Thomas C. McDonough - Neal, Gerber & Eisenberg LLP

Thomas C. McDonough

Listed in Best Lawyers since 2013

As a registered patent attorney, Thomas C. McDonough represents and counsels individuals and corporations on intellectual property issues, including patent filings, patent, trademark and copyright infringement matters, and foreign and domestic trademark protection. Tom also has significant experience in licensing matters, including drafting and negotiating software licenses, patent and trademark licenses and transfers and confidentiality agreements. He has been heavily involved in all aspects of intellectual property litigation, including patent, trademark, trade dress and copyright infringement actions.

Tom has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications. His particular focus has related to hydraulic drive systems, transaxles, pumps, motors and related control systems, differentials and gearing systems, vehicle engines, rail transportation equipment, automotive components and systems, snow throwers, agricultural equipment, and kitchen and household products.

Tom is recognized as a leader in the 2009 and 2010 editions of Chambers USA: America’s Leading Lawyers for Business (recommended in “Intellectual Property”). He is AV Peer Review rated via the Martindale-Hubbell Peer Review Ratings. Tom is recognized as a “client service leader” in the BTI Client Service All-Stars 2010 report (within “Intellectual Property”). Tom earned his B.S., with honors, in General Engineering from the University of Illinois at Urbana-Champaign. He received his J.D., with honors, from University of Wisconsin Law School where he was elected to the Order of the Coif.

Tom is a member of Neal Gerber Eisenberg’s Pro Bono Committee, Diversity and Inclusion Committee, and Associate Review Committee.

Additional Information

Court Admissions U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin
  • Experience — Won summary judgment in a trademark and copyright case for a ball bearing manufacturer in Federal Court in Connecticut. The plaintiff’s trademark claims were found to be barred by laches and the allegedly copied materials were found not protectable under copyright. This decision was affirmed by the Second Circuit Court of Appeals.
  • Was lead counsel in a successful patent interference proceeding at the Board of Patent Appeals and Interferences, where the client was able to invalidate a competitor’s patent. This victory was affirmed by the Court of Appeals for the Federal Circuit.
  • Pivot Point Int’l Inc. v. Charlene Products, Inc., 372 F.3d. 913 (7th Cir. 2005) - represented the plaintiff in one of the leading decisions on the issue of conceptual separability under copyright law where our client’s copyright on a mannequin head was upheld.
  • „Obtained and enforced an ex parte seizure with the United States Marshals against an individual creating and distributing counterfeit diamond certification forms.
  • Represented the plaintiff in a case involving eight patents on hydraulic pump technology; case was favorably settled.
  • Represented a major cell phone manufacturer in a patent case involving camera phones; case was favorably settled.
  • Represented a manufacturer as declaratory judgment plaintiff in a patent case involving truck technology. Case was favorably settled after we prevailed on a key claim construction issue.
    University of Illinois at Urbana–ChampaignBS 1985University of Wisconsin–MadisonJ.D. 1988

    Client Comments

    "Tom is a highly experienced, competent, reliable, cost-effective, and responsive attorney. He has impeccable technical knowledge, business judgment, and personal integrity."

    -Bruce Beatus
    Credit Argricole Asset Management Alternative Investments

    Office Location

    Two North LaSalle Street, Suite 1700
    Chicago, IL 60602-3801
    United States

    Practice Areas

    Trademark Law