Thomas L. Holt

Partner

Firmwide Chair, Trademark, Copyright, Internet & Advertising Practice

Chicago
New York

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312.324.8438 direct

THolt@perkinscoie.com

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Informed by more than 25 years of industry experience, Tom represents clients in strategically protecting and enforcing their brands, copyrights, and other intellectual property.

Thomas Holt practices trademark, trade dress, copyright, and false advertising law. He is experienced in all phases of federal court litigation, including ex parte seizure, temporary restraining order, preliminary injunction, trial, and appeals. Additionally, Tom routinely represents clients in inter partes proceedings before the Trademark Trial and Appeal Board.

Tom also counsels clients on IP protection and enforcement and in managing U.S. and international IP portfolios. He has significant experience drafting and negotiating IP agreements and has conducted numerous due diligence reviews and handled transfer agreements. Tom's industry experience spans computing technology, mobile and wireless telecommunications, medical devices, education, food and beverage, heavy manufacturing, and a variety of other consumer products.

Areas of focus

Industries

Educational Institutions & Services

Apparel & Footwear

Services

Intellectual Property Law

Trademark, Copyright, Internet & Advertising

Education & Credentials

Education

Loyola University Chicago School of Law, J.D., 1997
University of Missouri, B.S., Mechanical Engineering, 1993

Bar and Court Admissions

Illinois
New York
District of Columbia

U.S. Court of Appeals for the Seventh Circuit

Professional Recognition

Recognized in the World Trademark Review 1000—The World’s Leading Trademark Professionals, 2014-2024 Illinois, Enforcement & Litigation Illinois, Prosecution & Strategy
Recognized by Managing IP as an IP Star, 2024
Listed in Illinois Super Lawyers for Intellectual Property Litigation, 2012, 2014-2024
*The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and no certificate, award or recognition is a requirement to practice law in Illinois.

Impact

Professional Leadership

3Arts, Board of Directors, 2017-2023(3Arts works to sustain and promote women artists, artists of color, and artists with disabilities)
International Trademark Association (INTA)

Parallel Imports Committee, North American Subcommittee, 2018-2019
Trademark Enforcement Committee, Monetary Remedies Subcommittee, 2006-2007; 2014-2015
Lefkowitz Moot Court Competition Planning Committee, Midwest Region, 2001-2007
Trademark Administrators Committee, Needs Subcommittee, 2002-2005
Intangible Asset Finance Society, Trademark Committee, 2011
Intellectual Property Owners Association, Counterfeiting and Piracy Committee, 2012

Professional Experience

Recent Federal Court Cases

DarkOwl, LLC v. ArkOwl LLC

U.S. District Court for the District of Colorado
Secured a significant legal victory in a trademark infringement action for DarkOwl in a bench trial where the judge found no infringement between the DARKOWL mark and the competitor’s trademarks.

Storage Cap Management LP v. Robarco, Inc.

U.S. District Court for the Southern District of Ohio; Trademark Trial and Appeal Board
Represented Storage Cap Management LP in various oppositions and a court action relating to Storage Cap’s use and registration of the STORE SPACE mark against infringement claims based on the Store Space mark, both used in connection with self-storage services. After a years-long battle, secured a win for Storage Cap in its trademark dispute with rival self-storage company SpareSpace Storage LLC. In October 2022, the judge granted summary judgment of no likelihood of confusion to Storage Cap after finding that the two marks were dissimilar and that SpareSpace’s mark was conceptually and commercially weak, concluding that it was lacking public recognition and was descriptive rather than suggestive.

Agilent Technologies, Inc. v. Innovative Engineering Systems, Inc.

U.S. District Court for the Northern District of California; Trademark Trial and Appeal Board
Represented Agilent Technologies in a trademark opposition and district court trademark infringement action against Innovative Engineering Systems, Inc. (IES). Agilent asserted claims of trademark infringement between Agilent’s AGILENT and AGILENT TECHNOLOGIES marks and IES’s AGILITECH mark in relation to chromatography equipment and in the biotechnology, bioprocessing, and biomanufacturing industries more broadly. Secured successful settlement for Agilent that involves a partial rebrand of IES’s biotech division.

University of Arizona, et al. v. Prep Sportswear

U.S. District Court for the Eastern District of Washington
Representing Pac-12 universities in a trademark infringement and dilution action against Prep Sportswear and Vintage Brand.

Agilent Technologies, Inc. v. Agilant Solutions, Inc.

U.S. District Court for the Northen District of Illinois
Represented Agilent Technologies in a trademark infringement and dilution action against Agilant Solutions, Inc. Achieved successful resolution involving name change of defendant.

Krispy Krunchy Foods Enforcement Matters

Various Jurisdictions
Represented Krispy Krunchy Foods in numerous trademark enforcement lawsuits throughout the country.

New Balance Athletics, Inc. v. USA New Bunren International Co. Ltd. LLC

U.S. District Court for the District of Delaware
Represented New Balance in a trademark infringement and counterfeiting action involving use of the N and NEW BUNREN marks. Obtained an award of over $500,000 in statutory damages.

General Mills, Inc. v. Rawbite ApS et al.

U.S. District Court for the Northern District of Minnesota
Represented General Mills in a trade dress infringement and preliminary injunction action involving Rawbite’s use of the LÄRABAR packaging design.

Talking Rain Beverage Company, Inc. v. Klarbrunn, Inc.

U.S. District Court for the Northern District of Illinois
Represented Talking Rain in a trademark infringement action involving Klarbrunn’s use of Talking Rain’s ICE and SPARKLING ICE marks in connection with sparkling water products.

Universal Percussion, Inc. v. Avedis Zildjian

U.S. District Court for the Northern District of Ohio
Represented Universal Percussion in a trademark infringement action involving Zildjian’s use of the S mark in connection with percussion instruments.

Universal Percussion, Inc. v. Guitar Center

U.S. District Court for the Northern District of Ohio
Represented Universal Percussion in an unfair competition action involving Guitar Center’s sale of its AGAZARIAN-branded cymbals.

3Arts, Inc. v. Restoration Hardware Holdings, Inc., et al.

U.S. District Court for the Northern District of Illinois
Represented 3Arts in a trademark infringement action involving Restoration Hardware’s use of the 3ARTS mark in connection with its café.

Two Brothers Brewing Company v. Three Brothers Brewing Company, LLC*

U.S. District Court for the Eastern District of Virginia
Represented Two Brothers Brewing Company in a case involving trademark infringement of the TWO BROTHERS mark.

TQP Development, LLC v. Allianz Life Insurance Company of North America et al.*

U.S. District Court for the Eastern District of Texas
Represented GEICO Corporation and Government Employees Insurance Company in a patent infringement suit relating to the transmission of encrypted data over a communications link. GEICO was dismissed without prejudice and did not have to pay damages, and no settlement agreement was signed.

Huawei Technologies Co., Ltd. v. Motorola, Inc., et al.*

U.S. District Court for the Northern District of Illinois
Represented Nokia Siemens Networks B.V. and Nokia Siemens Networks US (collectively “NSN”) in a trade secret action seeking to prevent the $1.2 billion sale of Motorola’s wireless networks business to NSN.

Cassetica Software, Inc. v. Computer Science Corporation*

U.S. District Court for the Northern District of Illinois
Represented Computer Science Corporation in a copyright infringement action involving computer software.

Cartier International AG, et al. v. HauteLook, Inc.*

U.S. District Court for the Southern District of New York
Represented HauteLook in a trademark infringement action relating to the sale of Cartier watches.

Mario Tricoci Hair Salons and Day Spas, Inc. v. Franco Tricoci Salon and Spa Schaumburg, LLC*

U.S. District Court for the Northern District of Illinois
Representing Mario Tricoci in a trademark infringement and preliminary injunction action against Franco Tricoci Salons.

ConvaTec Inc. v. Boston Scientific*

U.S. District Court for the Northern District of Illinois
Represented ConvaTec in a trademark infringement and unfair competition action involving the VERSIVA trademark in relation to medical products.

* Prior Experience

Recent Trademark Trial and Appeal Board (TTAB) Cases

Storage Cap Management LP v. Robarco, Inc.

U.S. District Court for the Southern District of Ohio; Trademark Trial and Appeal Board Represented Storage Cap Management LP in various oppositions and a court action relating to Storage Cap’s use and registration of the STORE SPACE mark against infringement claims based on the Store Space mark, both used in connection with self-storage services. After a years-long battle, secured a win for Storage Cap in its trademark dispute with rival self-storage company SpareSpace Storage LLC. In October 2022, the judge granted summary judgment of no likelihood of confusion to Storage Cap after finding that the two marks were dissimilar and that SpareSpace’s mark was conceptually and commercially weak, concluding that it was lacking public recognition and was descriptive rather than suggestive.

Agilent Technologies, Inc. v. Innovative Engineering Systems, Inc.

Domos, LLC v. Door, Inc.

Trademark Trial and Appeal Board
Represented Domos in cancellation and opposition proceedings involving the DOOR mark for various real estate–related services. The parties reached a settlement of the proceedings.

New Balance Athletics, Inc. v. USA New Bunren International Co. Ltd. LLC

Trademark Trial and Appeal Board
Representing New Balance in a cancellation action against registration of various N and NEW BUNREN marks for use in connection with shoes and apparel.

Precision Pump Parts, Inc. v. Cornell Pump Company

Trademark Trial and Appeal Board
Representing Cornell in an opposition against registration of its pump frame trade dress.

Del-Nat Tire Corporation v. Omni United (S) Pte Ltd.

Trademark Trial and Appeal Board
Representing Omni in a cancellation action involving its RENEGADE registration for tires.

HDN Development Corporation (Krispy Kreme) v. Krispy Krunchy Foods, L.L.C.

Trademark Trial and Appeal Board
Representing Krispy Krunchy Foods in an opposition against registration of its KRISPY KRUNCHY mark for various food products and restaurant services.