Robert M. O’Connell, Jr.

Bob also has experience in commercial litigation and disputes in state and federal trial and appellate courts as well as in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) and in UDRP and other domain name proceedings.

Every year since 2011, Bob has been recognized as a leading lawyer for trademark prosecution and strategy in the World Trademark Review 1000. The guide has described Bob as “distinguished” and a “highly respected practitioner” who is a “trusted advisor in helping to build value in…brands” and “commands respect, particularly in the strategy and commercial field.” The guide has also noted that Bob “matches anybody on expertise and exceeds most, if not all, on responsiveness and efficiency.” Clients have also lauded Bob for his “pragmatism, calmness under pressure, and fine-grained, detailed work product.”

Notable Experience and Client Impact

• Negotiated a multi-million dollar naming rights and merchandising agreement for a Major League Baseball (MLB) stadium
• Advised a famous sports footwear and apparel brand on trademark enforcement and opposition matters
• Negotiated the naming rights and a sponsorship agreement for a prominent performing arts center
• Advised on a trademark and merchandise license agreement for a large resort casino in Las Vegas
• Represented a large global retailer on trademark clearance matters across numerous business lines as well as on complex trademark prosecution and TTAB matters
• Provided legal counsel on the IP aspects of a groundbreaking series of securitization deals involving music and television rights with household-name artists
• Advised a large national bank on a portfolio of hundreds of federal and state trademarks and an active TTAB and UDRP enforcement program
• Represented a global spirits company with hundreds of brands and an extensive enforcement docket
• Advised a leading global private equity firm on a corporate identity refresh
• Provided legal counsel to a national women’s apparel retail chain with stores across the United States and Canada
• Represented a branded pharmaceutical company with pioneering products for both human and veterinary medicine
• Provided strategic brand-protection advice to numerous start-up and emerging companies leading up to their sale or IPO

Bob has served as a guest lecturer on trademark and copyright law at Boston University Questrom School of Business and the Carroll School of Management at Boston College. He is a member of the International Trademark Association (INTA) and past editorial board member of its scholarly journal, The Trademark Reporter. Bob is also a member of the Pharmaceuticals Trade Marks Group, the Copyright Society, and the Boston Bar Association.

Prior to joining Nutter, Bob practiced intellectual property law at several national and international law firms.