Jackson Walker Partners With Advitam IP to Secure Federal Appellate Victory for Tenax S.p.A.


On Monday, April 8, Jackson Walker secured an appellate victory in the United States Court of Appeals for the Federal Circuit on behalf of Tenax S.p.A., a world leader in the adhesive and stone sector. The Firm partnered with Michele Katz, founder of Chicago-based Advitam IP, to handle the appeal from the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB).

The case arose when the appellant filed a trademark application for a mark which the TTAB found to be too confusingly similar to the client’s registered trademark of nearly 20 years. The client challenged the trademark application after it was filed in 2014. The Appeals Court summarily affirmed the Board’s findings, granting Tenax a total victory.

Jackson Walker partners John M. Jackson and Matt C. Acosta, who argued the appeal, partnered with Advitam IP on behalf of Tenax. Established in 1960, Tenax S.p.A. operates in five continents and has production sites and sales offices in Italy, the U.S., China, and Germany.

To explore Jackson Walker’s experience in obtaining, protecting, and enforcing intellectual property rights in the U.S. and abroad for our clients, visit our Intellectual Property practice page.

Meet John

John M. Jackson has represented clients  in patent litigation and complex commercial litigation matters in federal and state courts throughout the country, and in the International Trade Commission. John has served as trial counsel in more than 125 patent infringement lawsuits nationally and has handed matters before the International Trade Commission. has tried three major patent infringement cases to a jury and has considerable experience with all aspects of the claim construction or Markman process in patent infringement lawsuits. He is also co-chairs the Firm’s Cybersecurity Litigation Group and counsels clients concerning data privacy issues. He has earned certification as a Certified Information Privacy Professional (CIPP/US) and a Certified Information Privacy Manager through the International Association of Privacy Professionals.

Meet Matt

Matt C. Acosta is an intellectual property litigator and advisor experienced in a variety of intellectual property matters. Matt advises clients on a variety of commercial issues, including effective management of e-discovery costs, developing practical expert witness strategies, and navigating the practices of federal courts. Though based in Texas, Matt has litigated intellectual property cases throughout the country and has argued before the Judicial Panel on Multi-District Litigation. He has represented and advised a variety of clients, including Fortune 500 companies, in the consumer electronics, biomedical, internet service, mobile application, and telecommunication technology spaces. Matt is a founding member of Jackson Walker’s Artificial Intelligence and Blockchain & Cryptoassets practice groups. He also advises clients and has written a number of articles relating to the emerging Internet of Things (IoT).

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