McCrackenFrank

Of Counsel

A wide array of businesses, large and small, rely on Elliott to handle their intellectual property needs. Elliott specializes in trademark development, prosecution, protection against infringements, licensure, portfolio management, new mark clearance and transfers for companies in the US and internationally. He is the former Chief Intellectual Property Counsel for the Blue Cross and Blue Shield Association in Chicago, and was a partner in the former Chicago IP law boutique firm of Welsh & Katz, Ltd.

Elliot brings to his work a deep understanding of clients’ needs for timeliness, open communication and cost-effectiveness. His successful major assignments include International trademark portfolio management matters for an international commercial cleaning and facilities management company, a health insurance provider and a pharmaceutical manufacturer. He has handled trademark prosecution and enforcement and has participated in trademark litigation to defend IP assets for many companies and has advised on the acquisition of intellectual property assets in corporate combinations. Elliott also has represented both US and international companies in hearings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

Elliott has extensive international relationships with intellectual property professionals throughout the world and has facilitated international filing programs and trademark litigation in multiple countries. A Certified Public Accountant, Elliott has completed advanced coursework in trademarks at John Marshall Law School. He has made presentations to the International Trademark Association and the Intellectual Property Law Association of Chicago on trademark law and was the principal draftsman for the Blue Cross and Blue Shield Associations’ Service Mark Use Manual. Elliott has published articles on trademark law in professional journals.

In the area of trademark law, Elliott has regularly been named an Illinois Leading Lawyer and an Illinois Super Lawyer by the decision of his peers.

PROFESSIONAL ASSOCIATIONS

Illinois Legal Needs Task Force
Illinois State Bar Association
Chicago Bar Association – Chair of the Corporate Law Departments Committee
International Trademark Association – served on the Board of Directors and 2010 program committee, finance committee and audit subcommittee, international committee, meetings committee, member services committee and mediation committee
Intellectual Property Law Association of Chicago, Member of the International and US Trademark committees; Chair of the US trademark committee

PUBLICATIONS/PRESENTATIONS

The Higher HIPAA Hurdle
Trademark Law Advisory: Ending the Confusion about Dilution – New Trademark Law Seeks to Protect Famous Marks
Elliott C. Bankendorf Discusses the Importance of IP Due Diligence in M&A with Due Diligence Digest
Elliott C. Bankendorf Discusses the Importance of IP Due Diligence in M&A Hopping the HIPAA Hurdle: Proving Trademark Use in the Healthcare Industry