Byron A. Bilicki

Attorney Profile

Top Rated Intellectual Property Attorney in Jamestown, NY

The Bilicki Law Firm, PC
1285 N Main St
Jamestown, NY 14701
Phone: 800-392-6852
Selected to Super Lawyers: 2020 - 2021
Licensed Since: 1986
Practice Areas: Intellectual Property (80%), Intellectual Property Litigation (20%)
Attorney Profile

Founder of Bilicki Law, Byron A. Bilicki represents clients both internationally and nationally and has offices throughout the United States. While he got his start in New York City, he is experienced enough to take on cases throughout the country of trademark applications, patent applications, copyright, patent and trademark litigation, and intellectual property litigation as a registered patent attorney with the United States Patent and Trademark Office.

Mr. Bilicki offers counsel and opinion when it comes to international practice, licensing and agreements, due diligence investigations, counseling and opinions, and prosecutions. Admitted to practice in both Pennsylvania and New York, he is also admitted to practice before the following federal courts: the United States District Court for the Western District of Pennsylvania, the United States District Court for the Eastern District of New York, the United States District Court for the Southern District of New York, the United States Court of Appeals for the 3rd Circuit and the United States Court of Appeals for the Federal Circuit.

After graduating from Allegheny College with a Bachelor of Science and a major in chemistry, Mr. Bilicki moved on to law school. He attended the University of Pittsburgh School of Law and graduated with his Juris Doctor in 1985. Currently, he is a member of the Pennsylvania Bar Association, the New York State Bar Association, the American Bar Association and the American Intellectual Property Law Association.

Within his patent prosecution practice area, he has experience in fields as diverse as computer technology and software, ultrasonic transducers, heavy-duty truck and automotive parts, consumer products, optical equipment, and medical devices. With over three decades of experience, he is highly qualified to handle even the most complex intellectual property issues.

Practice Areas
  • 80%Intellectual Property
  • 20%Intellectual Property Litigation
Focus Areas

Copyrights, Patents, Trademarks

Selections

2 Years Super Lawyers
  • Super Lawyers: 2020 - 2021

About Byron A. Bilicki

Admitted: 1986, New York

Professional Webpage: https://www.bilickilaw.com/attorney/byron-a-bilicki/

Special Licenses/Certifications

  • Registered Patent Attorney with the U.S. Patent and Trademark Office - there are only a limited number of attorneys that are registered as a patent attorney with the USPTO office in the United States. In order to qualify, the attorney must have an undergraduate degree in a science related field such as chemistry, biology, or engineering, just to name a few.

Educational Background

  • Allegheny College, Meadville, Pennsylvania, B.S., Bachelor of Science, Major: Chemistry - 1980

Representative Clients

  • Jamestown Plastics Awarded Patents‎ (USPTO), 2020
  • Fisher Hamilton v. Jamestown Metal ProductsElkin Manufacturing Inc. v. Old Dominion Brush Co.Sunrise Medical HHG v. AirSep Corp.Mollo v. Elkin Manufacturing, Inc.Truck-Lite v. PanorTruck-Lite has been a client of the firm's for the last 15 years and holds 90% of the world's intellectual property for lighting in automobiles., 2019
  • Truck-Lite Awarded Patents (USPTO), 2020
  • Car-Freshner v. Scented Promotions (NDNY), 2020

Verdicts/Settlements

  • Truck-Lite v. Grote (federal court-WDNY-Buffalo). We, on behalf of TL, recently (last month) won a key decision from the Court, denying Gr‎ote's motion to dismiss for lack of personal jurisdiction and for summary judgment, in this highly watched case, involving issues of trade dress registrability, trade dress infringement and anti-trust, in the very unsual context of a simultaneous appeal (on the registrability issue) and first impression trial (on the infringement and anti-trust issues) before the federal District Court. As mentioned above, this is a fairly high profile trade dress case, with an very unusual procedural posture. Very few if any cases like it pending in the US. A lot is at stake for the parties as well.  ‎We represent Truck-Lite (TL) a global leader is the manufacture and sale of vehicular lighting, safety and telematics products for the heavy duty truck transportation industry. Several years ago, Truck-Lite undertook the reidesign of its flagship product, the Model 44 stop/tail/turn lamp (ie, the lights you see on the back of a semi as you follow it on the Interstate). The lamp's light sources are light emitting diodes (LEDs), which appear as distinct points of light.   In redisigning its Model 44, TL wanted to create a distinctive trade dress for the product in the way it arranged the LEDS or points of light. It chose what became known as a Penta Star design or pattern ( 5 LEDS around one arranged in the shape of a Penta Star). It did so, to cause consumers to associate this Penta Star Pattern with TL as the source of the Stop/Tail/Turn Lamp.   TL turned to us to develop a protection strategy to protect this trade dress pattern as incorporated into the new Model 44 as well as a number of other lighting products. TL wanted to create a family of products all having this Penta Star LED pattern, so the source of the products became immediately recognizable‎ to consumers as TL. We developed a protection strategy unique to the truck transportation and lighting industry. Analogizing the Penta Star pattern to Burberry's famous plaid design (incorporated into a number of items, shirts, ties, overcoats, umbrellas), which immediately identifies Burberry as the source of such products, we sought trade dress protection for the Penta Star LED pattern as it applies to T's family of lighting products. We were successful in achieving trade dress protection for the Penta Star Pattern. TL's sales of the Model 44 soared to a half a Billion Dollars in sales in the ensuing years, dominating the Stop/Tail/Turn lamp market.   TL's largest competitor could not compete with its own LED stop/tail turn lamp ( an 8 around 2 LED pattern). So, it sought to cancel TL's trade dress so it could copy the Penta Star pattern and sell lamps, into the aftermarket (ie, replacement lamps) having TL's trade dress. A desparate measure indeed. But, Grote had no choice. The case was litigated for several years before the Trademark Trial and Appeal Board (TTAB. In a key holding, the TTAB found TL's Penta Star pattern to be non-functiona (as such capable of trade dress protectionl, as we had argued. The TTAB further held that TL's Penta Star design had not yet acquired secondary meaning in view of the circumstantial evidence presented at trial, and urged TL to present direct evidence of distinctiveness. TL appealed the no seconday meaning finding to the WDNY and at the same time filed claims against Grote for trade dress infringement, as Grote had begun selling products incorporating TL's trade dress. Grote has since (this year) filed counterclaims for anti-trust violations against TL in view of TL's dominant position in the market place.   Grote's anti-trust case‎ was filed as the DOJ has recently begun anti-trust cases against major online platforms and social media giants, signaling an awakening of anti-trust enforcement activity, which has been virtually non-existent for 20 years. Additionall)n the trade dress/anti-trust interface is a very interesting one with relatively scant case law on this issue., 2020

Bar/Professional Activity

  • American Bar Association, Member, 2020
  • American Intellectual Property Law Association, Member
  • New York State Bar Association Pennsylvania State Bar Association Erie County Bar Association (NY) Chautauqua County Bar Association (NY) Erie County Bar Association (PA)   New York, 1986 Pennsylvania, 1987 U.S. Court of Appeals Federal Circuit, 1991 U.S. Court of Appeals 3rd Circuit, 1989 U.S. District Court Southern District of New York, 1986 U.S. District Court Eastern District of New York, 1986 U.S. District Court Western District of Pennsylvania, 1987 U.S. Patent and Trademark Office, 1987

Industry Groups

  • Automobile
  • Automobile Plastics
  • Food And Beverage Industry
  • Manufacturing
  • Medical Products
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Office Location for Byron A. Bilicki

1285 N Main St
Jamestown, NY 14701

Phone: 800-392-6852

Last Updated: 4/1/2021

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