Jay Burgett

PARTNER, OWNER

Jay Burgett is a partner at Kucala Burgett Law with over a decade of experience in intellectual property law. Jay has navigated the complexities of trademark, copyright, and patent law by managing global trademark portfolios, handling international litigation and disputes, and developing robust anti-counterfeiting strategies.

EDUCATION

J.D., University of Illinois at Urbana-Champaign, 2001

B.A., Loyola University of Chicago, 1998

ADMISSIONS

Illinois Supreme Court

U.S. Dist. Court, N.D. Illinois

U.S. Dist. Court, C.D. Illinois

U.S. Dist. Court, E.D. Wisconsin

U.S. Dist. Court, W.D. Wisconsin

U.S. Court of Appeals, Seventh Circuit

RECENT RECOGNITIONS

World Trademark Review 1000, 2015 - 2022

Leading Lawyers Network, Illinois Emerging Lawyers

Secured half a billion dollars in judgments against trademark counterfeiters.

Illinois Super Lawyers, 2018-2022

Illinois Rising Stars, 2011

MEMBERSHIPS & AFFILIATIONS

International Trademark Association

Building Bridges Committee

Volunteer Coach and Mentor for High School
Incubator program

Volunteer Mentor for American Corporate Partners

Richard Linn American Inn of Court

Illinois State Bar Association

Areas of Emphasis and Experience

Global brand clearance, protection, and risk assessment

Intellectual property enforcement actions, including foreign litigation

Worldwide trademark counseling and portfolio management

Transactional and licensing arrangements

Advertising and marketing review, including social media legal issues

Practice Summary

Joe Kucala is a partner and founder at KUCALA LAW and regularly advises large multi-national companies and start-ups on all areas of intellectual property and advertising law, with particular emphasis on issues related to brand and copyright clearance, protection and enforcement across a range of industries. Joe’s underlying goal is to strengthen his clients’ famous brands and their value and has a clear focus and strategy to do so. His practice focuses on U.S. and international multi-jurisdictional intellectual property enforcement actions; client counseling on marketing, sponsorship, and trademark licensing arrangements; conducting intellectual property audits; advising on anti-counterfeiting matters; and United States and international trademark and copyright prosecution. Joe’s depth of experience affords him a keen insight into his client’s
businesses.

In addition, Joe provides extensive advice to clients regarding a variety of transactional matters, such as IP licensing agreements, entertainment
ventures, joint marketing agreements, and software licensing agreements.

His clients rely on his practical approach and experience in a wide range
of industries. Prior to founding Kucala Law, Joe spent a decade as partner at a leading national trademark law firm and was in-house counsel with the Trademark & Copyright Group of Hewlett-Packard Company’s Legal Department. While at HP, he had worldwide trademark and copyright responsibility for one of HP’s business units and advised his clients on the adoption and protection of trademark and copyright assets, and provided extensive legal advice on worldwide intellectual property enforcement issues.

Representative Matters

Global brand clearance:

  • Provides regular global brand clearance advice for Fortune 10 company across a range of consumer businesses and professional.

  • Provides regular global brand clearance advice for one of the nation’s largest trade associations.

Copyright:

  • Provides regular copyright counseling and clearance to one of the largest audiobook publishers and leading entertainment content producer.

Trademark enforcement:

  • Lead counsel in trademark infringement action resulting in $15M+ judgment in client’s favor

  • Actively counsel one of the nation’s largest auto manufacturers in their brand protection efforts.

  • Lead counsel in numerous trademark counterfeiting actions resulting in $500 million in judgment.

  • Represents many brand owners in trademark opposition matters.