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    1. Home
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    3. Janet M. GarettoPeople
    1. Home
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    3. Janet M. GarettoPeople

    Janet M. Garetto

    Partner


    • Chicago
    • Office312.425.8514
    • jgaretto@nixonpeabody.com
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    Introduction

    Janet Garetto is a partner in the IP group. She counsels clients on IP issues facing their brands, patent protection and litigation prevention issues.

    Practice Areas

    Intellectual PropertyLife Sciences

    Industries

    Food, Beverage & AgribusinessHealthcare

    My focus

    I am consistently exploring ways to effectively leverage my experience across varied IP matters in a manner that helps clients efficiently resolve complex IP issues.

    Brand Strategy and Protection

    I help companies from diverse industries, including food and beverage, pharmaceuticals and medical devices, to develop brand strategies and goals. This involves trademark procurement, trademark portfolio development and maintenance, addressing brand misuse issues and developing internal branding guidelines and best practices. I also assist clients with day-to-day issues that arise in connection with their trademark portfolios.

    Patent Strategy

    I counsel clients on how to develop and implement patent strategies. My work includes patent procurement, patent portfolio development and maintenance, competitive patent intelligence and analysis and enforcement of patents.

    Patent Prosecution

    Leveraging my chemistry background, I focus on prosecuting medical, chemical and mechanical patents all while prioritizing the strategic goals for my clients’ significant inventions and R&D investments. I also assist with ongoing U.S. and international patent deadlines.

    Representative areas of technical patent experience

    • Chemical products and processes including silicone compositions, polymer compositions, epoxy compositions, foam products
    • Stretch-film products and processes
    • Controlled release devices
    • Herbicides
    • Food packaging and beverage canning/bottling
    • Surgical, medical and dental products
    • Consumer products
    • Design patents

    Food, Beverage & Agribusiness

    My representation in the food and beverage industry involves helping companies develop brand strategies and define product goals. I actively monitor industry trends that impact my clients’ businesses, allowing me to proactively counsel them on IP issues before they become cost prohibitive.

    Looking ahead

    I am steadfast in monitoring reports about what in-house counsel want from their outside law firms. Knowing “value-add” is and will continue to be top of mind to corporate law departments, I am continually exploring creative ways to provide thoughtful legal advice in a cost-effective manner.

    Insights

    • 2022 Food & Beverage Forum, November 2022 (Event Moderator)
    • “Tips and Tricks for Trademark Portfolio Development and Management for the US and Beyond,” Nixon Peabody Firmwide CLE Symposium, March 2022 (Speaker)
    • “Food Industry Insights,” 2019 ACG Chicago Food Industry Conference, Chicago, IL, September 2019 (Speaker)
    • “Interactive IP: Test Your Knowledge” Chicago CLE Symposium, Chicago, IL, June 2018 (Speaker)
    • “Tackling Changes in IP: How to Craft Practical Solutions,” Nixon Peabody/Dennemeyer IP Corporate Counsel Seminar, San Francisco, CA, May 2018 (Speaker)
    • “Tackling Changes in IP: How to Craft Practical Solutions,” Nixon Peabody/Dennemeyer IP Corporate Counsel Seminar, Chicago, IL, April 2018 (Speaker/Moderator)
    • “Exploring the Intersection of IP and Branding: Tips for Avoiding Common Pitfalls and Proactive Solutions for Minimizing Your Exposure,” Momentum — Food & Beverage Exchange, Chicago, IL, October 2017 (Panelist)
    • Nixon Peabody IP Corporate Counsel Seminar, Chicago, IL, June 2017 (Moderator)
    • “Demystifying IP: How to Obtain, Protect and Defend Medical Device IP,” Life Sciences Entrepreneur Boot Camps, Chicago, IL, May 2017 (Speaker/Moderator)
    • “Backing Up Your Ideas: Identify and Mitigate Intellectual Property Exposures,” Chicago, IL, March 2017 (Moderator)
    • Co-teacher of Annual PLI program entitled: “Fundamentals of Patent Prosecution: A Boot Camp for Claim Drafting & Amendment Writing” (2012–2018)
    • “Tips and Tricks for Effective Trademark Portfolio Management,” Nixon Peabody IP Corporate Counsel Seminar, Chicago, IL, June 2016 (Speaker/Moderator)
    •  “IP Budget Best Practices,” Dennemeyer Forum, Chicago, IL, April 2016 (Panelist)
    •  “Impact of Gender/Sex on Innovation and Novel Technologies,” MATTER, Chicago iGIANT Roundtable, Women in Bio, Chicago, IL, February 2016 (Panelist)
    • “Demystifying IP: How to Obtain, Protect and Defend Medical Device IP,” Nixon Peabody Life Sciences Entrepreneur Boot Camp, Chicago, IL, December 2015 (Speaker/Moderator)
    • Annual IPLAC IP Law Symposium, Chicago, IL, (2010–2015) (Moderator and Co-Chair)

    Representative experience

    • Counsel an aluminum beverage can manufacturer on how to best protect its proprietary manufacturing processes.
    • Advise an innovative beverage company on how to protect its packaging designs.
    • Represented a leading manufacturer of disposable food packaging, including an iconic brand of trash and slider bags, in protecting their trademarks and manufacturing processes.
    • Represent a leading global supplier of silicone products in a diverse range of strategic patent procurement matters.
    • Represent a large, wholesale insurance brokerage firm in a variety of trademark matters.
    • Represented a Fortune 200 company in its trademark portfolio management internationally, including through a business spin.
    • Represented a multinational company in trademark filings of multiple trademarks worldwide and managed trademark prosecution and counseling internationally.
    • Acted as lead counsel for the plaintiff, a leading medical device company, in a patent infringement action it filed against a competitor. The case was settled on terms favorable to our client.
    • Represented a dental device company in a trademark infringement suit involving a trademark for dental implants. The case was settled on terms favorable to our client.

    Admitted to practice

    Illinois
    U.S. Court of Appeals, Federal Circuit
    U.S. District Court, Northern District of Illinois
    U.S. Patent and Trademark Office

    Education

    Harvard University, "Leading Professional Services Firms" Executive Education Program, 2009
    Loyola University Chicago School of Law, J.D., cum laude
    Northwestern University, B.A., Chemistry

    Professional activities

    • Intellectual Property Law Association of Chicago, served various roles including past president (2011–2012)
    • Chicagoland Food & Beverage Network, secretary and board member
    • Executives’ Club of Chicago, including the Food Forum and Innovation Forum
    • Justinian Society of Lawyers
    • Daughters of the American Revolution
    • St. Walter Elementary School Endowment Committee, Treasurer
    • Marian Catholic High School, board member
    • Blue Island Community Healthcare Foundation, board member

    Recognition

    • Managing Intellectual Property—Recognized as an “IP Star” (2013–2021)
    • Featured in IP Stars—Top 250 Women in IP, a publication from Managing Intellectual Property, which identifies leading female IP attorneys in the U.S.
    • IAM Patent 1000—Ranked as a leading patent prosecution lawyer in Illinois (2014–2021)
    • Selected, through a peer-review survey, for inclusion in The Best Lawyers in America® 2023 in the fields of Food and Beverage Law, Litigation—Intellectual Property, Litigation—Patent, Patent Law, and Trademark Law; listed since 2013
    • Recognized as the Best Lawyers® 2018 Litigation—Intellectual Property "Lawyer of the Year" in Chicago, IL

    In the News

    • Mergers & Acquisitions

      Gemspring Capital buys Amplix

      The following article covers the merger of technology advisory firms ROI Communications, Blue Front Technology Group, and allConnex into a new company, Amplix, which was then acquired by an affiliate of Gemspring Capital Management. The coverage mentions NP as legal advisor for the three firms that merged and were acquired. Corporate partners Greg O’Shaughnessy from Boston and Rachel Pugliese from New York City led the NP deal team, which also included Corporate partners Tom McCord from Boston, Sean Clancy from Washington, DC, and Sam Kim from Chicago; Manchester Affordable Housing & Real Estate partner Mark Beaudoin; Chicago IP partner Janet Garetto; Boston Labor & Employment partner Jeff Gilbreth; Chicago Labor & Employment counsel Kamau Coar; Corporate associates Paul DeTurk and Carolyn Glynn from Boston and Corey Habib from Manchester; Chicago IP associate Eliana Torres; Manchester Corporate department attorney Dave Zimmermann; and Boston Corporate senior paralegal Robert Isaacson.

      Dec 13, 2022
    • Channel Futures

      PE-backed New England technology advisor team-up forms Amplix

      The following article covers the merger of technology advisory firms ROI Communications, Blue Front Technology Group, and allConnex into a new company, Amplix, which was then acquired by an affiliate of Gemspring Capital Management. The coverage mentions NP as legal advisor for the three firms that merged and were acquired. Corporate partners Greg O’Shaughnessy from Boston and Rachel Pugliese from New York City led the NP deal team, which also included Corporate partners Tom McCord from Boston, Sean Clancy from Washington, DC, and Sam Kim from Chicago; Manchester Affordable Housing & Real Estate partner Mark Beaudoin; Chicago IP partner Janet Garetto; Boston Labor & Employment partner Jeff Gilbreth; Chicago Labor & Employment counsel Kamau Coar; Corporate associates Paul DeTurk and Carolyn Glynn from Boston and Corey Habib from Manchester; Chicago IP associate Eliana Torres; Manchester Corporate department attorney Dave Zimmermann; and Boston Corporate senior paralegal Robert Isaacson.

      Dec 13, 2022
    • Food Business News

      Staking a claim with gluten-free innovation

      This article on gluten free labeling and its marketing landscape quotes Food, Beverage & Agribusiness co-leader and Chicago Intellectual Property partner Janet Garetto for her outlook on the FDA’s stricter rules and best practices for food manufacturers around recordkeeping and quality control for their products.
      May 4, 2021
    • RestaurantOwner.com

      How to prepare NOW for the Restaurant Revitalization Fund

      Food, Beverage & Agribusiness co-leader and Chicago Intellectual Property partner Janet Garetto is quoted extensively in this article on best practices for restaurants and what they should do as they anticipate the federal grant’s rollout.
      March 27, 2021
    • Supermarket Perimeter

      Holiday traffic expected to remain high during pandemic, Nixon Peabody predicts

      This feature article highlights Food, Beverage & Agribusiness co-leader and Chicago partner Janet Garetto’s industry outlook on major food retail ahead of the Thanksgiving holiday, and during the COVID-19 pandemic.
      Nov 16, 2020
    • Chicago Daily Law Bulletin

      A Full Plate

      For the 20th anniversary of Chicago Daily Law Bulletin’s 40 Under 40 list, Chicago Intellectual Property partner Janet Garetto is featured in an article on her practice and how it connects to her family’s background operating a regional pizza chain.
      Sep 5, 2019
    • FoodNavigator-USA

      Building a new brand? IP attorney shares basic exercise to traverse starting a new trademark

      Chicago IP counseling and transactions partner Janet Garetto is featured in this Q&A article about IP protections for food manufacturers.
      Oct 6, 2017
    • Chicago Daily Law Bulletin

      Protecting attorney-client privilege in asset sales

      Chicago IP Counseling & Transactions partner Janet Garetto and Chicago IP Litigation partner Russ Genet co-authored this column on protecting the valued attorney-client privilege. Click here to read the full article.
      Oct 15, 2015
    • Law360

      Courts Line Up Behind 3rd Circ.'s Ascertainability Logic

      Buffalo Commercial Litigation associate Tracey Ehlers, Buffalo Commercial Litigation partner Viv Quinn, and Chicago IP Counseling & Transactions partner Janet Garetto discuss federal courts’ increased attention to the ascertainability of class members especially in the food and beverage industries where consumers do not typically retain receipts.
      July 25, 2014
    • Chicago Daily Law Bulletin

      Power Lunches

      This feature story profiles a group of Chicago’s female managing partners, including Chicago office managing partner Janet Garetto.
      April 28, 2014

    Insights And Happenings

    View All
    • Article

      Food & Beverage Crystal Ball: Trends we’re following

      April 18, 2022
    • Article

      Virtual trademarks? METAmorphosis in the food and beverage industry

      March 15, 2022
    • Alert

      Food & Beverage Crystal Ball: Trends we’re following

      Jan 4, 2022
    View All

    Professionals in the Practice Area

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      • Office:213.629.6161
      • slevy@nixonpeabody.com
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      • Boston
      • Office:617.345.1089
      • rbraich@nixonpeabody.com
      Ravinderjit Braich, Ph.D.
    • Jennette W. Psihoules

      Counsel
      • Washington DC
      • Office:202.585.8385
      • jpsihoules@nixonpeabody.com
      Jennette W. Psihoules
    • Andrew Y. Choung

      Partner
      • Los Angeles
      • Office:213.629.6166
      • achoung@nixonpeabody.com
      Andrew  Y. Choung
    • Jennifer Hayes

      Partner
      • Los Angeles
      • Office:213.629.6179
      • jenhayes@nixonpeabody.com
      Jennifer Hayes
    View All

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