People | John L. Welch

John Welch

Of Counsel

Practice Areas

  • Litigation
  • Patents
  • Trademark/Copyright
  • Transactions & Strategic Counseling

Industries

  • Mechanical & Consumer Products

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Overview

John 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 U.S. 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. In addition, he has represented clients in many patent, copyright and trademark lawsuits across the country. Some representative matters include:

  • 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 client 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.

Education and Prior Experience

  • Harvard Law School, J.D.
  • University of Illinois, B.S. in Electrical Engineering

Admissions, Memberships, and Acknowledgements

  • Admitted to practice law in Massachusetts, Illinois, New York, and the District of Columbia, and in various federal district and appellate courts
  • Registered to practice before the U.S. Patent and Trademark Office
  • Member, Board of Editors, The Trademark Reporter
  • Member and Co-Chair of the Trademarks and Unfair Competition Committee of the Boston Patent Law Association
  • Founder and Publisher of The TTABlog
  • Contributing Editor, Allen’s Trademark Digest
  • AV rated by Martindale-Hubbell, a designation indicating that his peers rank him at the highest level
  • Named as one of New England’s “Super Lawyers” in the field of intellectual property, 2004, 2005, 2006, 2007, 2008, and 2009
  • Frequent author and lecturer on trademark law, and particularly on the procedure and jurisprudence of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Recent appearances include the John Marshall Law School Annual Symposium on Intellectual Property and the Boston Bar Associations’ Annual IP Year in Review.

News & Events

June 8, 2010

John L. Welch presented a national teleconference, "Recent Developments at the TTAB," sponsored by the Trademark Standing Committee, IP Section, California Bar.

June/July 2010

"TTAB developments: Bose and beyond," John L. Welch, World Trademark Review, Issue 25.

May 20, 2010

John L. Welch participated in a panel discussion, "Fraud as a Sword, Shield and Forcefield," at the International Anticounterfeiting Coalition's Annual Spring Conference, Boston, MA.

April 9, 2010

John L. Welch moderated a panel discussion at the annual "TTAB Comes to Boston" event held at Boston University Law School and sponsored by the Boston Patent Law Association.  As part of the annual event, the Board hears final arguments in a pending case.  The event also features several speakers, who this year included TTAB Acting Chief Judge Gerard F. Rogers. 

February 26, 2010

John L. Welch presented "Top 10 TTAB Decisions of 2009" at the John Marshall Law School Center for Intellectual Property Law's Annual Intellectual Property Law Conference: Hot Topics and Developments in Patent, Trademark, Copyright and Trade Secrets Law, Chicago, IL

November 19, 2009

John L. Welch was among the panelists who presented "Trademark Fraud on the USPTO - A New Landscape," hosted by the Boston Bar Association, and co-sponsored by the BBA's Intellectual Property Committee and the BPLA's Trademarks and Unfair Competition Committee, Boston, MA.

September 30, 2009

John L. Welch moderated a panel on "Trademark Fraud on the USPTO - A New Landscape," presented as a webinar sponsored by the American Bar Association's Section of Intellectual Property Law.

January 15, 2009

Ann Lamport Hammitte and John L. Welch presented on Trademarks, at the Boston Bar Association's Intellectual Property Year in Review, Boston, MA.

October 24, 2008

John L. Welch and Ann Lamport Hammitte were among the speakers and panelists who presented at "The TTAB Comes to Boston," hosted by the Boston Patent Law Association Trademarks and Unfair Competition Committee, being held at Northeastern University School of Law, Boston, MA.

March 7, 2008

John N. Anastasi and John L. Welch facilitated "Licensing Patents, Software" and "Trademarks" at an IP Roundtable Luncheon sponsored by the IP Concentration and the Center for Advanced Legal Studies at Suffolk University Law School, Boston, MA.

2008

"The TTAB in 2007: Rules, Rulings, and Repercussions," John L. Welch and Ann Lamport Hammitte, Navigating Trademark Practice Before the PTO 2008: From Filing Through the TTAB Hearing, Ch. 5, Practising Law Institute.

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