Mark A. Cantor

Chairman Emeritus & General Counsel

Michigan OfficeP (248) 358-4400

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Mark is one of the founders of the firm and has been with the firm as a Shareholder since 1983. He has over 35 years of IP litigation experience. He has extensive experience in dealing with complex litigation matters in all technology areas and has tried cases relating to patents, trademarks, trade secrets and copyrights in state and federal courts and administrative tribunals throughout the country and in a number of international forums.

Mark takes a special interest in his client’s IP goals by understanding how their strategies align with their business interests. He creates tailored strategies by understanding the commercial realities and working on a plan of action that is cost-effective but still provides an enforceable competitive edge for the client.

Mark is specifically recognized for his trademark litigation practice. Due to his success in this field, several of Brooks Kushman’s largest clients look to Mark for trademark enforcement matters. He has also been recognized by many of the industry’s leading publications for his in-court victories, including obtaining the largest trademark jury verdict in Michigan history.

Mark has handled inter partes administrative proceedings before the U.S. Patent and Trademark Office and the International Trade Commission.  Mark has been extremely active in a number of cases involving insurance coverage in intellectual property cases, to try and reduce the cost of litigation to the client.

In addition to specializing in IP litigation, Mark also has a particular skill for negotiating business focused resolutions. Mark has a knack for developing creative solutions to resolve seemingly intractable disputes by fashioning a settlement based on business realities.

Additionally, Mark has an active practice advising clients on the acquisition, management and licensing of intellectual property. He has worked with many clients to develop a management strategy to enable clients to accurately and efficiently manage and monetize their intellectual property portfolios.

Mark served as President of the firm from 2007-2018. He has also served as General Counsel of the firm for over two decades and continues in that role today.

Representative Matters

Terex South Dakota, Inc. et al v. Sinoboom North America, LLC – (Preliminary Injunction and Consent Permanent Injunction – S.D. Texas) – Represented Terex Corporation in a trademark infringement matter regarding the sale of BLUE mobile elevating work platforms (“MEWPs”). After learning of a Chinese manufacturer attempting to enter the U.S. market, Marc filed a lawsuit and preliminary injunction motion to stop defendant’s sale of Blue MEWPs. The Court granted a preliminary injunction in favor of plaintiff’s motion and halted the sale and use of Sinoboom’s BLUE MEWPs. The case shortly settled in favor of our client, Terex Corporation. This decision is the only preliminary injunction decision involving a product coloring.  This is the first known preliminary injunction granted for a single-color trademark.

Mag Automotive LLC V. Gadra Enterprises, Inc. (Summary Judgment – E.D. Michigan): Represented defendant Gadra in a trademark infringement matter relating to a numbering system on automotive equipment parts. Convinced the court that plaintiff did not have any enforceable trademark rights as the asserted trademarks were functional and had no secondary meaning, and the Court granted Summary Judgment  for Gadra. Also convinced the Court to deny Plaintiff Mag Automotive’ s  motion for Summary Judgment on Gadra’s counterclaims alleging false advertising, business and product disparagement, and tortious interference with business relationships and allow those claims to go to trial. The matter settled before trial. Case No. 2:16-cv-12049

Innovation Ventures, LLC d/b/a Living Essentials, v. N.V.E., Inc. (Jury Trial – E.D. Michigan): Represented Plaintiff Living Essentials in trademark infringement action involving plaintiff’s 5-Hour ENERGY trademark. The jury found that Defendant N.V.E.’s sale of a competing product named “6 Hour Power” infringed Plaintiff’s trademark and awarded $10.6 million in damages. The jury also awarded an additional $11.5 million in disgorgement of N.V.E.’s profits and fully rejected N.V.E.’s $60 million false advertising claim. Case No: 4:08-cv-11867

Ancora Techs. v. Apple, Inc. 744 F.3d 732 (Fed. Cir. 2014)

Living Essentials v. NVE, 694 F.3d 723 (6th Cir. 2012)

Hochstein v. Microsoft Corp., 430 Fed. Appx. 898 (Fed. Cir, 2011)

Sunbeam Products, Inc, v. HoMedics, Inc. 412 Fed. Appx. 263 (Fed. Cir. 2010)

OnStar, LLC v. Micral, Inc., 2010 WL 3420340 (N.D.Ohio 2010)

P&M Services v. Gubb, 372 Fed, Appx. 613 (6th Cir. 2010)

Armament Systems & Procedures, Inc. v, IQ H.K., Ltd. 328 Fed. Appx. 625 (Fed. Cir. 2008)

Gubb v. P&M Services, 267 Fed. Appx. 956 (Fed. Cir. 2008)

General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006)

General Motors Corp. v. The Wildside, 133 Fed. Appx. 106 (6th Cir. 2004)

Cincinnati Ins. Co. v. Zen Design Group, Ltd., 329 F.3d 546 (6th Cir. 2003)

Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002)

Therma-Scan, Inc. v. Thermoscan, Inc., 217 F.3d 414 (6th Cir. 2000)

STX, LLC v. Brine, Inc., 211 F.3d 588 (Fed. Cir. 2000)

K`Arsan Corp. v. Christian Dior Perfumes, Inc., 1998 U.S. App. Lexis 27658 (6th Cir. 1998)

Advance Watch Co. v. Kemper Nat`l Ins. Co., 99 F.3d 795 (6th Cir. 1996)

J. Thomas Distributors v. Greenline Distributors,41 U.S.P.Q.2d 1382 (6th Cir, 1996)

Parameter Driven Software v. Mass Bay Ins. Co., 25 F.3d 332 (6th Cir. 1994)

Janda v. Riley-Meggs Industries, Inc. 764 F. Supp. 1223 (E.D. Mich. 1991)

Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422 (Fed. Cir. 1989)

Glasstech, Inc. v. Ab Kyro Oy, 769 F.2d 1574 (Fed. Cir. 1985)

Organizations and Affiliations

State Bar of Michigan

American Bar Association

Michigan Intellectual Property Law Association

Intellectual Property Owner Association

Recognitions

“Leading Lawyer,” Leading Lawyer Magazine, 2014-2019

Lawyer of the Year, Patent Law, Best Lawyers, 2019

“World Trademark Review 1000 Recommended Individual,” Intellectual Asset Management, 2015-2019

“IAM Patent 1000 Recommended individual,” Intellectual Asset Management, 2014 – 2018

Best Lawyers in America, 2009-2022

“IP Star”, Managing Intellectual Property, 2013 – 2022

“500 Most Powerful Business Leaders in Metro Detroit”, DBusiness, 2018-2019, 2021

“Leader in the Law”, Michigan Lawyers Weekly 2017

Michigan Super Lawyers, Intellectual Property, 2007-2021

“Top Lawyer,” DBusiness Magazine, 2009-2022

“10 Power Lawyers in Michigan,” Crain’s Detroit Business, 2009

Press Releases

    Client Alerts

      Media Coverage

      Featured, “While IP-focused firms shed attorneys, general practice firms hold steady or beef up,” Crain’s Detroit Business, June 2015

      Featured, “Shake Shack seeks patent on use of metro Detroit Chicken Shack’s name,” Crain’s Detroit Business, June 2015

      Featured, “Tech transfer office can help a professor turn intellectual gifts into gold,” Crain’s Detroit Business, December 2014

      Featured, “The Best Lawyers in America 2015,” Best Lawyers, August 2014

      Featured, “2014 IAM Patent 1000,” Intellectual Asset Management, June 2014

      Featured, “IP Stars,” Managing Intellectual Property, May 2014

      Featured, “2013 Super Lawyers List,” Super Lawyers, September 2013

      Featured, “Largest Intellectual Property Law Firm in Michigan,” Crain’s Detroit Business, April 2013

      Featured, “Top Verdicts, Settlements of 2011,” Crain’s Detroit Business, February 2012

      Featured, “High-Tech Streetlights Debit in Farmington Hills,” Crain’s Detroit Business, October 2011

      Featured, “Safe to Sue?” Crain’s Detroit Business, June 2011

      Featured, “Lunch with A Lawyer,” Detroit Legal News, February 2011

      Featured, “Patent Office Should Help Innovators,” Michigan Lawyers Weekly­, January 2011

      Featured, “On the Stand, ” Michigan Lawyers Weekly, December 2010

      Featured, “IP Law Firms See Uptick in Business, Plan to Add Staff,” Crain’s Detroit Business, December 2010

      Featured, “Fortune 100 Companies in 2008,” IP Law & Business, January 2010

      Featured, “Top Lawyers in Metro Detroit,” DBusiness, December 2009

      Featured, “2009 Super Lawyers List,” Intellectual Property Litigation, October 2009

      Featured, “Top 25,” “Nifty 50 List,” Internet Marketing Attorney, June 2004

      Publications

      Author, “What’s Next for Software Patents,” Xology Magazine, January 2015

      Author, “What a Patentee Must do to Prove Infringement and Damages of a Method Claim for Computer Software,” Michigan Computer Lawyer, 2001

      Presentations

      Speaker, “When Does It Make Sense to Litigate?,” Managing Intellectual Property Global Trademark Roadshow 2018, March 2018

      Speaker, “Intellectual property Panel,” Accelerate Michigan Innovation Competition, November 2013

      Speaker, Trade Secret Litigation,” Intellectual Property Spring Seminar, 2006

      Speaker, “Trademark and Trade Dress Fundamentals,” on behalf of Michigan Intellectual Property Law Association to member of the US District Court for the Eastern District of Michigan, 2006

       

      Education

      J.D., University of Detroit Mercy, cum laude

      M.S., Civil Engineering, University of Michigan

      B.S., Civil Engineering, University of Michigan

      Admissions

      U.S. District Court, Eastern District of Michigan  

      U.S. District Court, Western District of Michigan

      U.S. District Court, District of Colorado

      U.S. District Court, Western District of New York

      U.S. District Court, Western District of Wisconsin

      U.S. District Court, Northern District of Ohio

      U.S. District Court, Eastern District of Texas             

      U.S. Court of Appeals – Federal Circuit

      U.S. Court of Appeals – 6th Circuit 

      Michigan Supreme Court

      U.S. Supreme Court   

      Practice Area and Industries