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Robert M. O'Connell, Jr.

Of Counsel

Boston, MA
617-368-2159
oconnell@fr.com
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Background

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and protection of copyrights; advising on proper trademark and copyright usage and protection on the Internet; clearance and selection of pharmaceutical names; negotiating and drafting a variety of licensing and technology transfer agreements; and other IP-intensive transactions.

Mr. O’Connell has experience in developing and implementing cost-effective domestic and global branding and trademark protection plans for businesses ranging from small start-ups to multi-billion dollar corporations, with particular expertise in the financial services, food and pharmaceutical industries.

Significant transactional experience has included a trademark and merchandise license agreement for a major Las Vegas casino and a naming rights and sponsorship agreement for a major sports stadium.

Mr. O’Connell also has extensive commercial litigation and dispute resolution experience in both intellectual property and other matters in state and federal courts, and in inter partes and appellate matters before the Trademark Trial & Appeal Board

Education

J.D., Boston College Law School 1991
Editor, Boston College Law Review
cum laude


B.A., Williams College 1987
Classics, Political Science

Admissions

  • Massachusetts 1991
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the First Circuit
  • U.S. District Court for the District of Massachusetts

Memberships & Affiliations

​Mr. O'Connell is active in the International Trademark Association (INTA) and serves on the editorial board of INTA's scholarly journal, The Trademark Reporter.  He has also served as a regional judge for the INTA Saul Lefkowitz National Moot Court Competition.  He is a member of the Boston and Massachusetts Bar Associations.

Other Distinctions

Awards
The 2016 World Trademark Review 1000, a listing of the world’s top trademark practitioners, based on peer and client surveys, states "Mr. O’Connell boasts "a great reputation" in multinational mandates and has just completed a major rebrand for a famous wealth management business."​ The 2015 World Trademark Review 1000, identified Mr. O’Connell as a leading trademark attorney, and one of the top 10 in the Boston market for trademark prosecution and strategy, characterizing Mr. O’Connell as a "distinguished" and "highly respected practitioner" who is "a trusted adviser in helping to build value in…brands" and "commands respect" particularly in the strategy and commercial field." Mr. O’Connell has been listed in World Trademark Review 1000 since its inaugural edition in 2011.

Select Publications
"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, Citizens Financial Group, ACC Docket, September 2014.

"A Heady Mix", World Trademark Review, Nov/Dec 2006

"Building Stronger Brands", Brands in the Boardroom, 2006 ed.

What's trending with Bob

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Fish Trademark & Copyright Thoughts Blog
July 20, 2016
Half-baked Specimens Doom HERBAL ACCESS Application at TTAB
Half-baked Specimens Doom HERBAL ACCESS Application at TTAB
Authors: John P. McCormick, Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
October 17, 2016
It’s All Academic – Higher Education Trademark Disputes Offer Practical Lessons
It’s All Academic – Higher Education Trademark Disputes Offer Practical Lessons
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
October 19, 2015
Rare TTAB §2(d) Reversal Where Examiner Failed to Heed Rules of Evidence
Stopping the Launch at Risk: In re Cyclobenzaprine
Author: Robert M. O'Connell, Jr.
Fish Trademark & Copyright Thoughts Blog
September 10, 2015
Costco Eats Crow for Its Breakfast at Tiffany’s
Costco Eats Crow for Its Breakfast at Tiffany’s
Author: Robert M. O'Connell, Jr.
News
April 16, 2015
Be Ready for the Next Internet Wave: Dot-Bank
Articles
Fish Trademark & Copyright Thoughts Blog
April 6, 2015
Proposed New .Sucks Top Level Domain: The Plot Thickens
Proposed New .Sucks Top Level Domain: The Plot Thickens
Author: Robert M. O'Connell, Jr.
Fish Trademark & Copyright Thoughts Blog
March 16, 2015
Tips for Building—and Keeping—a Strong Brand
Tips for Building—and Keeping—a Strong Brand
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
March 2, 2015
Redskins Call Blitz in District Court, Seek to Sack Claims on Constitutional Grounds
Redskins Call Blitz in District Court, Seek to Sack Claims on Constitutional Grounds
Author: Robert M. O'Connell, Jr.
Blog
News
January 29, 2015
Fish & Richardson Named Top Trademark Law Firm for Fifth Straight Year by World Trademark Review
Press Releases
Fish Trademark & Copyright Thoughts Blog
January 23, 2015
Local School Feels Sting of Trademark Law
Local School Feels Sting of Trademark Law
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
January 20, 2015
CAFC Carves Up TTAB for Geographic Descriptiveness Refusal of NEWBRIDGE HOME
CAFC Carves Up TTAB for Geographic Descriptiveness Refusal of NEWBRIDGE HOME
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
January 9, 2015
Beware of New "WIPO" Trademark Fee Scam
Beware of New
Authors: Robert M. O'Connell, Jr., Cynthia Johnson Walden
Blog
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