Overview
James Dimitrijevs
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James A. Dimitrijevs

Member; Vice Chair, Intellectual Property Department
Cleveland

EMAIL jdimitrijevs@mcdonaldhopkins.com

PHONE 216.348.5774

WATCH: Meet Jim Dimitrijevs

Practice Focus

Experience

Jim is Vice Chair of the Intellectual Property Department and chair of the Trademark Practice Group. He advises domestic and international clients on strategic management of intellectual property, including obtaining trademark and copyright registrations, and the licensing, acquisition and sale of intellectual property assets. He also provides counsel on transactional matters and disputes related to trade secrets, false advertising, trademarks, and copyrights. Jim oversees the worldwide trademark assets for a major retailer as well as consumer products and industrial manufacturing companies. His expertise includes prosecuting and enforcing color marks, product configuration marks and other less common types of source identifiers. In addition, Jim protects the domain name rights of his clients through UDRP actions, works with Customs offices to prevent products bearing infringing marks from being imported or exported, and manages due diligence investigations for mergers and acquisitions. His litigation experience includes trademark, copyright and false advertising matters in federal court.

Jim earned a J.D. from Cleveland State University's Cleveland-Marshall College of Law (Cleveland, OH) in 1994. He received a B.A. from John Carroll University (University Heights, OH) in 1989.

Representative Cases/Matters

  • Portfolio Management: Managing an international trademark portfolio of more than 16,000 active matters, including trademark protection and conflict matters, for one of the world’s largest retailers. 
  • False Advertising: Represented a manufacturer of medical imaging devices and software in federal court in a false advertising action against a competitor. The action resulted in a settlement of multiple claims and counterclaims, including patent mismarking claims, as well as the settlement of a pending patent infringement action between the same parties. 
  • Trademark and Trade Dress Infringement: Represented Blue Mountain Wallcoverings, the world’s largest wallpaper manufacturer, in federal court in a trademark and trade dress infringement action involving wallpaper sample books that resulted in a stipulated injunction and a substantial payment to our client. 
  • Copyright and Trade Dress Infringement: Represented Plastination, a creator and exhibitor of sculptural works, in a trade dress and copyright infringement action in federal court involving the configurations of sculptural works used to promote exhibitions incorporating the works. Following abbreviated discovery, the action resulted in a settlement involving a stipulated injunction and the payment of a substantial sum to our client.
  • Action for Unauthorized Trademark Use: Represented Electrolux, a major home appliances manufacturer, in two related infringement actions in federal court involving unauthorized use of trademarks. The actions resulted in injunctions and a significant damages award. 
  • Trademark Infringement: Represented a large regional financial institution in federal court in a trademark infringement action resulting in a permanent injunction and damages award against the defendant less than forty-five days after commencing the action. 
  • Trademark Infringement, Mediation: Defended a prepared foods manufacturer against a trademark infringement action that was resolved by a successful mediation prior to discovery, resulting in a coexistence agreement with no financial liability for our client. 
  • Criminal Prosecution for Trademark Infringement: Represented Major League Baseball in seizures of counterfeit apparel and assisted the county prosecutor in criminal prosecution of multiple defendants.
  • Trademark Trial and Appeal Board, Protection of Configurations: Represented a manufacturer of 55 gallon drums in several consolidated actions before the Trademark Trial and Appeal Board to defend its rights to the configurations of its drum closures.
Credentials

Admissions - Court

  • U.S. District Court for the Northern District of Ohio
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the 6th Circuit

Admissions - State

  • Ohio

Education

  • Cleveland-Marshall College of Law
  • John Carroll University

Honors and Awards

  • Named one of the Best Lawyers in America (2016-2018)

Professional Membership

  • All Ohio Annual Institute on Intellectual Property, Planning Committee, Co-Chair
  • International Trademark Association, Committee Member
  • Case Western Reserve University School of Law, Former Adjunct Professor, Trademark Law 
  • Cleveland Intellectual Property Law Association, Former President

Public Service and Volunteerism

  • City of Broadview Heights, Ohio; Board of Zoning Appeals Chair 
  • St. Andrew Eastern Orthodox Church, Maple Heights, Ohio; Former Council Member
Insights

External Publications

  • "Catching Up to the Reputation of Your Trademark," INTA Bulletin, June 2013
  • “How to Work with In-House Trademark Counsel,” INTA Bulletin, July 2009
  • “Using Wikipedia as a Source of Evidence,” INTA Bulletin, August 2007
  • “Who Gets the Rights to Spontaneous Trademarks?” INTA Bulletin, June 2007
  • Chewy Vuitton Tests New Trademark Dilution Act,” Bloomberg Law Reports, February 2007
  • “The Synergy of Trademarks and Marketing,” INTA Bulletin, April 2006
  • “U.S. Joining the Madrid Protocol but European Trademark Owners Have Most to Gain,” World Trade Executive, Inc., Global eCommerce Law and Business Report, December 2002
Events

Speaking Engagements

  • "U.S. Trademark Practice Update," presented to local ITMA organizations in Manchester and Glasgow, U.K., March 2013
  • “Evaluation of the State of the Defense of Parody to a Claim of Trademark Dilution,” presented to the Cleveland Bar Association Intellectual Property Law Section, January 2007  
  • “Use of Technology in Intellectual Property Law,” presented to the Cleveland Bar Association ePublications Committee, June 2005
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