Jaclyne D. Wallace

Senior Counsel

Overview

Jaclyne D. Wallace is a senior counsel and intellectual property lawyer with Foley & Lardner LLP, where she has a wide range of experience in intellectual property prosecution, counseling, and litigation, including trademark, copyright, patent, trade secret, trade dress, false advertising, false marking, and unfair competition matters, as well as other complex civil litigation. Ms. Wallace is a member of the firm’s Intellectual Property Litigation Practice and Trademark, Copyright & Advertising Practices and the Food & Beverage Industry Team.

Ms. Wallace's litigation experience includes intellectual property cases relating to health and beauty products, footwear, food and beverage products, urinals, computer software, musical works, convenience store services, banking services, restaurant services, advertising services, and various other consumer products and services.

Aside from her litigation work, Ms. Wallace also assists clients with the procurement and protection of U.S. and international trademarks, and has experience managing the domestic and international trademark portfolios of several large clients. Ms. Wallace’s trademark protection experience includes the identification of intellectual property rights, preparation of opinions on trademark use and registrability, establishment of trademark usage guidelines, and enforcement of trademarks against third parties. In addition, Ms. Wallace has experience before the Trademark Trial and Appeal Board, including opposition and cancellation proceedings.

Ms. Wallace also has experience reviewing consumer products, with a particular focus on trade dress issues and effective ways to protect and enforce design rights while avoiding third party claims.

Community Engagement

Ms. Wallace is committed to pro bono work and community service. She has worked extensively as a volunteer attorney for Lawyers for the Creative Arts, and has litigated several cases involving both musical and visual works. Ms. Wallace has also represented a pro bono client in a complex employment discrimination matter.

Education

Ms. Wallace received her law degree from DePaul University College of Law (J.D., magna cum laude, 2007), where she was elected to the Order of the Coif. During law school, she was a member of the DePaul Law Review, and served as the editor-in-chief of the DePaul Intellectual Property Reporter. Ms. Wallace received her bachelor’s degree, with high honors, from Fairfield University (B.S., magna cum laude, 2004).

Admissions

Ms. Wallace is admitted to practice before the United States District Court in the Northern District of Illinois and the Illinois Supreme Court.

Representative Matters

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Defended the Textron entities in a false patent-marking matter. The first complaint was dismissed pursuant to a motion to dismiss, and the amended complaint was also dismissed with prejudice, following an additional motion practice and resolution with plaintiffs wherein no fees were paid by Textron entities.
In August 2011, three weeks short of trial, Foley attorneys obtained a very favorable settlementof pending trademark infringement and unfair competition suit brought against Sloan Valve byarch-competitor Zurn Industries. Zurn’s claims were dismissed with prejudice and Sloan is freeto continue to use the disputed term “pint” to describe its high efficiency urinals. In 2008, Zurnfiled the suit alleging Sloan’s uses of “Sloan 1 Pint Urinal System” and “Sloan Pint Urinal”infringed Zurn’s federally registered marks THE PINT also for pint urinals, as well as ZURN 1,ZURN ONE and ZURN ONE SYSTEMS. Sloan filed counterclaims seeking cancellation ofZurn’s THE PINT registration, and for sales of plumbing products bearing counterfeit copies oftheir BIOGARD trademark. The district court entered judgment against Zurn, including thegrant of monetary relief and a permanent injunction in early 2009. In March 2011, the courtsignificantly narrowed the issues to be tried in ruling on Sloan’s July 2010 summary judgmentmotion, including dismissing Zurn’s actual damages claims, finding Zurn could prove noincidences of actual confusion and no likelihood as to the source of the respective parties’ pinturinals. Facing a jury trial solely upon Zurn’s late made claim of initial interest confusioncoupled with a claim for an accounting of wrongful profits, and Sloan’s trademark cancellationcounterclaim and affirmative defenses, including fair use, Zurn sued for peace.