Trademark Law
Thomas C. "Tom" McDonough
Recognized in Best Lawyers since 2013 Awarded Practice Areas
Biography
Tom is a registered patent attorney who develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licenses, patent and trademark licenses and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical intellectual property components. He also regularly performs thorough product clearance searches on behalf of clients. Tom represents clients in all aspects of intellectual property disputes, with an emphasis on patent, trademark, trade dress and copyright infringement litigation.
Tom has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications with a particular focus on 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.
Clients appreciate Tom’s aptitude for understanding their businesses and goals, and for finding efficient, cost-effective strategies for developing and protecting their intellectual property. His experience in all aspects of intellectual property law enables him to provide a comprehensive understanding of the issues involved in each project.
He is an active volunteer and also serves as a member of the Board of Directors for Lawyers for the Creative Arts, an organization that provides pro bono legal services to low income artists and arts organizations.
Tom has been selected for inclusion in the the Intellectual Asset Management’s (IAM) Patent 1000 in Prosecution since 2023. He has also been recognized by the World Trademark Review 1000 for “Trademark Prosecution and Strategy” since 2022 and recommended by The Legal 500 United States in “Trademark Litigation” since 2021. Tom was also recognized as a leader in the 2009 and 2010 editions of Chambers USA: America’s Leading Lawyers for Business in “Intellectual Property.”
Overview
- University of Wisconsin–Madison, J.D., graduated 1988
- University of Illinois at Urbana–Champaign, B.S., graduated 1985
- Illinois, Illinois State Bar Association
- 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
- U.S. Department of Commerce - Patent and Trademark Office
- Illinois, Illinois State Bar Association
- University of Wisconsin–Madison, J.D., graduated 1988
- University of Illinois at Urbana–Champaign, B.S., graduated 1985
- 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
- U.S. Department of Commerce - Patent and Trademark Office
Client Testimonials
Awards & Focus
Recognized in The Best Lawyers in America® 2026 for work in:
- Trademark Law
Additional Areas of Practice:
- Copyright Law
- Litigation - Intellectual Property
- Litigation - Patent
- Patent Law
- Transportation Law
News & Media
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.
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