Summary

Paul brings a wealth of knowledge to the firm’s Intellectual Property practice group working with large brands in the United States and around the world on the adoption, licensing, prosecution and enforcement of trademarks. He enjoys a global reputation in matters related to domain name disputes, domain name transactions, the creation of top-level domain names and advising brand-friendly ICANN Contracted Parties. Paul served a critical role in strategy and negotiations related to The Internet Corporation for Assigned Names and Numbers (ICANN)’s adoption of “Specification 13,” in which ICANN recognized the unique role and responsibilities of brand registries.

Paul has successfully handled more than 500 proceedings under the Uniform Domain Dispute Resolution Procedure (UDRP). He has also handled multiple litigations brought under the Anti-Cybersquatting Consumer Protection Act (ACPA) and successful actions under foreign domain name dispute policies.

Paul also has broad experience in online copyright and brand identity disputes and transactions as well as counseling related to intellectual property aspects of social and mobile media.

Prior to joining Taft, Paul was a partner at a global law firm and served as in-house counsel at True Value Hardware where he provided legal services related to trademarks, advertising, shareholder relations and franchising. He has taught Advanced Trademarks and Cyberlaw at DePaul Law School.

Paul is the author of several books on domain names and social media, including McGrady on Social Media Aspects of Employment Law, McGrady on Social Media and McGrady on Domain Names all of which are published by LexisNexis.

Paul has been honored by World Trademark Review's WTR 1000 since 2011 in Illinois for both Trademark Disputes and Trademark Prosecution, as well as ranked nationally for Domain Name/ICANN matters.

Awards

  • Honoree, World Trademark Review, WTR 1000 (2011-present)

  • Honoree, IP Law & Business Magazine, Top 50 Under 45 (2008)

  • Honoree, Leading Lawyers (2019)

All Service Areas

Education

  • DePaul University College of Law (1996)
  • Cedarville University (1993)

    bachelor's degree in history and political science

Admissions

  • State - Illinois
  • State - Ohio
  • Federal - Northern District of Illinois
  • Federal - District of Colorado
  • Federal - Western District of Michigan
  • Federal - U.S. Court of Appeals 7th Circuit

Speeches and Publications

  • "Digital Marketing Trends from a Law Perspective," The Trademark Day, January 2019
  • "Internet Enforcement After GDPR," The Trademark Day, January 2019
  • "WHOIS, GDPR and ICANN: Policing and Protecting IP Rights Post-GDPR," Strafford Live CLE webinar, October 2018
  • "Domain Name Rights Protection Mechanisms & ICANN Developments," Strafford Live CLE webinar, November 2017
  • "Legal Issues Surrounding Website Domain Names," Iowa State Bar Association Webinar, July 2017
  • “The Future of Domain Names and the Internet and the gTLD Process,” Going Global: Managing and Protecting Intellectual Property Online Conference, June 2014
  • “Breach Notices and Litigation Holds: Law Meets IT,” CCCU COT Conference, June 2014
  • “Rock and Rule the Podium,” INTA Annual Meeting, May 2014
  • “Understanding and Managing the Launch of New gTLDs,” AIPLA Annual Meeting, October 2011
  • “To the Right of the Dot,” INTA Trademark and the Internet, September 2011
  • “Social Responsibility,” INTA Trademark and the Internet, September 2011
  • “New gTLDs: The Who, What, Where, Why, and How Much?” Chicago Bar Association, Internet Committee, September 2011
  • “Domain Name Expansion: Pros, Cons, and Costs,” Association of Corporate Counsel – Chicago Chapter, June 2011
  • “The Do’s and Don’ts of Starting an Internet Business,” LexisNexis webinar, June 2011
  • “INTA Policy Update – New gTLDs,” INTA Annual Meeting, May 2011
  • “Current State of the Uniform Dispute Resolution Policy (UDRP)” webinar, ICANN, May 2011
  • “MODELS:  New Extensions, New Opportunities,” .nxt Conference, February 2011
  • “Internet Domain Name Dispute Resolution,” Signifiers in Cyberspace Symposium, Case Western Reserve University, College of Law, November 2009
  • “Domain Name Dispute Resolution,” IDRC, October 2009

Professional Affiliations

  • International Trademark Association

    Member, Board of Directors (2017 - 2019)
    Chair, Internet Committee (2017 - 2019)
    Former Vice-Chair, Internet Committee (2015 - 2017)
    Former Chair, Online Trademark Use Sub-Committee, Internet Committee (2014 - 2015)
    Former Chair, Internet Governance Sub-Committee (2012 - 2014)

  • Intellectual Property Constituency of ICANN

    Councilor, Generic Names Supporting Organization 
    Brand Registry Group Fellow 

Community Involvement

  • Eliza Jennings Senior Care Network

    Honorary Trustee

  • College Church of the Nazarene

    Co-Director, University Ministry