David Ter Molen is a Partner in the Litigation and Intellectual Property Practice Groups and member of the Food Industry Team. He has extensive experience in the areas of intellectual property law, including patent, trademark, trade dress and copyright law; internet, technology, and computer law in general.

David litigates and counsels clients primarily in the areas of intellectual property, advertising, technology law and unfair competition with a focus on the food, automotive and technology industries. He has achieved favorable results for plaintiffs and defendants in trademark and unfair competition, false advertising and patent infringement matters. David has represented clients in a wide array of technical areas and has substantial trial and appellate experience.

Outside of intellectual property, he has extensive experience in business litigation matters involving complex contractual disputes, First Amendment issues, consumer fraud and trade secrets. In addition, David routinely works with clients reviewing and drafting supplier agreements, vendor agreements, private label agreements and intellectual property agreements.

David helps food and beverage companies protect and exploit their branding, marketing and other intellectual property assets, including compliance with FDA & USDA regulations. He is also the author of the Food Identity Blog

Representative Matters

  • Tried claims worth over $100 million to a federal jury arising out of defendant’s breach of a technology and patent licensing agreement relating to truck engines. The case settled before closing arguments, resulting in a recovery for our client of multiple millions of dollars (exact amount is confidential at the request of the defendant.)
  • Acting as “in-house” counsel on behalf of numerous clients in connection with day-to-day intellectual property, marketing and contract issues, including reviewing and drafting supplier agreements, private label agreements and intellectual property agreements.
  • Second-chair trial counsel in patent infringement action before the International Trade Commission (ITC) resulting in favorable settlement for client, a supplier of aftermarket automotive parts.
  • Obtained preliminary injunction in trademark infringement action precluding defendants from using the client's corporate logo in a 30-page ruling from the United States District Court in Massachusetts.
  • Represented national auto parts supplier in lengthy trade dress and trademark litigation which resulted in favorable settlement and acquisition of infringing company.
  • Represented a Big 10 university in litigation regarding copyright ownership dispute and trademark infringement relating to the university’s logo and obtained favorable resolution for the client. 
  • Represented client in litigation of false advertising claims against a competitor and defending against patent-infringement claims relating to windshield wiper blades.
  • Represented a publicly traded maker of automatic identification and data capture equipment through nationwide, multi-jurisdictional litigation against one of its largest competitors, securing favorable settlements in all matters.
  • Successfully represented coffee roaster and coffee house owner in trademark and copyright litigation with artist, with client obtaining all intellectual property rights to the relevant artwork.
  • Obtained first mandatory injunction against municipality in Illinois, allowing a multi-million dollar aircraft facility and fuel farm to be constructed during pendency of litigation - and obtained a jury verdict against the municipality for breach of contract.
  • Negotiated licenses with the Collegiate Licensing Company and CAPS (Coalition to Advance the Protection of Sports Logos, which represents the NHL, NFL, MLB and other leagues) in connection with client’s use of professional team names and colors on its products.
  • Successfully obtained emergency and preliminary injunctive relief on behalf of national consulting firm in multiple cases involving breaches of restrictive covenants and use of trade secrets by departing employees.
  • Successfully used UDRP proceedings to transfer domain names to numerous clients and successfully defended a UDRP proceeding which resulted in a decision that the “Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
  • Obtained dismissal of lawsuits asserting defamation and commercial disparagement claims on behalf of numerous clients.
  • Represented minority members of closely-held corporation and its subsidiaries in connection with breach of fiduciary duty and waste of corporate assets claims, and successfully negotiated settlement and buyout of clients’ ownership interests through use of third-party appraisal of stock value. 
  • Successfully defended majority owners of closely-held corporation and its subsidiaries against breach of fiduciary duty claims and attempt to force dissolution of the company.
Honors & Awards: 
  • Illinois Leading Lawyers - 2017 
Professional Activities: 
  • Grocery Manufacturers Association (GMA)
  • Institute of Food Technologists (IFT)
  • International Trademark Association (INTA)

Industries

Education

J.D., Northwestern University School of Law, magna cum laude, Order of the Coif; John Paul Stevens Award for Academic Excellence
B.A., Dartmouth College

State Bar Admissions

  • Illinois 

Federal Bar Admissions

  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Northern and Central Districts of Illinois 
  • United States District Court for the Eastern District of Michigan

Clerkships

Hon. Milton I. Shadur, Senior District Court Judge, Northern District of Illinois.
http://www.leadinglawyers.com/atty_profile.cfm?TOCUID=1087840

Case Studies

Suppliers to the Food Industry - TriMark USA Read More »