John Welch has represented clients in scores of patent, trademark, copyright, unfair competition, and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office.

He is responsible for the international trademark portfolios of a number of major companies in such diverse fields as restaurant services, food processing machinery, and computer hardware and software. John has obtained numerous utility and design patents for clients in a variety of industries, such as lighting fixtures, electrical instrumentation, ceramic candle holders, food processing machinery, and kitchen utensils.

Testimonial:
"I just want to say thank you for all the hard work you have done over the years in putting together your blog...You are providing the world with much needed insight into what can be a frightening and challenging field of work and I admire your passion."
  • Obtained summary judgment of validity and infringement in a patent infringement lawsuit in New Orleans involving a patent on a laser board game, including entry of a permanent injunction.
  • Assisted a bank in a proceeding under the Uniform Domain Name Resolution Policy (UDRP) involving the domain names that included the bank’s name, resulting in a transfer of those domain names to the bank.
  • Represented a restaurant company in a federal lawsuit alleging infringement of that client’s service mark by another restaurant, resulting in a settlement of the dispute whereby the defendants agreed to change the name of their restaurant.
  • Successfully teamed with a company in the clothing field in obtaining a TTAB decision sustaining the client’s opposition to registration of a design of a standing dog in the color yellow, the TTAB finding that mark likely to cause confusion with the client’s standing dog design. 
  • Represented an engineering software company in connection with infringement of its copyright in a book in the field of design for manufacture and assembly.
  • Represented a European fashion company in successfully overturning a United States Patent and Trademark Office refusal to register a design mark containing the term “AUX ETATS UNIS,” which the Office had deemed geographically deceptive of luggage.
  • Founder and Publisher of The TTABlog
  • Member, Board of Editors, The Trademark Reporter 
  • Member of the Trademarks and Unfair Competition Committee of the Boston Patent Law Association 
  • Contributing Editor, Allen’s Trademark Digest
  • AV rated by Martindale-Hubbell
  • Named to World Trademark Review 1000 – The World’s Leading Trademark Professionals from 2012-2016 
  • Named as one of Massachusetts “Super Lawyers” in the field of intellectual property from 2004-2017

Articles

December 5, 2017

TTAB defers decision on motion to strike

February 28, 2017

The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"

April 13, 2016

Not So Fast on MARATHON MONDAY: Trademark Board Rejects Boston Athletic Association’s Bid to Prevent Clothier from Registering the Term

Blogs

April 25, 2016

Federal Circuit Declares Disparagement Bar of Trademark Act Unconstitutional



Founder and Publisher of The TTABlog

February 28, 2016
"United States Annual Review: The Sixty Eighth Year of Administration of the Lanham Act of 1946," John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, January-February 2016 (Vol. 106, No. 1).

September 18, 2015
"The Top Ten TTAB Decisions of 2014-2015," The IP Book, published by The Midwest Intellectual Property Institute, Minneapolis, Minnesota

November 2015
"Inside This Issue", John L. Welch and Ann Lamport Hammitte, and "Keeping Tabs on the TTAB", John L. Welch, Allen's Trademark Digest, Vol. 29, No. 5.

May-June 2015
Cited in "Commentary: B&B Hardware and Ex Parte Appeal", Pamela Chestek, The Trademark Reporter, Vol. 105, No. 3.

February 27, 2015
"The Top Ten TTAB Decisions of 2014", John L. Welch, The TTABlog.

February 27, 2015
"United States Annual Review: The Sixty-Seventh Year of Administration of the Lanham Act of 1946", John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, January-February 2015 (Vol. 105, No. 1).

January-February 2014
"United States Annual Review: The Sixty-Sixth Year of Administration of the Lanham Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 104, No.1.

September 1, 2013
"The Top Ten TTAB Decisions of 2012 - 2013," John L. Welch, The IP Book 2013, Chapter 12.

February 19, 2013
"Clerical Error In Trademark Act Applies To Old Cases: TTAB"
Law360

January-February 2013
"United States Annual Review: The Sixty-Fifth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 103, No. 1.

December 15, 2012
""Volunteer Spotlight: John L. Welch""
INTABulletin

February 3, 2012
"2011 Intellectual Property Year in Review and Outlook for 2012 - Part II: Trademarks," Peter C. Lando and John L. Welch, IP Counsel on LegalTalkNetwork.

January-February 2012
"United States Annual Review: The Sixty-Fourth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 102, No. 1.


May 24, 2017:
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," Barcelona, Spain.

April 24, 2017
John L. Welch presented "TTAB Annual Review" at a New York City Bar Association conference entitled "On Your Marks: Frontline Issues in Trademark and Advertisement Law."

October 27, 2016
John L. Welch presented "TTAB Update" at the AIPLA Annual Meeting in Washington, D.C.

May 25, 2016
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," Orlando, Florida.

February 23, 2016
John L. Welch presented “TTAB Practice and Procedure: A Primer” at the Boston Bar Association. 

February 11, 2016
John L. Welch appeared with TTAB Judge Lorelei Ritchie at the Beverly Hills Bar Association seminar entitled “The TTAB Comes to the BHBA.”

December 8, 2015
John L. Welch presented an American Law Institute Webinar, with Professor Kenneth Germain, entitled “Trademarks, Trade Dress, and False Advertising 2015: Recent Developments for Business and IP Lawyer.”

September 18, 2015
John L. Welch appeared with TTAB Chief Judge Gerard Rogers in a panel discussion of recent Trademark Trial and Appeal Board developments at the Midwest Intellectual Property Institute in Minneapolis, Minnesota.

May 28 & 29, 2015

John L. Welch presented at the "Rocky Mountain Intellectual Property and Technology Institute," sponsored by the Intellectual Property Law Section of the Colorado Bar Association, the ABA Section of Intellectual Property Law, and Stanford Law School, Stanford Program in Law, Science and Technology at the Westin Westminster Hotel in Denver, CO.

May 14, 2015
John L. Welch presented at a CLE program sponsored by the Complex Commercial Litigation's Intellectual Property Litigation Committee of the Massachusetts Bar Association on "Trademark Acquisition and Enforcement: The Good, the Bad and the Ugly," Boston, MA.

May 6, 2015
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," San Diego, CA.

April 14 & 16, 2015
John L. Welch was a panelist at the "2015 Trademark Office Comes to California" seminar on April 14 at The Hyatt Regency Century Plaza, Los Angeles and April 16 at The Merchants Exchange Building, San Francisco.

March 26, 2015
John L. Welch presented on "The Most Recent Top Trademark Decisions" at The Franklin Pierce Center for Intellectual Property, Concord, NH.

March 10, 2015
John L. Welch presented at the IPO's 25th Annual PTO Day at the JW Marriott Hotel, Washington, D.C.

February 10, 2015
John L. Welch presented on a CLE webinar titled "Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond" hosted by Strafford.

December 4, 2014
John L. Welch presented on a CLE webinar titled, "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers," hosted by the American Law Institute.

October 3, 2014
John L. Welch presented on "The Top 8 or 9 Losing TTAB Arguments," at the TTAB and PTAB Come to Boston Conference at Northeastern University School of Law, Boston, MA.

August 7, 2014
John L. Welch presented on "Recent Hot Topics at the Trademark Trial and Appeal Board," at the ABA IP Law Conference, Boston, MA.

May 14, 2014
John L. Welch presented on "Annual Review of U.S. Federal Case Law and TTAB Developments," at the 2014 International Trademark Association Annual Meeting, Hong Kong, China.

February 19, 2014
John L. Welch presented at a CLE telephone seminar titled, "Trademarks, Trade Dress and False Advertising: Recent Developments for Business IP Lawyers," hosted by the American Law Institute.

September 27, 2013
John L. Welch presented on "What's New and Exciting at the TTAB?" at the 23rd All Ohio Annual Institute on Intellectual Property, Cleveland, OH.

September 26, 2013
John L. Welch presented on "What's New and Exciting at the TTAB?" at the 23rd All Ohio Annual Institute on Intellectual Property, Covington, KY.

May 8, 2013
John L. Welch presented on "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2012-2013," at the International Trademark Association's Annual Meeting, Dallas, TX.

April 18, 2013
John L. Welch presented on "TTAB Decisions in 2012," at the "2013 Trademark Office Comes to California" event, presented by the IP Section of the State Bar of California, San Francisco, CA.

April 16, 2013
John L. Welch presented on "TTAB Decisions in 2012," at the "2013 Trademark Office Comes to California" event, presented by the IP Section of the State Bar of California, Los Angeles, CA.

February 14, 2013
John L. Welch presented on "TTAB Hot Topics," at the Texas Bar CLE 26th Annual Advanced Intellectual Property Law Course, Austin, TX.

November 8, 2012
John L. Welch presented on "The TTAB in 2012: What's Hot and What's Not?" at the 37th Annual Intellectual Property Institute hosted by the Intellectual Property Section of the California State Bar, San Diego, CA.

September 21, 2012
John L. Welch hosted the "TTAB Comes to New Hampshire" Symposium at the University of New Hampshire School of Law, Concord, NH.

June 1, 2012
John L. Welch presented at the San Francisco Intellectual Property Law Association's Spring Seminar 2012, Healdsburg, CA.

May 9, 2012
John L. Welch presented on "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2011-2012," at the International Trademark Association's Annual Meeting, Washington D.C.

March 2, 2012
John L. Welch presented on "Recent Developments at the TTAB," at the Florida Bar's 3rd Annual Intellectual Property Law Symposium, Orlando, FL.

Recent News & Events

October 17, 2017

Wolf Greenfield Attorneys Named to 2017 Super Lawyers, Rising Stars Lists

August 30, 2017

John Welch quoted in Adweek on difficulties in trademarking colors

January 19, 2017 2:22 PM ET

Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners - Replay Now Available

January 17, 2017

Wolf Greenfield Named Top Trademark Law Firm by World Trademark Review

October 19, 2016

Wolf Greenfield Attorneys Named to 2016 Super Lawyers, Rising Stars Lists

October 12, 2016

Managing IP quotes John Welch on TTAB's changes to rules of practice

June 24, 2016 3:21 PM ET

IP Fridays interviews John Welch on recent TTAB case law

June 14, 2016 12:00 PM - 1:00 PM ET

TTAB Update Webinar: A Year of Critical Developments - Replay Now Available

May 25, 2016

Managing IP quotes John Welch on trademark cases to watch

April 8, 2016

Law360 quotes John Welch on 3 big TTAB rule changes you need to know


Sports, music, and photography
Expand All

John Welch has represented clients in scores of patent, trademark, copyright, unfair competition, and domain name lawsuits across the country, and has handled hundreds of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office.

He is responsible for the international trademark portfolios of a number of major companies in such diverse fields as restaurant services, food processing machinery, and computer hardware and software. John has obtained numerous utility and design patents for clients in a variety of industries, such as lighting fixtures, electrical instrumentation, ceramic candle holders, food processing machinery, and kitchen utensils.

Testimonial:
"I just want to say thank you for all the hard work you have done over the years in putting together your blog...You are providing the world with much needed insight into what can be a frightening and challenging field of work and I admire your passion."
  • Obtained summary judgment of validity and infringement in a patent infringement lawsuit in New Orleans involving a patent on a laser board game, including entry of a permanent injunction.
  • Assisted a bank in a proceeding under the Uniform Domain Name Resolution Policy (UDRP) involving the domain names that included the bank’s name, resulting in a transfer of those domain names to the bank.
  • Represented a restaurant company in a federal lawsuit alleging infringement of that client’s service mark by another restaurant, resulting in a settlement of the dispute whereby the defendants agreed to change the name of their restaurant.
  • Successfully teamed with a company in the clothing field in obtaining a TTAB decision sustaining the client’s opposition to registration of a design of a standing dog in the color yellow, the TTAB finding that mark likely to cause confusion with the client’s standing dog design. 
  • Represented an engineering software company in connection with infringement of its copyright in a book in the field of design for manufacture and assembly.
  • Represented a European fashion company in successfully overturning a United States Patent and Trademark Office refusal to register a design mark containing the term “AUX ETATS UNIS,” which the Office had deemed geographically deceptive of luggage.
  • Founder and Publisher of The TTABlog
  • Member, Board of Editors, The Trademark Reporter 
  • Member of the Trademarks and Unfair Competition Committee of the Boston Patent Law Association 
  • Contributing Editor, Allen’s Trademark Digest
  • AV rated by Martindale-Hubbell
  • Named to World Trademark Review 1000 – The World’s Leading Trademark Professionals from 2012-2016 
  • Named as one of Massachusetts “Super Lawyers” in the field of intellectual property from 2004-2017

Founder and Publisher of The TTABlog

February 28, 2016
"United States Annual Review: The Sixty Eighth Year of Administration of the Lanham Act of 1946," John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, January-February 2016 (Vol. 106, No. 1).

September 18, 2015
"The Top Ten TTAB Decisions of 2014-2015," The IP Book, published by The Midwest Intellectual Property Institute, Minneapolis, Minnesota

November 2015
"Inside This Issue", John L. Welch and Ann Lamport Hammitte, and "Keeping Tabs on the TTAB", John L. Welch, Allen's Trademark Digest, Vol. 29, No. 5.

May-June 2015
Cited in "Commentary: B&B Hardware and Ex Parte Appeal", Pamela Chestek, The Trademark Reporter, Vol. 105, No. 3.

February 27, 2015
"The Top Ten TTAB Decisions of 2014", John L. Welch, The TTABlog.

February 27, 2015
"United States Annual Review: The Sixty-Seventh Year of Administration of the Lanham Act of 1946", John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, January-February 2015 (Vol. 105, No. 1).

January-February 2014
"United States Annual Review: The Sixty-Sixth Year of Administration of the Lanham Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 104, No.1.

September 1, 2013
"The Top Ten TTAB Decisions of 2012 - 2013," John L. Welch, The IP Book 2013, Chapter 12.

February 19, 2013
"Clerical Error In Trademark Act Applies To Old Cases: TTAB"
Law360

January-February 2013
"United States Annual Review: The Sixty-Fifth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 103, No. 1.

December 15, 2012
""Volunteer Spotlight: John L. Welch""
INTABulletin

February 3, 2012
"2011 Intellectual Property Year in Review and Outlook for 2012 - Part II: Trademarks," Peter C. Lando and John L. Welch, IP Counsel on LegalTalkNetwork.

January-February 2012
"United States Annual Review: The Sixty-Fourth Year of Administration of the U.S. Trademark (Lanham) Act of 1946," Theodore H. Davis, Jr. and John L. Welch, The Trademark Reporter, Vol. 102, No. 1.

Articles

December 5, 2017

TTAB defers decision on motion to strike

February 28, 2017

The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"

April 13, 2016

Not So Fast on MARATHON MONDAY: Trademark Board Rejects Boston Athletic Association’s Bid to Prevent Clothier from Registering the Term

Blogs

April 25, 2016

Federal Circuit Declares Disparagement Bar of Trademark Act Unconstitutional


May 24, 2017:
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," Barcelona, Spain.

April 24, 2017
John L. Welch presented "TTAB Annual Review" at a New York City Bar Association conference entitled "On Your Marks: Frontline Issues in Trademark and Advertisement Law."

October 27, 2016
John L. Welch presented "TTAB Update" at the AIPLA Annual Meeting in Washington, D.C.

May 25, 2016
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," Orlando, Florida.

February 23, 2016
John L. Welch presented “TTAB Practice and Procedure: A Primer” at the Boston Bar Association. 

February 11, 2016
John L. Welch appeared with TTAB Judge Lorelei Ritchie at the Beverly Hills Bar Association seminar entitled “The TTAB Comes to the BHBA.”

December 8, 2015
John L. Welch presented an American Law Institute Webinar, with Professor Kenneth Germain, entitled “Trademarks, Trade Dress, and False Advertising 2015: Recent Developments for Business and IP Lawyer.”

September 18, 2015
John L. Welch appeared with TTAB Chief Judge Gerard Rogers in a panel discussion of recent Trademark Trial and Appeal Board developments at the Midwest Intellectual Property Institute in Minneapolis, Minnesota.

May 28 & 29, 2015

John L. Welch presented at the "Rocky Mountain Intellectual Property and Technology Institute," sponsored by the Intellectual Property Law Section of the Colorado Bar Association, the ABA Section of Intellectual Property Law, and Stanford Law School, Stanford Program in Law, Science and Technology at the Westin Westminster Hotel in Denver, CO.

May 14, 2015
John L. Welch presented at a CLE program sponsored by the Complex Commercial Litigation's Intellectual Property Litigation Committee of the Massachusetts Bar Association on "Trademark Acquisition and Enforcement: The Good, the Bad and the Ugly," Boston, MA.

May 6, 2015
John L. Welch presented at the annual INTA Conference on the "Annual Review of U.S. Federal Case Law and TTAB Developments," San Diego, CA.

April 14 & 16, 2015
John L. Welch was a panelist at the "2015 Trademark Office Comes to California" seminar on April 14 at The Hyatt Regency Century Plaza, Los Angeles and April 16 at The Merchants Exchange Building, San Francisco.

March 26, 2015
John L. Welch presented on "The Most Recent Top Trademark Decisions" at The Franklin Pierce Center for Intellectual Property, Concord, NH.

March 10, 2015
John L. Welch presented at the IPO's 25th Annual PTO Day at the JW Marriott Hotel, Washington, D.C.

February 10, 2015
John L. Welch presented on a CLE webinar titled "Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond" hosted by Strafford.

December 4, 2014
John L. Welch presented on a CLE webinar titled, "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers," hosted by the American Law Institute.

October 3, 2014
John L. Welch presented on "The Top 8 or 9 Losing TTAB Arguments," at the TTAB and PTAB Come to Boston Conference at Northeastern University School of Law, Boston, MA.

August 7, 2014
John L. Welch presented on "Recent Hot Topics at the Trademark Trial and Appeal Board," at the ABA IP Law Conference, Boston, MA.

May 14, 2014
John L. Welch presented on "Annual Review of U.S. Federal Case Law and TTAB Developments," at the 2014 International Trademark Association Annual Meeting, Hong Kong, China.

February 19, 2014
John L. Welch presented at a CLE telephone seminar titled, "Trademarks, Trade Dress and False Advertising: Recent Developments for Business IP Lawyers," hosted by the American Law Institute.

September 27, 2013
John L. Welch presented on "What's New and Exciting at the TTAB?" at the 23rd All Ohio Annual Institute on Intellectual Property, Cleveland, OH.

September 26, 2013
John L. Welch presented on "What's New and Exciting at the TTAB?" at the 23rd All Ohio Annual Institute on Intellectual Property, Covington, KY.

May 8, 2013
John L. Welch presented on "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2012-2013," at the International Trademark Association's Annual Meeting, Dallas, TX.

April 18, 2013
John L. Welch presented on "TTAB Decisions in 2012," at the "2013 Trademark Office Comes to California" event, presented by the IP Section of the State Bar of California, San Francisco, CA.

April 16, 2013
John L. Welch presented on "TTAB Decisions in 2012," at the "2013 Trademark Office Comes to California" event, presented by the IP Section of the State Bar of California, Los Angeles, CA.

February 14, 2013
John L. Welch presented on "TTAB Hot Topics," at the Texas Bar CLE 26th Annual Advanced Intellectual Property Law Course, Austin, TX.

November 8, 2012
John L. Welch presented on "The TTAB in 2012: What's Hot and What's Not?" at the 37th Annual Intellectual Property Institute hosted by the Intellectual Property Section of the California State Bar, San Diego, CA.

September 21, 2012
John L. Welch hosted the "TTAB Comes to New Hampshire" Symposium at the University of New Hampshire School of Law, Concord, NH.

June 1, 2012
John L. Welch presented at the San Francisco Intellectual Property Law Association's Spring Seminar 2012, Healdsburg, CA.

May 9, 2012
John L. Welch presented on "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2011-2012," at the International Trademark Association's Annual Meeting, Washington D.C.

March 2, 2012
John L. Welch presented on "Recent Developments at the TTAB," at the Florida Bar's 3rd Annual Intellectual Property Law Symposium, Orlando, FL.

Recent News & Events

October 17, 2017

Wolf Greenfield Attorneys Named to 2017 Super Lawyers, Rising Stars Lists

August 30, 2017

John Welch quoted in Adweek on difficulties in trademarking colors

January 19, 2017 2:22 PM ET

Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners - Replay Now Available

January 17, 2017

Wolf Greenfield Named Top Trademark Law Firm by World Trademark Review

October 19, 2016

Wolf Greenfield Attorneys Named to 2016 Super Lawyers, Rising Stars Lists

October 12, 2016

Managing IP quotes John Welch on TTAB's changes to rules of practice

June 24, 2016 3:21 PM ET

IP Fridays interviews John Welch on recent TTAB case law

June 14, 2016 12:00 PM - 1:00 PM ET

TTAB Update Webinar: A Year of Critical Developments - Replay Now Available

May 25, 2016

Managing IP quotes John Welch on trademark cases to watch

April 8, 2016

Law360 quotes John Welch on 3 big TTAB rule changes you need to know


Sports, music, and photography