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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, and the Pharmaceutical Trade Marks Group.

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.

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

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
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
News
January 25, 2017
Fish & Richardson Named Top Trademark Law Firm for Seventh Straight Year by World Trademark Review
Press Release
Media Mention
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
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
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.
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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