Jennifer M. Mikulina is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Chicago office. She focuses her practice on trademark and copyright counseling, prosecution, licensing and litigation.
Jennifer specializes in trademark counseling for clients in a wide variety of industries, including consumer electronics, semiconductors, healthcare services, hospitality/restaurant services, on-line services, and video games. She works with domestic and international companies to register, maintain, protect and license trademarks, service marks, domain names, and trade names, and assists her clients with the development and implementation of international brand management and enforcement programs. Jennifer also assists clients with copyright matters pertaining to various works of authorship, including print publications, software, multimedia presentations, web pages and online databases.
Jennifer has developed and negotiated intellectual property issues in complex commercial transactions, strategic alliances, mergers and acquisitions, and license arrangements for public and privately held companies in various industries. She also frequently assists with the intellectual property aspects of corporate transactions, including financings, joint ventures, and mergers and acquisitions.
Her litigation experience includes cases in the areas of trademark, trade dress, unfair competition, trade secret, copyright and patent law. Jennifer has represented clients in disputes involving computer software, consumer services, consumer products, electronics, medical devices, transaction cards and apparel construction.
Jennifer is currently co-chair of the Chicago Pro Bono & Community Service Committee. She provides pro bono services to a variety of clients and is a member of the Board of Directors for WITS (Working in the Schools) and Lawyers for the Creative Arts. In addition, Jennifer received the McDermott Will & Emery Award for Outstanding Commitment and Service to the Community in 2006.
Jennifer received her B.S., with honors, in international relations, economics and political science. She is admitted to practice in Illinois and before the Federal District Courts for the Northern District of Illinois. While in law school, Jennifer was an intern for the Honorable Barbara B. Crabb, Chief U.S. District Court Judge for the Western District of Wisconsin.
Jennifer is a member of the American Bar Association, International Trademark Association (INTA), and Chicago Bar Association. She is also a member of the editorial board for the Annual Review of Intellectual Property Law Developments, published by the ABA Section of Intellectual Property Law.
Representative Experience
Advisory/Counseling Experience
- Counseled companies in the selection, clearance and protection of trademarks in the U.S. and abroad
- Worked with clients and U.S. Customs and Border Protection Officers on the seizure of counterfeit goods
- Represented clients in connection with Business Software Alliance (BSA) software license compliance audits
- Advised clients on intellectual property aspects of corporate transactions including due diligence, management, transfer and licensing of intellectual property rights
- Represented clients in trademark opposition and cancellation proceedings before the Trademark Trial & Appeal Board of the U.S. Patent and Trademark Office
Litigation Experience
- Represented a consumer goods company in a trademark infringement, unfair competition, deceptive trade practices, counterfeiting and design infringement lawsuit against a major retailer for sales of unauthorized and defective goods
- Defended a consumer services company in trademark infringement litigation regarding company name used in over 2,000 stores across the United States
- Defended a consumer products company in copyright infringement litigation in federal court regarding photographs used in electronic advertising materials
- Represented clients in the health care, toy, nonprofit and hospitality sectors in arbitration proceedings in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN)
Education
- University of Wisconsin Law School, J.D., 2001
- University of Wisconsin - Madison, B.S. (with honors), 1998
