People | John L. Welch

Bio photo - 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.

  • 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, summa cum laude.

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 (www.ttablog.com)
  • 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 the World Trademark Review's 1000 Leading Trademark Professionals, 2012, 2013, and 2014
  • Named as one of New England’s “Super Lawyers” in the field of intellectual property, 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013, and 2014
  • 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 speaking engagements include: "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues: 2013-2014," at the International Trademark Association's Annual Meeting, Hong Kong, May 2014; February 2014, ALIWebinar, "Trademarks, Trade Dress and False Advertising: Recent Developments for Business and IP Lawyers"; September 2013, "What's New and Exciting at the TTAB?," All Ohio Annual Institute on Intellectual Property; May 2013, "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 2013, "TTAB Decisions in 2012," at the "2013 Trademark Office Comes to California," Los Angeles, CA; February 2013, "TTAB Hot Topics," Texas Bar CLE 26th Annual Advanced Intellectual Property Law Course, Austin, TX.

News & Events

October 3, 2014

John L. Welch will present 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.

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 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.

September 1, 2013

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

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.

January 1, 2013

"2013 Rankings - Massachusetts"

World Trademark Review

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

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.

April 1, 2012

"2012 Rankings - Massachusetts"

World Trademark Review

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.

February 3, 2012

"2011 Intellectual Property Year in Review and Outlook for 2012 - Part II: Trademarks," Peter C. Lando and John L. Welch, Of Counsel with Lando & Anastasi, LLP, 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.

November 10, 2011

John L. Welch presented on "Hot Topics at the TTAB," at the Intellectual Property Law Association of Florida, Miami, FL.

September 21, 2011

John L. Welch presented on "TTAB Hot Topics," at the All Ohio Annual Institute On Intellectual Property, sponsored by the Cincinnati Bar Association, Cincinnati, OH.

September 20, 2011

John L. Welch presented on "TTAB Hot Topics," at the All Ohio Annual Institute On Intellectual Property, sponsored by the Cincinnati Bar Association, Cleveland, OH.

June 12, 2011

John L. Welch presented on "Recent Developments at the TTAB," at the 2011 Intellectual Property Law Seminar and Midyear Meeting of the Oklahoma Bar Association, Dallas, TX.

April 29, 2011

John L. Welch moderated a panel discussion at the "TTAB comes to Boston" event hosted by Northeastern University School of Law and sponsored by the Boston Patent Law Association, Boston, MA.

April 13, 2011

John L. Welch was a panelist at a seminar entitled "The Trademark Office Comes to California," hosted by the State Bar of California, San Francisco, CA.

April 11, 2011

John L. Welch was a panelist at a seminar entitled "The Trademark Office Comes to California," hosted by the State Bar of California, Los Angeles, CA.

April 1, 2011

"2011 Rankings - Massachusetts"

World Trademark Review

December 30, 2010

"Trademark Fraud - The Impact of In re Bose on Trademark Owners, Practitioners, and the USPTO," Peter C. Lando and John L. Welch, L&A Of Counsel, IP Counsel on LegalTalkNetwork.

November 10, 2010

John L. Welch participated as a faculty member in a CLE webinar, "Trademark Fraud on the USPTO: Meeting the Challenges of Pleading and Providing Fraud After Bose," hosted by Strafford Publications.

October 14, 2010

John L. Welch presented on trademarks as a guest faculty member for the Intellectual Property Law Certificate program at Suffolk University Law School, Boston, MA.

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.

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