Elizabeth Baio
Partner / Co-Lead, International & Foreign Associate Network IP Team
Introduction
Ela Baio’s practice is dedicated to intellectual property counseling. Ela handles various aspects of patent and trademark counseling, prosecution, and enforcement for a broad range of companies to develop effective intellectual property protection strategies nationally and globally that align with the companies’ business objectives.
My focus
I focus my practice on intellectual property, including patent and trademark matters. My experience ranges from prosecuting US and foreign patent and trademark applications, clearance work, due diligence evaluations, and preparing validity and infringement opinions, to client management, licensing, domain name enforcement, and litigation matters.
With my background in chemical engineering, I have a special emphasis in the mechanical and chemical areas. I have counseled clients regarding patent protection for chemical products and processes; controlled release devices; wagering systems; packaging and storage devices; surgical, medical, and dental products; high-speed manufacturing machinery; biomechanical devices; and consumer products. I have conducted numerous personal interviews at the USPTO and defended patent oppositions before the European Patent Office.
In the trademark area, I am involved in all stages of trademark prosecution, including developing clients’ brands, developing strategic trademark filing strategies, responding to office actions, submitting post-registration maintenance documents, and participating in opposition and cancellation proceedings. I also assist clients in managing their trademark portfolios, determining the availability of marks, monitoring the use of potentially confusing marks, and enforcing and defending trademark rights throughout the world. I have counseled clients regarding trademark matters in the fields of publishing and printing, insurance, banking, entertainment, healthcare, software, blockchain and cryptocurrency, dental goods, food and beverage, fashion, cosmetics, consumer products, and coin counting.
Looking ahead
Given the ease of accessing, importing, and copying products and services across borders and jurisdictions, it is critical for companies to have a strategic plan to broadly clear and protect their inventions and brands.
/Insights
- “Trademarks: Building Your Brand,” Virtual European Innovation Academy, July 20, 2021 (Keynote Speaker)
- “Trademarks & Branding 101,” Virtual European Innovation Academy, September 23, 2020 (Keynote Speaker)
- “IP Mechanics: How to Nail Down Your Patents and Trademarks,” European Innovation Academy, July 23, 2019, Torino, Italy (Speaker)
- “IP Mechanics Workshop,” European Innovation Academy, July 24, 2018, Cascais, Portugal (Speaker)
- “Trademarks: Points and Pitfalls to Ponder,” European Innovation Academy, July 24, 2017, Torino, Italy (Keynote Presenter)
- ABA - IPL Newsletter, contributing author of summaries of recent developments in IP law (2008-present).
In the news
Taco John’s crafts its own victory in the ‘Taco Tuesday’ battle
July 19, 2023Chicago Intellectual Property partner Ela Baio is quoted in the following article on Taco John’s decision to give up its rights to the “Taco Tuesday” trademark after Taco Bell filed a legal petition and launched a national campaign calling for its cancellation.
- QSR Magazine
Taco John’s to end ‘Taco Tuesday’ trademark
July 18, 2023Chicago Intellectual Property partner Ela Baio is quoted in the following article on Taco John’s decision to give up its rights to the “Taco Tuesday” trademark after Taco Bell filed a legal petition and launched a national campaign calling for its cancellation.
- QSR Magazine
Inside the ‘Taco Tuesday’ battle between Taco Bell and Taco John’s
June 6, 2023Chicago Intellectual Property partner Ela Baio is quoted throughout this article, which analyzes Taco Bell’s attempt to cancel trademark registrations for “Taco Tuesday.” Those trademarks have been owned by Taco John’s since 1989 in all states except for New Jersey, where it is controlled by Gregory’s Restaurant & Bar.
- Law360
Brand Battles: Instagram empires fight over 'meme' game trademark
This roundup of recent actions at the Trademark Trial and Appeal Board mentions the firm for the work of Chicago Intellectual Property partner Elizabeth Baio and Los Angeles Corporate partner Ellie Heisler for representing game maker Doing Things Media LLC in its trademark dispute with What Do You Meme LLC.May 21, 2021
Admitted to practice
Illinois
U.S. District Court, Northern District of Illinois
U.S. Patent and Trademark Office
Education
Loyola University Chicago School of Law, J.D.
University of Notre Dame, B.S., Chemical Engineering
Professional activities
- Intellectual Property Law Association of Chicago
- International Trademark Association
- Women Entrepreneurs Grow Global, Board member
- Notre Dame Club of Joliet, Board and Scholarship Committee member
Recognition
- World Trademark Review 1000—Recommended as a leading Illinois lawyer for trademark prosecution and strategy (2024-2025)
Insights And Happenings
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View AllSeth D. Levy
Partner / Leader, Intellectual Property Practice- Los Angeles
- Office:+1 213.629.6161
- slevy@nixonpeabody.com
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Daniel J. Schwartz
Partner / Deputy Leader, Intellectual Property Practice- Chicago
- Office:+1 312.977.4432
- djschwartz@nixonpeabody.com
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Erica J. Van Loon
Partner / Team Leader, Copyright, Trademark, and Media Litigation- Los Angeles
- Office:+1 213.629.6031
- evanloon@nixonpeabody.com
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Janet M. Garetto
Partner / Co-Lead, Food, Beverage, & Agribusiness IP Team- Chicago
- Office:+1 312.425.8514
- jgaretto@nixonpeabody.com
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