500 West Madison Street Suite 3700, Chicago, IL USA 60661
3 Times Square, New York, NY USA 10036
Thomas Holt represents companies ranging from emerging brands to global market leaders, helping them protect, enforce, and commercialize their most valuable intellectual property assets. With nearly three decades of experience, Tom represents clients in high-stakes trademark, trade dress, copyright, and false advertising matters, combining deep technical expertise with practical, business-driven judgment.
Tom has a strong track record of delivering successful outcomes for both plaintiffs and defendants, whether through trial, decisive pretrial motion practice, or efficient early resolutions outside of court. He is widely regarded for his ability to design and execute strategic brand enforcement and defense programs that align legal risk with commercial objectives.
Tom's practice spans complex federal court litigation and administrative proceedings, including actions involving ex parte seizures, temporary restraining orders, preliminary injunctions, and trial and appellate advocacy. He regularly represents clients before the Trademark Trial and Appeal Board in inter partes proceedings and in disputes involving internet and domain-name enforcement.
In addition to litigation, Tom counsels clients on U.S. and international trademark portfolio strategy, clearance, enforcement, and lifecycle management. He has significant experience drafting and negotiating intellectual property and brand-related agreements and is frequently called upon to advise on enforcement strategies that balance speed, cost, and long-term brand equity.
Prior to joining the firm, Tom was a partner in the Chicago and New York offices of an international law firm, where he served as firmwide chair of its nationally recognized Trademark, Copyright, Internet, and Advertising practice.
Tom is recognized by World Trademark Review as a leading practitioner for both contentious and non-contentious matters, which noted that he is “pragmatic, trustworthy, and does a brilliant job for clients.” He is also named an IP Star by Managing IP and an Illinois Super Lawyer for Intellectual Property Litigation by Super Lawyers magazine.
Experience
Recent Federal Court Cases:
*Secured a significant legal victory in a trademark infringement action for a dark web threat intelligence and darknet data provider in a bench trial where the judge found no infringement between its mark and the competitor’s trademarks. U.S. District Court for the District of Colorado
*Represented a warehousing and self-storage business in various oppositions and a court action relating to its use and registration of a mark against infringement claims based on the client’s mark, both used in connection with self-storage services. After a years-long battle, secured a win for the client in its trademark dispute with rival self-storage company. In October 2022, the judge granted summary judgment of no likelihood of confusion to the client after finding that the two marks were dissimilar and that the rival self-storage company’s mark was conceptually and commercially weak, concluding that it was lacking public recognition and was descriptive rather than suggestive. U.S. District Court for the Southern District of Ohio; Trademark Trial and Appeal Board
*Represented a designer and manufacturer of laboratory instruments in a trademark opposition and district court trademark infringement action against an engineering and automation solutions provider. The client asserted claims of trademark infringement between its marks and the defendant’s mark in relation to chromatography equipment and in the biotechnology, bioprocessing, and biomanufacturing industries more broadly. Secured successful settlement for client that involves a partial rebrand of the defendant’s biotech division. U.S. District Court for the Northern District of California; Trademark Trial and Appeal Board
*Represented Pac-12 universities in a trademark infringement and dilution action against an online marketplace of sportswear. U.S. District Court for the Eastern District of Washington
*Represented a designer and manufacturer of laboratory instruments in a trademark infringement and dilution action against a provider of digital transformation and IT managed services. Achieved successful resolution involving name change of defendant. U.S. District Court for the Northen District of Illinois
*Represented a quick-service restaurant in numerous trademark enforcement lawsuits throughout the country. Various Jurisdictions
*Represented footwear manufacturer in a trademark infringement and counterfeiting action involving use of a Chinese company’s products marks. Obtained an award of over $500,000 in statutory damages. U.S. District Court for the District of Delaware
*Represented a manufacturer and marketer of branded consumer foods in a trade dress infringement and preliminary injunction action involving a fruit and nut bar manufacturer’s use of the client’s brand of wellness bar packaging design. U.S. District Court for the Northern District of Minnesota
*Represented a beverage company in a trademark infringement action involving sparkling water company’s use of the client’s marks in connection with sparkling water products. U.S. District Court for the Northern District of Illinois
*Represented a percussion distributor in a trademark infringement action involving a cymbals and percussion instruments manufacturer’s use of a mark in connection with percussion instruments. U.S. District Court for the Northern District of Ohio
*Represented a percussion distributor in an unfair competition action involving musical instrument retailer chain’s sale of its branded cymbals. U.S. District Court for the Northern District of Ohio
*Represented a nonprofit organization that supports artists in a trademark infringement action involving a home furnishings retailer’s use of the client’s mark in connection with its café. U.S. District Court for the Northern District of Illinois
*Represented an independently owned microbrewery in a case involving trademark infringement of its mark. U.S. District Court for the Eastern District of Virginia
*Represented a vehicle insurance company in a patent infringement suit relating to the transmission of encrypted data over a communications link. The client was dismissed without prejudice and did not have to pay damages, and no settlement agreement was signed. U.S. District Court for the Eastern District of Texas
*Represented two subsidiaries (collectively) of a data networking and telecommunications equipment company in a trade secret action seeking to prevent the $1.2 billion sale of a technology company’s wireless networks business to the client. U.S. District Court for the Northern District of Illinois
*Represented an information technology services provider in a copyright infringement action involving computer software. U.S. District Court for the Northern District of Illinois
*Represented member-only shopping website in a trademark infringement action relating to the sale of French luxury goods company’s watches. U.S. District Court for the Southern District of New York
*Represented a renowned hairstylist in a trademark infringement and preliminary injunction action against a salon and spa. U.S. District Court for the Northern District of Illinois
*Represented a global medical products and technologies company in a trademark infringement and unfair competition action involving a sterile wound dressing trademark in relation to medical products. U.S. District Court for the Northern District of Illinois
Recent Trademark Trial and Appeal Board (TTAB) Cases:
*Represented a warehousing and self-storage business in various oppositions and a court action relating to its use and registration of a mark against infringement claims based on the client’s mark, both used in connection with self-storage services. After a years-long battle, secured a win for the client in its trademark dispute with rival self-storage company. In October 2022, the judge granted summary judgment of no likelihood of confusion to the client after finding that the two marks were dissimilar and that the rival self-storage company’s mark was conceptually and commercially weak, concluding that it was lacking public recognition and was descriptive rather than suggestive.
*Represented a designer and manufacturer of laboratory instruments in a trademark opposition and district court trademark infringement action against an engineering and automation solutions provider. The client asserted claims of trademark infringement between its marks and the defendant’s mark in relation to chromatography equipment and in the biotechnology, bioprocessing, and biomanufacturing industries more broadly. Secured successful settlement for client that involves a partial rebrand of the defendant’s biotech division.
*Represented a smart door system manufacturer in cancellation and opposition proceedings involving its mark for various real estate–related services. The parties reached a settlement of the proceedings.
*Represented a footwear manufacturer in a cancellation action against registration of a Chinese company’s various marks for use in connection with shoes and apparel.
*Represented a manufacturer of high-quality pumps in an opposition against registration of its pump frame trade dress.
*Represented a manufacturer of vehicle tires in a cancellation action involving one of its registrations for tire lines.
*Represented a quick-service restaurant in an opposition against registration of its mark for various food products and restaurant services.
*Represented a footwear manufacturer in an opposition against registration of a mark for midsoles.
*Represented a footwear manufacturer in an opposition against registration of a mark for athletic apparel.
*Experience gained by attorney prior to joining Kilpatrick
Advertising Counseling & Disputes
Anti-Counterfeiting & Gray Markets
Brand Licensing & Related Transactions
Loyola University Chicago School of Law J.D. (1997)
University of Missouri B.S., Mechanical Engineering (1993)
District of Columbia (2010)
Illinois (1997)
New York (2018)
U.S. Court of Appeals for the Seventh Circuit
U.S. District Court for the Central District of Illinois
U.S. District Court for the Eastern District of New York
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Southern District of New York
U.S. Patent and Trademark Office (2000)
3Arts, Board of Directors, Member (2017-2023)
International Trademark Association (INTA), Member
Parallel Imports Committee, North American Subcommittee, Member (2018-2019)
Trademark Enforcement Committee, Monetary Remedies Subcommittee, Member (2006-2007; 2014-2015)
Lefkowitz Moot Court Competition Planning Committee, Midwest Region, Member (2001-2007)
Trademark Administrators Committee, Needs Subcommittee (2002-2005)
Intangible Asset Finance Society, Trademark Committee, Member (2011)
Intellectual Property Owners Association, Counterfeiting and Piracy Committee, Member (2012)
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