Alain Villeneuve practices in the area of intellectual property law, assisting clients across a wide array of industries in corporate, intellectual property and immigration matters. He routinely handles patent and trademark registration, monitoring and defense efforts. Mr. Villeneuve has represented clients before United States and global regulatory and enforcement boards, including the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (USPTO) and the World Intellectual Property Organization (WIPO).
A former nuclear engineer and a licensed U.S. Patent Attorney, Mr. Villeneuve is experienced in drafting patent applications in a number of fields, including mechanical, electrical, wireless and computer software, and has filed for international patent and trademark applications under the PCT and Madrid Systems. Notably, one of the patents Mr. Villeneuve secured was cited by the U.S. Supreme Court in its decision in Bilski v. Kappos.
Mr. Villeneuve is a 2003 cum laude graduate of the University of Illinois College of Law and a graduate of Ecole Polytechnique of Montréal. He is a native speaker of French and also fluent in Italian and English.
Areas of Practice
Intellectual Property Law
Patents
Trademarks
Representative Matters
- Represented Fitness Anywhere, LLC in a patent and trademark litigation case against Amazon-based infringer WOSS Enterprises, LLC, who sold an infringing product and misused mark, “suspension training.”
- Represented a client who owns DIGI-ME, a multimedia recruitment platform operator, in the cancellation and opposition of mark DIGI.ME for the accumulation of digital-based services on the internet.
- Successfully defended Rosemoor Suites, LLC against Marriott Hotels LHO Chicago Hotels, Inc.’s injunction against use of name “Hotel Chicago.”
Admissions
- Illinois
- U.S. Patent and Trademark Office
- U.S. District Court for the Northern District of Illinois
- U.S. Court of Appeals for the Seventh Circuit
- U.S. Court of Appeals for the Federal Circuit
- England and Wales
Education
- University of Illinois College of Law, J.D., cum laude, 2003
- Ecole Polytechnique of Montreal, B.E., 1991
Experience
Duane Morris LLP
- Partner, 2018-presentVedder Price PC
- Shareholder, 2013-2018
- Associate, 2006-2013Swanson Martin & Bell
- Associate, 2004-2006
Professional Activities
American Bar Association
International Bar Association
The Law Society (UK)
Chicago-Kent College of Law
- Adjunct Professor (International Intellectual Property Law)
Honors and Awards
Listed in Leading Lawyers, 2017
Listed in Illinois Super Lawyers Rising Stars, 2009-2013
Civic and Charitable Activities
Clowns Without Borders
- Board of Directors
Selected Publications
- Co-author, "U.S. Trademark Office Offers New Tools Against Registrations Granted Without Use in Commerce," Duane Morris Alert, January 25, 2021
- Co-author, "New Copyright Claims Board May Have Limited Appeal," Duane Morris Alert, January 19, 2021
Co-author, "The New Gold Rush to the Trademark Office," The Trademark Lawyer 2021 Annual, December 2020
- Co-author, "Is Your Trademark Case Exceptional? Seventh Circuit Extends Octane Standard to the Lanham Act," Duane Morris Alert, November 11, 2019
Co-author, "2 High Court Decisions Highlight Copyright Act Complexities," Law360, March 20, 2019
Mentioned in "Exercise Device Co. Owes $11.9M For Infringed Patent," Law360, November 21, 2018
Quoted, "Judge Grants Reconsiders, Reinstates Validity of TRX Fitness Equipment Patent Claims," IP Watchdog, November 13, 2018
Author, "The Slants Win in Matal v. Tam: Trademark Registration Cannot Be Denied for Offensive Terms," Vedder Price, June 26, 2017
Co-author, "DMCA Takeaways From Zillow For Website Owners," Law360, May 2, 2017
Author, "B&B Hardware, Inc. v. Hargis Industries, Inc.: Trademark Litigation Might Get Simpler," Vedder Price, March 2015
Co-author, "The Shadow Of The Billion-Dollar Copyright Award," Law360, May 2, 2014
Selected Speaking Engagements
- Speaker, "Intellectual Property and Digital Legal Training Day," LEGI Team, Paris, France, December 10, 2019
Speaker, "Registration Issues Critical to Copyright Litigation," LCA, The John Marshall Law School, Chicago, Illinois, July 26, 2018
Speaker, "Copyright Registration Workshop," LCA LawSmarts series, Chicago, Illinois, July 12, 2018