clients in a large number of TTAB actions. For example, Leo represented Lavazza, an Italian coffee company, in a TTAB proceeding in which the Board ruled in favor of Lavazza. Its opposition to registration of Favazza’s for “Bar services; Catering services; Restaurant service” was refused.
- Working closely with foreign trademark associates to file trademark applications for U.S. clients, and managing disputes outside the U.S.
- Obtaining favorable outcomes for clients in numerous trademark infringement and unfair competition cases in Federal District Court.
- Successfully representing clients in patent litigations in Federal District Court and at the ITC.
- Representing clients in appeals of patent cases before the U.S. Court of Appeals for the Federal Circuit.
- Successfully appealing refusals of patent applications before the Patent Trial and Appeal Board (PTAB).
- Handling cybersquatting proceedings under the Uniform Dispute Resolution Procedure (UDRP). Leo has been victorious in over 30 proceedings.
Honors & Recognitions
World Trademark Review 1000 – The World’s Leading Trademark Professionals (WTR 1000) (2019-2023)
Recognized in the D.C. Metro Area in the areas of Enforcement & Litigation and Prosecution & Strategy
- Rothwell Figg and Three Attorneys Ranked Across Two Jurisdictions in 2023 Edition of WTR 1000 - The World's Leading Trademark ProfessionalsAccolades & Honors,
- WTR 1000 – the World’s Leading Trademark Professionals Includes Rothwell Figg and Partner Leo Loughlin in 2022 EditionAccolades & Honors,
- Rothwell Figg and Partner Leo Loughlin Included in 2021 Edition of WTR 1000 - The World's Leading Trademark ProfessionalsAccolades & Honors,
- Accolades & Honors,
- Media Mention,
- Accolades & Honors,
Speaker, “Social Media: Legal Ramifications,” AIPF Annual Meeting October 1, 2012.
Speaker, “Aesthetic Functionality In Trademark Cases,” AIPF Annual Meeting September 20, 2011.
- Event, Singapore, May 16-20, 2023
- Speaking Engagement,
Co-author, "Get Real: Protecting Fictional Brands," World Trademark Review Issue 77, January 2, 2019.
Co-author, “Litigating at the ITC: Caught in a Grey Zone,” World Trademark Review Issue 71, January 2, 2018.
Co-author, “Protecting Company and Trademark Nicknames,” The Intellectual Property Strategist, Volume 8, Number 9, June 2002.
Community & Professional
International Bar Association (IBA)
International Network of Boutique Law Firms (INBLF)
International Trademark Association (INTA)
- Advertising and Marketing
- Alternative Dispute Resolution
- Anti-Counterfeiting Litigation
- Brand Protection
- Copyright Litigation
- Copyright Prosecution
- Customs Trademark and Copyright Recordations and Enforcement
- Design and Trade Dress Counseling
- Domain Names and Website Content
- Due Diligence
- Emerging Companies
- Ex Parte Trademark Expungement and Reexamination
- False Advertising and Unfair Competition Litigation
- FDA Regulatory
- Industrial Designs, Patents, and Trade Dress Infringement
- International Filings
- International Trade Commission (ITC) Litigation
- Patent Litigation
- Patent Prosecution
- Portfolio Management
- Trade Secret Litigation
- Trademark Litigation
- Trademark Oppositions and Cancellations
- Trademark Prosecution
- Trademark Searching and Watching
J.D., Albany Law School (cum laude)
B.S., Chemical Engineering, Manhattan College
Bar & Court Admissions
- District of Columbia
- New York
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the District of Columbia
- U.S. District Court for the Eastern District of Washington
- U.S. District Court for the District of Maryland