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Attorney By Attorney
Donald Dunner Career Profiles of the Profession

Who?

Robert W. Sacoff
Partner
rws@pattishall.com

What?

Primary Practice Area & Subspecialty Fields:
Intellectual Property Law; Trademark, Copyright and Unfair Competition Law; Litigation; International Law.

When?

Years in Practice Area:
Since 1979

Years in the Legal Profession:
Since 1973

Where?

Employer:
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson
http://www.pattishall.com

Size/Sector:
@ 50 lawyer firm

City/State:
Chicago, Illinois



Law School:
Northwestern University School of Law

 

Undergraduate School/Degree:
University of Notre Dame. A.B. (English Literature).


Why?

Pluses/Challenges of Practice Area:
A varied mix in my day-to-day practice, including litigation, international law, transactional work and counseling clients. Trademark and unfair competition law deals with interesting issues, such as measuring and arguing about public perception of advertising, brand names, trade identity symbols and the like. The need to understand and deal with foreign and international law also affords opportunities to learn about foreign legal systems. Time management is is a challenge, as it is for all lawyers.

Core Skills/Key Knowledge Needed in Practice Area:
Analytical and communication skills are core. Litigation skills are important. Though I am not a patent lawyer, many intellectual property firms concentrate in patent law, for which a scientific or engineering background is essential or important.

Advice to Lawyers and Law Students Interested in Your Practice Area:
Learn all the basics as well as you can while in law school, especially legal research, analytical and writing skills. If you have an engineering or scientific background, consider a possible career in patent law. If you do not have a technical background, but are interested in civil litigation over interesting issues, consider involvement in non-patent intellectual property areas such as trademark, copyright and unfair competition law.

How?
Career Path to Current Position:
I previously worked at two other law firms, a Chicago general practice firm for 10 years, and then a Washington DC IP firm for 5 years. During my career I decided that specialization was advantageous and that a mid-size law firm appealed to me.

Influences and Mentors:
Beverly Pattishall and David Hilliard, who taught the course in trademarks, trade identity, and unfair competition law when I was a student at Northwestern.

Suggested Reading About Your Practice Area:
Pattishall, Hilliard & Welch, Trademarks and Unfair Competition (5th ed.), LexisNexis.

Job Search Techniques Used in Finding Your Position(s):
Started off with interviewing and summer clerking during law school.
Bar Affiliations and Activities:
IPL Section Chair; Vice President, US Group, Association Internationale pour la Protection de la Propriété Intellectuelle ("AIPPI"); others.
Recent Professional Publications:
Trademark Law in the Technology-Driven Global Marketplace, 4 Yale Symp. L & Tech. 8 (2001), http://lawtech.law.yale.edu/symposium/s01/comment_sacoff.htm
Recent Professional Presentations:
International Trademark Law, for Practicing Law Institute programs in New York and San Francisco.
Memorable Career Moments:
Acting as a private sector advisor to the U.S. government delegation to the Diplomatic Conference in Geneva on the Trademark Law Treaty; testifying in Congress on the Trademark Counterfeiting Act; filing an amicus curiae brief in the Supreme Court on behalf of the ABA in the Victoria's Secret trademark dilution case.
Intriguing Interests:
None particularly intriguing, but I play as much tennis as I can, and enjoy recreational reading and international travel with my wife, Mary.