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Robert M. O'Connell, Jr.

Of Counsel

Boston, MA
617-368-2159
oconnell@fr.com
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Robert M. O'Connell, Jr. Photo

Background

Bob O’Connell devotes his practice to providing comprehensive trademark and copyright strategic advice, prosecution and enforcement for clients across many industries. He helps clients prevent and solve problems involving all aspects of domestic and international trademark law, as well as advertising and competition law and related disciplines. His expertise includes registration and protection of copyrights; clearance and selection of pharmaceutical names; and negotiating and drafting a variety of licensing and technology transfer agreements and other IP-intensive transactions.

Businesses ranging from small start-ups to multi-billion dollar corporations turn to Mr. O’Connell for help developing and implementing cost-effective domestic and global branding and trademark protection plans. They hail from the financial services, food & beverage, and pharmaceutical industries, among others.

Mr. O’Connell’s significant transactional experience includes a trademark and merchandise license agreement for a large resort casino in Las Vegas and a naming rights and sponsorship agreement for a major league sports stadium.

He 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. Noteworthy reported cases include Coach Services, Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600 (TTAB September 17, 2010) affirmed, 668 F.3d 1356 (Fed. Cir. 2012).

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 has served on the editorial board of INTA's scholarly journal, The Trademark Reporter. He has also served as a regional judge and brief-reading 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 has guest-lectured on trademark and copyright law at Boston University Questrom School of Business.

Select Publications

Mr. O’Connell is a 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
October 18, 2017
Distillations: Glass Half Full
Distillations: Glass Half Full
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
September 15, 2017
Distillations: Trapped
Distillations: Trapped
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
August 3, 2017
Distillations: The Gin Game, Southern Style
Distillations: The Gin Game, Southern Style
Author: Robert M. O'Connell, Jr.
Blog
Fish Trademark & Copyright Thoughts Blog
July 31, 2017
Distillations: The Slants Case, Distilled
Distillations: <i>The Slants</i> Case, Distilled
Author: Robert M. O'Connell, Jr.
Blog
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
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"
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