Ronald DiCerbo

(The following information was supplied by the firm)

Shareholder

Ron DiCerbo is a Shareholder at McAndrews and has been active in all aspects of the firm’s intellectual property practice. This includes patent, trademark and copyright prosecution and litigation; managing intellectual property portfolios; unfair competition; licensing; trademark oppositions and cancellations; and product development and acquisition. His primary focus is on trademark and design rights, both in the U.S. and internationally.

Based on over twenty years of experience, Ron guides clients through the selection, protection and enforcement of trademark and design rights.  More specifically, he helps clients evaluate and assess the risk associated with the adoption and use of a trademark or design in the U.S. or worldwide.  Next, utilizing unique knowledge of international trademark laws, he works with the client to develop a strategy for obtaining design patent, trademark, and/or copyright protection for a trademark or design.  By completing those first two steps, clients are in an advantageous position to protect their intellectual property rights.

For both small and large clients, Ron provides litigation and counseling services in a diverse range of industries. He currently represents clients in the fields of apparel, automotive products, chemical compositions and processes, children’s products, cell phones and accessories, computer software, consumer electronics and accessories, consumer retail products, electronic data systems, electronic learning devices, entertainment services, eyewear, fashion design, food additives and dietary supplements, financial products, systems and services, furniture and home furnishings, gaming systems and devices, hardware and tools, healthcare products, home furnishings and housewares, industrial machinery, jewelry, lawn and garden, lighting (indoor/outdoor), marketing, medical services and devices, nutritional supplements, novelty items, packaging, publishing, the restaurant and beverage industry, safety devices, sporting goods and athletic equipment, and toys and games, in addition to many others.

Ron advises clients on the optimum approach to protecting their intellectual property both in the US and internationally. His approach often alters the way clients approach IP rights. By replacing the traditional model of either prosecuting or defending infringement efforts with a proactive approach, he has helped his clients greatly decrease the number of objections they receive and the number of infringements they must address. Ron’s approach emphasizes comprehensive due diligence and focuses on strategic design patent, trademark and/or copyright filings.

Prior to his legal career, Ron was a chemical engineer for FMC Corporation for five years, in the Industrial Chemicals and Phosphorus Chemicals groups. He began as part of a team working on new product development and plant process improvements, followed by responsibility for the sodium phosphate business. In addition to production oversight, he oversaw production optimization, new product development, updating and improving drying technology, milling and screening technology and packaging technology, as well as improvement of the groundwater collection and treatment systems. In this role, Ron delivered improvements in product quality and sizing, and decreases in equipment downtime and waste production.

Ron has also represented both plaintiffs and defendants in patent, trademark, and unfair competition litigation. His patent litigation experience includes due diligence review of IP rights, pre-litigation dispute resolution, discovery, claim construction, and trial and appellate practice. Ron’s trademark litigation experience includes asserting and defending claims of trademark infringement and unfair competition in state and federal courts.

Additionally, Ron has extensive experience in the area of U.S. and international trademark law. He advises clients on the selection, adoption and use of trademarks, brand development and protection, and trademark portfolio management. He has represented clients in domestic and international trademark prosecution, in state and federal courts, in inter partes and ex parte proceedings before the Trademark Trial and Appeal Board at the United States Patent and Trademark Office, and in trademark opposition and cancellation proceedings before trademark offices in Europe, Australia and South Africa.

He is active in providing pro bono legal assistance to clients in all areas of art, culture, media and entertainment through Lawyers for the Creative Arts. He has also been identified by the World Trademark Review as a recommended trademark attorney.

EDUCATION

  • The John Marshall Law School, J.D.
  • State University of New York at Buffalo, B.S. Chemical Engineering
  • State University of New York at Buffalo, B.A. Chemistry

BAR ADMISSIONS/REGISTRATIONS

  • U.S. District Court for the Northern District of Illinois

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