Janet M. Garetto

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.

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.

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)