David Ter Molen is a Partner in the Food and Beverage Industry Team and the Intellectual Property Practice Group. 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 and beverage industry, automotive and technology industries.

David helps food and beverage companies protect and exploit their branding, marketing and other intellectual property assets. This practice includes counseling food industry clients on FDA & USDA regulatory compliance, advertising and labeling risk assessment and clearance, and general corporate matters. regulations. He is also the author of the Food Identity Blog.

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.

REPRESENTATIVE MATTERS:

  • Acting as “in-house” counsel for nationwide distributor of consumer products with respect to FDA and USDA regulatory issues pertaining to the storage, distribution and sale of food products.
  • Advising national restaurant chain on day-to-day regulatory and labeling, issues, including labeling claims, marketing initiatives, and compliance with menu labeling requirements enacted under the Affordable Care Act.
  • Counseling food manufacturer and co-packer on wide-variety of issues, including food safety, regulatory compliance, labeling claims, and contractual matters.
  • Conducted IP audit for manufacture of specialized ingredients for food products in connection with sale of the company and then counseled buyer of the company with regard to USDA regulatory issues.
  • Counseling Chicago-based coffee company with respect to trademark and marketing matters and represented same client in dispute over trademark and copyright ownership that resulted in client obtaining all relevant intellectual property rights.
  • Counseled national food industry client in connection with the USDA’s organic labeling requirements.
  • Advised international importer and distributor of tomatoes, peppers and other produce with respect to USDA inspections and counterfeit produce.
  • Counseled food company start-up in connection with labeling and advertising issues and risk assessment, and compliance with Vermont’s GMO labeling law.
  • Represented national restaurant chain in class action lawsuit involving allegations of false and misleading marketing practices.
  • Succeeded in using trademark litigation to prevent foreign company from selling food flavorings in the United States under a trademark identical to client’s trademark.
  • Obtained preliminary injunction in trademark infringement action involving food service companies that resulted in defendant being precluded from using client’s corporate logo.
  • Represented the University of Illinois in litigation regarding copyright ownership and trademark infringement regarding the Chief Illiniwek logo.
  • Represented food manufacturer in a false advertising and trademark ownership dispute regarding a retail brand.
  • 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.”
  • Negotiated licenses with the Collegiate Licensing Company and CAPS (Coalition to Advance the Protection of Sports Logos, representing the NHL, NFL, MLB and other leagues) with regard to client’s use of team names and colors.

 

Honors & Awards: 
  • Illinois Leading Lawyers - 2016, 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 »