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Oscar Alcantara is a principal in the firm's Litigation Group and also serves as chair for the Intellectual Property Group. His practice focuses on intellectual property law, specifically trademark, copyright, right of publicity, advertising, unfair competition and deceptive business practices. Mr. Alcantara handles intellectual property matters for clients with both transactional and litigation needs. On the transactional side, he assists clients in maintaining their worldwide portfolios of service-marks and trademarks and also works with them to prosecute new service-mark and trademark registrations in the United States and abroad. He also assists clients in negotiating and documenting business transactions involving intellectual property, including distribution agreements, royalty bearing license and assignments of intellectual property.
On the litigation side, Mr. Alcantara assists clients in trademark and copyright enforcement and in defending trademark and copyright actions. He has handled cases involving product counterfeiters and illegally imported goods, false advertising cases, trade-dress and copyright infringement litigation, right of publicity disputes, domain name cyber-squatting and typo-piracy litigation, meta-tag disputes, copyright joint-authorship claims for accounting, grey goods litigation, hold-over licensees, consumer deception litigation, and other forms of trademark and copyright infringement. He also has extensive experience litigating disputes over royalty payments, breaches and termination of distribution agreements, and accountings of profits. Mr. Alcantara has represented a wide variety of industries, including manufacturers and distributors of musical instruments, toys and die-cast collectibles, household cleaning products, computer hardware and software, and cosmetics and personal care products. He has also represented clients in the hotel and motel, restaurant, and education industries; graphic artists, authors, musicians and other entertainers; advertising agencies; Web site designers; and financial institutions. Mr. Alcantara has moderated two Chicago Bar Association conferences, Developments in Intellectual Property Counterfeiting (March 1997) and Protection of Product Design and Product Configuration (March 1998). He also moderated the International Trademark Association's roundtable discussion, Use of Survey Evidence in Trademark Litigation (May 1997) and the American Bar Association's roundtable discussion, The Clash Between the Right of Publicity and the First Amendment (September 2003). As co-chair of the Intellectual Property Committee of the Chicago Bar Association's Young Lawyer Section, Mr. Alcantara presided over a series of educational seminars on issues of concern to intellectual property attorneys, including new legislation governing intellectual property both in Illinois and nationwide. In that capacity, he helped draft the statute that governs the right of publicity in the state of Illinois and testified before the Illinois Senate regarding adoption of the statute. As a Steering Committee member for the International Anti-Counterfeiting Coalition's TRIPs Compliance Project, Mr. Alcantara helped draft an international trademark enforcement report that was presented to the Office of the United States Trade Representative. He was also recently honored with a seat on the board of Meritas where he currently serves as chair of the Intellectual Property Section. Mr. Alcantara is also a member of the National Academy of Recording Arts and Sciences.
Education
University of Michigan, J.D., cum laude, 1993
Harvard University, A.B., magna cum laude, 1990
Bar Admissions
Illinois
Articles
Toy and Game Licensing: The Right of Publicity
Termination of Licenses: What Happens to License Rights if a Termination Was Wrongful
The Sale of Trademarked Inventory in Bankruptcy: Pitfalls for Trademark Owners
The Dilution of the Federal Trademark Dilution Act
Study Concerning a Possible Convention on Financing Issues Pertaining to Intellectual Property
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Speaking Engagements
Panelist, "New Horizons for Secured Transactions - Security Interests in Intellectual Property Rights," UNCITRAL Congress on Modern Law for Global Commerce (July 2007).
Panelist, "Trademarks and Security Interests: Effectiveness of Rights Against Third Parties," UNCITRAL Congress on Intellectual Property and Security Interests (January 2007).
Moderator, "Fair or Foul: Navigating The Waters Of Fair Use", International Trademark Association Roundtable (July 2006).
Panelist, "Let's Make a Deal: Transactional Due Diligence Workshop," International Trademark Association (May 2005)
"Experts Consultation on Security Interests in Intellectual Property," World Intellectual Property Organization (May 2005).
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