John A. Clifford

612.336.4616  |  Email  |  vCard  | Biography

Minneapolis Office
3200 IDS Center
80 South Eighth Street
Minneapolis, MN
55402 USA

ph: 612.332.5300
fax: 612.332.9081

Jack has a general practice of patent, trademark and copyright law, with an emphasis on trademark and advertising law. He served as the Chairman of Merchant & Gould's Trademark Practice Section for six years and celebrated his twenty-fifth anniversary with the firm on June 1, 2006. Jack counsels clients with large portfolios of Intellectual Property, and with complex business issues involving patents and trademarks, including litigation. He is responsible for worldwide portfolios of trademarks for many clients. He also is the filing correspondent on over 3,000 U.S. Trademark and Service Mark applications. Jack is a specialist in large portfolio trademark clients, both domestically and internationally, including many private label manufacturers. He also serves as an expert witness in trademark matters, as a qualified neutral for alternative dispute resolution, and has an active practice in trademark oppositions and cancellations, having handled over 500 such proceedings. Jack has three grown children, and enjoys downhill skiing, golf, painting and making wine. Many of Jack's clients are Europeans, and Jack travels to Europe frequently.

Jack was named a 2006, 2007 and 2008 Super Lawyer in the Minnesota Journal of Law and Politics and has earned the AV peer review rating from Martindale-Hubbell for many years.

Education

Creighton University
B.S., Physics, 1978; J.D., 1981
Member, Creighton Law Review

Bar Admissions

Minnesota State Bar, 1981
U.S. Patent and Trademark Office, 1981
U.S. District Court, District of Minnesota, 1982
U.S. Court of Appeals for the Federal Circuit, 1982
U.S. Court of Appeals for the Eighth Circuit, 1983
U.S. Court of Appeals for the Tenth Circuit, 1988
U.S. Supreme Court, 1991
U.S. District Court, District of Colorado, 1999
U.S. Court of Appeals for the First Circuit, 2004
Arizona State Bar, 2006
U.S. District Court, Western District of Wisconsin, 2008

Professional Affiliations

International Trademark Association (INTA)
Member, Panel of Neutrals 2005-2008
Attendee at numerous International Trademark Association (INTA) meetings, and host of several INTA Roundtable meetings on trademark topics

European Communities Trade Mark Association (ECTA)

American Bar Association

American Intellectual Property Law Association (AIPLA)

Minnesota Intellectual Property Law Association

Trademark and Unfair Competition Committee
Chair, 1996-1998

International Federation of Industrial Property Attorneys (FICPI)

Minnesota Bar Association

Hennepin County Bar Association

Arizona Bar Association

Publications

Protecting Voss Water
Minnesota Law & Politics, August/September 2008.

Co-author of the Minnesota State section of INTA publication State Trademark and Unfair Competition Law for the last twenty years.

Author of Merchant & Gould's Trademark Clearance and Usage Guide.

Beware the Many Faces of a Trademark Scam, IPLaw 360, May 12, 2008

Speaking Engagements

Branding v. Genericide: Advertising Gone Wild
Minnesota State Bar Association CLE on April 7, 2005

All That Glitters Is Not Gold: A comparative review of colour, sound, and three-dimensional trademarks
Intellectual Property Institute of Canada Annual Meeting, October 16, 2004

Mastering Section 2(d) of the Lanham Act: Strategies for Overcoming Likelihood of Confusion Refusals in the USPTO
Minnesota State Bar Association CLE on March 5, 2004

Madrid Protocol 101
INTA CLE on December 10, 2003

Opposition/Cancellation Grounds, Burden of Proof and Pleadings
Minnesota State Bar Association CLE on May 6, 2002

Notable Decisions

Champagne Louis ROEDERER v. J. Garcia Carrion, S.A.: Friends Wine Marketing, Inc., d/b/a CIV USA,569 F.3d 855 (2009), United States Court of Appeals, Eighth Circuit. Represented plaintiff in trademark action in successful appeal.

Krause Publications, Inc. v. Chester L. Krause, (C.A.F.C, 2007). case number 2007-1364, decided December 7, 2007, download and listen to the actual oral argument given by Mr. Clifford to the Court of Appeals for the Federal Circuit in the appeal of this opposition proceeding.

Eniva Corp. v. Global Water Solutions, Inc., 440 F. Supp. 2d 1042 - US: Dist. Court, D. Minnesota 2006.

Fforg Inc. v. Infinite Campus, Inc., Civ.06-2448 (Mn. Dist. Ct., Fourth D. Feb. 14, 2006). Mr. Clifford led a team of lawyers to successfully respond within less than 24 hours to a temporary restraining order request. The motion was denied based on the showing and oral argument made by the Merchant & Gould team.

Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171 (T.T.A.B., Nov. 18, 2005), In one of the few citable decisions of 2005, the TTAB granted the petition for cancellation filed by Mr. Clifford under Section 2 (c) of the Trademark Act.

Northwest Airlines, Inc. v. NWA FEDERAL CREDIT UNION, US: Dist. Court, D. Minnesota 2004. Represented defendant in trademark action.

The Valspar Corporation v. Sirius Products, Inc., Opposition No. 107,846 (T.T.A.B. Jan. 30, 1995). Successfully opposed registration of ZAP! on cleaning and restoring compounds based on prior rights in ZAPZ for stain sealing primer paint.

Library Publications v. Heartland Samplers, 825 F. Supp. 701 - US: Dist. Court, ED Pennsylvania 1993.

The Post Office v. Portec, Inc., 913 F.2d 802 (1990), United States Court of Appeals, Tenth Circuit.

International Sausage Corporation v. Old Dutch Foods, Inc., 904 F.2d 46, United States Court of Appeals, Federal Circuit, May 24, 1990.

We Care, Inc. v. ULTRA-MARK INTERN. CORP., 741 F. Supp. 743 - US: Dist. Court, D. Minnesota, 3rd Div. 1989. Represented plaintiff in matter obtaining a preliminary injunction.

Jury Trials

The British Post Office v. Portec, Inc. Represented the plaintiff in a trade secret case to a successful verdict, in Federal Count in Denver, Colorado.

Jackson A. Smith v. Condux International, Inc. Represented the defendant in a license agreement case with patent, unfair competition and trade secret issues to a successful verdict in State Court in Mankato, Minnesota.

Voss of Norway A.S.A v. Revtech, Inc. Represented the plaintiff in a license agreement case with patent, trade secret and contract issues to a successful verdict in the Southern District of New York.

Listings

Who's Who in America, 1998-2008
Who's Who Legal: USA - Trademarks 2006
Martindale-Hubbell International Dispute Resolution Directory 2006
Martindale-Hubbell AV Peer Review Rating