John L. Welch

John L. Welch

Counsel | Trademark & Copyright
617.646.8285 John.Welch@WolfGreenfield.com LinkedIn Profile

Education

  • University of Illinois at Urbana-Champaign, BS, Electrical Engineering, summa cum laude
  • Harvard Law School, JD

Key Industries

  • Clothing & Fashion
  • Restaurant Services
  • Food Products
  • Computer Hardware & Software

Practice Groups

Admitted to Practice

  • District of Columbia
  • Massachusetts
  • New York
  • US Patent and Trademark Office
  • Various federal district and appellate courts

Location

  • Boston

Overview

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 clothing and fashion, restaurant services, food processing machinery, and computer hardware and software. John has obtained numerous utility and design patents for clients in a variety of consumer industries, including patents for lighting fixtures, electrical instrumentation, ceramic candle holders, food processing machinery, and kitchen utensils.

Client 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.


Experience

  • 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.
  • Represented a musical group in obtaining a reversal of a federal district court ruling that had dismissed the group’s claim of trademark infringement by a rival group that had adopted the same name.

Activities

  • 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
  • Faculty Clinic Supervisor, Northeastern University School of Law's IP CO-LAB

Recognition

  • AV rated by Martindale-Hubbell
  • Named to World Trademark Review 1000 – The World’s Leading Trademark Professionals (2012-2022)
  • Named to World Trademark Review Global Leaders (2019-2021)
  • Named as one of Massachusetts “Super Lawyers” in the field of intellectual property (2004-2022)
  • Named a United States Trademark Leader in World IP Review’s WIPR Leaders (2022)
  • Named to The Best Lawyers in America© (2023)
  • Recognized as a High-Performing Committee Member by INTA (2022)

Publications

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(SizeLimitingPyList: [{year_group=2022, publish_date=2022-12-29 15:36:00, name=Top 10 TTAB Decisions of 2022, absolute_url=https://wolfgreenfield.com/publications/articles/top-10-ttab-decisions-of-2022}, {year_group=2022, publish_date=2022-03-01 05:00:00, name=The Trademark Reporter's 2022 “Annual Review of US Trademark Cases”, absolute_url=https://wolfgreenfield.com/publications/articles/2022/the-trademark-reporters-2022-annual-review-of-us-trademark-cases}, {year_group=2022, publish_date=2022-01-19 05:00:00, name=The Top 10 Trademark Trial and Appeal Board Decisions of 2021, absolute_url=https://wolfgreenfield.com/publications/articles/2022/the-top-ten-trademark-trial-and-appeal-board-decisions-of-2021}, {year_group=2021, publish_date=2021-09-28 04:00:00, name=Why Your TTAB Judgment May Fall Flat in Court, absolute_url=https://wolfgreenfield.com/publications/articles/2021/why-your-ttab-judgment-may-fall-flat-in-court}, {year_group=2021, publish_date=2021-08-19 04:00:00, name=TTAB Upholds Fraud Claim Against Distributor of Massage Chairs Who Registered Manufacturer's Mark, absolute_url=https://wolfgreenfield.com/publications/articles/2021/ttab-upholds-fraud-claim-against-distributor-of-massage-chairs}, {year_group=2021, publish_date=2021-04-19 04:00:00, name=Where to Appeal a TTAB Decision? The Choice is Complicated, absolute_url=https://wolfgreenfield.com/publications/articles/2021/wtr-where-to-appeal-a-ttab-decision}, {year_group=2021, publish_date=2021-03-01 05:00:00, name=United States Annual Review: The Seventy-Third Year of Administration of the Lanham Act of 1946, absolute_url=https://wolfgreenfield.com/publications/articles/2021/the-seventy-third-year-of-administration-of-the-lanham-act-of-1946}, {year_group=2020, publish_date=2020-02-28 05:00:00, name=The Trademark Reporter's 2020 Annual Review of U.S. Trademark Cases, absolute_url=https://wolfgreenfield.com/publications/articles/2020/the-trademark-reporters-2020-annual-review-of-us-trademark-cases}, {year_group=2019, publish_date=2019-10-01 04:00:00, name=US law inches towards protecting trademark reputation without use, absolute_url=https://wolfgreenfield.com/publications/articles/2019/us-law-inches-towards}, {year_group=2019, publish_date=2019-05-15 04:00:00, name=Are snack bars related to energy drink powders and bicycles?, absolute_url=https://wolfgreenfield.com/publications/articles/2019/are-snacks-bars-related-to-energy-drink}, {year_group=2019, publish_date=2019-03-01 05:00:00, name=The Trademark Reporter's 2019 Annual Review of U.S. Trademark Cases, absolute_url=https://wolfgreenfield.com/publications/articles/2019/new-publication-detail}, {year_group=2018, publish_date=2018-11-14 05:00:00, name=TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use, absolute_url=https://wolfgreenfield.com/publications/articles/2018/ttab-dismisses-new-man-cancellation-petitions-finding-no-abandonment}, {year_group=2018, publish_date=2018-10-03 04:00:00, name=Owner of PHILLIP GAVRIEL for Jewellery Fails to Prove Priority Over, and Likelihood of Confusion with, MANSUR GAVRIEL for Handbags, absolute_url=https://wolfgreenfield.com/publications/articles/owner-of-phillip-gavriel}, {year_group=2018, publish_date=2018-07-26 04:00:00, name=TTAB finds sales to single customer, although not substantial, sufficient to avoid abandonment of MOMBACHO for cigars, absolute_url=https://wolfgreenfield.com/publications/articles/ttab-finds-sales-to-single-customer}, {year_group=2018, publish_date=2018-07-10 04:00:00, name=Federal Circuit: TTAB applied wrong test in finding Coca-Cola's ZERO mark not generic for soft drinks, absolute_url=https://wolfgreenfield.com/publications/articles/2018/federal-circuit-ttab-applied-wrong-test-in-finding-coca-colas-zero-mark}, {year_group=2018, publish_date=2018-05-18 04:00:00, name=Rapper Dr Dre's opposition to DR. DRAI for health-related services dismissed, absolute_url=https://wolfgreenfield.com/publications/articles/2018/rapper-dr-dres-opposition-to-dr-drai-for-health-related-services-dismissed}, {year_group=2018, publish_date=2018-02-28 05:00:00, name=The Trademark Reporter's 2018 Annual Review of U.S. Trademark Cases, absolute_url=https://wolfgreenfield.com/publications/articles/2018/the-trademark-reporters-2018-annual-review-of-us-trademark-cases}, {year_group=2018, publish_date=2018-02-01 05:00:00, name=TTAB grants motion for summary judgment as to fraud counterclaim, absolute_url=https://wolfgreenfield.com/publications/articles/2018/ttab-grants-motion-for-summary-judgment-as-to-fraud-counterclaim}, {year_group=2018, publish_date=2018-01-12 05:00:00, name=TTAB cancels TAO VODKA registration, absolute_url=https://wolfgreenfield.com/publications/articles/2018/ttab-cancels-tao-vodka-registration}])
2022 2021 2020 2019 2018

Other Publications

  • The Seventy-Fourth Year of Administration of the Lanham Act of 1946, John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, Vol. 112, no. 1, January-February 2022.
  • The Seventy-Second Year of Administration of the Lanham Act of 1946, John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, Vol. 110, no. 1, January-February 2020.
  • The Seventy-First Year of Administration of the Lanham Act of 1946, John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, Vol. 109, no. 1, January-February 2019.
  • The Seventieth Year of Administration of the Lanham Act of 1946, John L. Welch and Theodore H. Davis Jr., The Trademark Reporter, Vol. 108, no. 1, January-February 2018 

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2023 2022 2021 2020 2019 2018

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Interests

  • Music (guitar)
  • Photography
  • Sports