Raymond Rundelli

Ray assists clients with the administration and enforcement of U.S. and foreign trademark portfolios. He counsels clients on the clearance of new trademarks, has prepared and prosecuted numerous trademarks, and has represented many clients in contested proceedings involving trademarks before the Trademark Trial and Appeal Board and the U.S. Customs Service. Ray has prosecuted numerous copyright applications with a focus on assisting photographers and other visual artists in copyright matters. He counsels clients on the acquisition, licensing, and transfer of intellectual property rights and Internet domain names.

Ray’s many years of intellectual property litigation experience include numerous appearances as lead counsel in civil actions and/or appeals of trademark, copyright, false advertising, trade secret, counterfeiting, and unfair competition matters in federal trial and appeal courts across the U.S.

Ray has been recognized for his work in Intellectual Property by Chambers USA in Band 4 – Ohio (2015-2022). Chambers researchers noted, "Raymond Rundelli assists clients in complex trademark litigation and portfolio management work. His practice also extends to patent-related matters." Clients interviewed by Chambers USA stated, "Ray is a real expert in trademark law and knows the ins and outs of the industry. He's extremely responsive and gives practical advice. Ray comes recommended as an excellent trademark attorney who assists clients in an array of complex trademark litigation and portfolio management work. His practice also extends to patent-related matters."

He is listed in World Trademark Review 1000 – The World’s Leading Trademark Professionals (WTR 1000) (2015-2024). Ray was also named to the Ohio Super Lawyers list from 2013-2016. 

Ray is the firm’s designee for its long-standing membership in the International Trademark Association. In 2021, he was selected as one of the originating Masters in the Kathleen O’Malley American Inn of Court, an Inn for intellectual property litigators.  Ray is also a member and past officer of the Cleveland Intellectual Property Law Association.

He has served on the Board of Trustees for the Geauga County Public Library since 2006 and has been elected Board President four times.

Ray was an associate with the law firm of Baker & Hostetler from 1985 to 1993 and a partner with the firm from 1993 to 1998.  He joined the firm of Benesch, Friedlander, Coplan & Aronoff as a partner in 1998 before joining Arter & Hadden in 1999. Ray began his tenure with Calfee as a partner in 2001.

Honors & Recognitions

• Chambers USA, Intellectual Property, Band 4, Ohio (2015-2022)
• World Trademark Review 1000 – The World’s Leading Trademark Professionals (WTR 1000) (2015-2024)
• Kathleen O’Malley American Inn of Court, Master (2021)
• Ohio Super Lawyers (2013-2016)

Education

J.D., magna cum laude, University of Michigan Law School, Law Review Associate and Contributing Editor, Order of the Coif, Campell Moot Court Finalist, 1985

B.A., summa cum laude, Phi Beta Kappa, Miami University, 1982

Experience

• Serving as primary IP counsel for a publicly traded, Fortune 500, global manufacturing client and its operating companies with responsibility for the client's worldwide IP portfolio, including 2,000+ trademark matters. With regard to clearance, Calfee provides right-to-use and non-infringement analyses and opinions. We also prepare, file, and prosecute patent and trademark applications. Calfee assists in all IP litigation the operating companies are involved in.

• Serving as primary IP counsel for a publicly traded manufacturer and its operating companies with responsibility for more than 125 active patent and trademark matters for this client. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. Calfee also prepares, files, and prosecutes patent and trademark applications, and we represent the company in IP-related disputes.

• Managing a publicly traded, Fortune 1000 multinational manufacturer's global trademark portfolio, including filing and prosecution, portfolio management, enforcement, and disputes. Calfee advises the client in patent preparation and prosecution matters, including strategy and filings. Calfee advises on patent enforcement matters, which are currently in pre-litigation investigation, including developing infringement analysis to stop infringement in markets with high-revenue product lines. Calfee also assists the client with a variety of other intellectual property counseling matters, including patent opinions, IP-related terms in agreements, cross-border enforcement, IP licensing, IP acquisition (particularly in China), and advising on best practices for protecting and harvesting intellectual property.
• Serving as chief outside IP counsel for a multi-billion dollar, publicly traded, Fortune 1000, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and internationally. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the IP of the operating companies. Calfee IP lawyers supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters and other IP litigation matters.
• Assisting an Asian manufacturing company with its U.S. patent and trademark filings while overseeing its entire global patent and trademark portfolios. Relatedly, Calfee represented the client in two separate International Trade Commission (ITC) investigations. At stake was whether the ITC would block the importation of several of the company’s products. Calfee obtained successful results for the client in both matters. Calfee also successfully defended the company on patent infringement allegations.

• Served as co-lead trial counsel for one of the largest U.S.-based satellite television companies in a decade-long, $100 million trademark/unfair competition action.

• Served as co-lead trial counsel for a $1 billion paint/coatings company in a trademark/trade secret action.

Professional & Community

• International Trademark Association, Member
• Cleveland Intellectual Property Association, Member and Past Officer
• Geauga County Public Library, Board of Trustees, (2006-present); served four terms as Board President

Client Feedback

• "Ray and Calfee have been my go-to team for trademark searches, opinions, advice, and enforcement regarding the brands of most value to my organization. Always available and responsive, he and his staff efficiently manage our registrations in the U.S. and in foreign jurisdictions, giving timely updates and reports. I would strongly recommend Ray to anyone who needs the help of an experienced trademark team." – Client quote, WTR1000
• "Ray is a real expert in trademark law and knows the ins and outs of the industry. He's extremely responsive and gives practical advice." – Client quote, Chambers USA 2022
• "Ray is a skilled practitioner experienced across an array of IP litigation and portfolio management matters. He demonstrates particular expertise in unfair competition, trademark, and copyright issues.” – Client quote, Chambers USA 2019