Twice named one of the world's leading trademark lawyers, Robert O'Connell joined the firm's Intellectual Property Group in 2000. He has represented clients across many industries in connection with a broad array of intellectual property matters, including all aspects of domestic and international trademark law; registration and protection of copyrights; handling trademark and intellectual property aspects of various corporate merger and financing transactions; advising on proper trademark and copyright usage and protection on the Internet; clearance and selection of pharmaceutical names; negotiating and drafting a variety of licensing and technology transfer agreements, website development and co-branding agreements; and other IP-intensive transactions. Major transactions include the negotiation of a multi-million dollar naming rights and merchandising agreement for a major league baseball stadium.
Mr. O'Connell's trademark clients include large national and multinational companies in the food, financial services, energy, technology and pharmaceutical industries. He has also developed cost-effective trademark and brand protection strategies for numerous high and low tech start-up businesses, middle-market companies and nonprofit organizations. Mr. O'Connell also has extensive commercial litigation and dispute resolution experience in both intellectual property and other matters in state and federal courts, and before the Trademark Trial & Appeal Board.
PROFESSIONAL ACTIVITIES
Mr. O'Connell is a member of the International Trademark Association and the Boston and Massachusetts Bar Associations.
MEDIA
Mr. O’Connell’s most recent article is “New Risks of Cybersquatting with .XXX Domain,” Goodwin Procter IP Advisor, June 2011. He is also the author of “Common Scams Trademark Owners Should Be on the Lookout For,” Goodwin Procter IP Advisor, December 2010, “A Heady Mix,” a special feature in the November./December 2006 edition of World Trademark Review and “Building Stronger Brands,” which appeared in Brands in the Boardroom – 2006.
Mr. O’Connell is also a frequent contributor to Goodwin Procter's Founder's Workbench, an online resource dedicated to the emerging company community.
While attending law school, Mr. O’Connell served on the Boston College Law Review and published a note titled “The Elimination of Racism from Jury Selection: Challenging the Peremptory Challenge.”
PROFESSIONAL EXPERIENCE
Prior to joining Goodwin Procter, Mr. O'Connell was associated with the law firms of Sullivan & Worcester LLP and Hale and Dorr LLP.
BAR AND COURT ADMISSIONS
Mr. O'Connell is admitted to practice in Massachusetts and the District of Columbia, as well as the U.S. Court of Appeals for the Federal Circuit.
RECOGNITION
The World Trademark Review's WTR1000 listing of the world's top trademark practitioners, based on peer and client surveys, identified Mr. O'Connell as a leading trademark attorney, and one of the top 10 in the Boston market, in 2011 and 2012. The WTR1000 recognized Goodwin's trademark practice as "first class" and characterized Mr. O'Connell as a "distinguished" and "highly respected practitioner" who is contributing to the firm's "great standing for advisory work."