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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 large Las Vegas resort 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, in inter partes and appellate matters before the Trademark Trial & Appeal Board, and in UDRP arbitration proceedings.

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 served 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, and the Pharmaceutical Trade Marks Group.

Other Distinctions

Awards
In the 2017 World Trademark Review 1000, a listing of the world’s top trademark practitioners based on peer and client surveys, Mr. O’Connell received top tier rankings for trademark prosecution and strategy.  WTR 1000 states that Mr. O’Connell “wins “unequivocal endorsement” from clients for his measured, cost-sensitive advice. 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.’” He 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.” Mr. O’Connell has been listed in World Trademark Review 1000 each year since its inaugural edition in 2011.

Mr. O’Connell recently guest-lectured on trademark and copyright law at Boston University Questrom School of Business.

Select Publications

Regular contributor to Fish’s Trademark & Copyright Thoughts Blog, including the “Distillations” series on 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, 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
June 21, 2017
Distillations: Redemption Song, or, Number One with a Bulleit
Distillations: Redemption Song, or, Number One with a Bulleit
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
June 13, 2017
Distillations: The Blair Wine Project
Distillations: The Blair Wine Project
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
June 5, 2017
Distillations: Two Ships Passing Not So Quietly in the Night
Distillations: Two Ships Passing Not So Quietly in the Night
Authors: John P. McCormick, Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
June 1, 2017
Distillations: Respect Thy Neighbor (on the Shelf)
Distillations: Respect Thy Neighbor (on the Shelf)
Authors: John P. McCormick, Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
April 11, 2017
Distillations: Madonna is Not Impressed
Distillations: Madonna is Not Impressed
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
April 6, 2017
Distillations: A Rum Thing
Distillations: A Rum Thing
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
March 30, 2017
Distillations: ALERT: Skull Crushing Victory
Distillations: ALERT: Skull Crushing Victory
Authors: Nancy Ly, John P. McCormick, Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
March 28, 2017
Distillations: A Place Where Everybody Knows Your Name
Distillations: A Place Where Everybody Knows Your Name
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
March 23, 2017
Distillations: A Toast to Champagne
Distillations: A Toast to Champagne
Authors: John P. McCormick, Robert M. O'Connell, Jr.
Blog
Event
March 1st, 2017 | 1:00 pm EST
Webinar: TTAB Update: New Rule Changes, Practice Tips and Recent Notable Cases
Webinar: TTAB Update: New Rule Changes, Practice Tips and Recent Notable Cases
Webinar
Event
January 28th, 2015 | 12:00 pm EST
INTA Roundtable "Decisions You Need To Know: Key Trademark Cases from 2014"
Event
November 12th, 2013
2013 International Trademark Association (INTA) Leadership Meeting
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