John A. Clifford

Partner
SCOTTSDALE
5635 N. Scottsdale Road, Suite 170
Scottsdale, AZ  85250
D: 480.725.8806
Contact My Assistant
Amanda Avery
D: 612.336.4712

Education

Creighton University
   B.S. Physics, 1978
   J.D., 1981

      Member, Creighton Law Review

Bar and Court Admissions

U.S. Court of Appeals for the Ninth Circuit, 2017
U.S. District Court, District of Michigan, 2013
Nebraska State Bar, 2010
U.S. District Court, District of Arizona, 2010
U.S. District Court, District of Nebraska, 2010
U.S. District Court, Western District of Wisconsin, 2008
Arizona State Bar, 2006
U.S. Court of Appeals for the First Circuit, 2004
U.S. District Court, District of Colorado, 1999
U.S. Supreme Court, 1991
U.S. Court of Appeals for the Tenth Circuit, 1988
U.S. Court of Appeals for the Eighth Circuit, 1983
U.S. District Court, District of Minnesota, 1982
U.S. Court of Appeals for the Federal Circuit, 1982
U.S. Patent and Trademark Office, 1981
Minnesota State Bar, 1981

Professional Affiliations

International Trademark Association
    Member, Panel of Neutrals 2005-2011
    Attendee at numerous International Trademark Association meetings
    Host of several INTA Roundtable meetings on trademark topics
    Member, Publications Committee
    Member, ADR Committee, 2005-2012 

European Communities Trade Mark Association
International Federation of Industrial Property Attorneys (FICPI), 2006-2011
American Bar Association
The Federal Bar Association - Phoenix Chapter
American Intellectual Property Law Association, 1981-2013
Minnesota Intellectual Property Law Association, 1982-2014
    Trademark and Unfair Competition Committee Chair, 1996-1998
Minnesota Bar Association
Hennepin County Bar Association, 1982-2014
Arizona Bar Association
Scottsdale Bar Association
Nebraska Bar Association, 2010-2014
The French-American Chamber of Commerce

Awards & Recognition

Arizona’s Finest Lawyers, 2016
Martindale-Hubbell® Top Rated Lawyer™ - Intellectual Property, 2015
Best Lawyers® Lawyer of the Year - Trademark Law, Minneapolis, 2014 by The Best Lawyers in America
Best Lawyers in America, 2012-2017 by The Best Lawyers in America
IP Stars by Managing IP, 2013-2014
Minnesota’s Best Lawyers, 2013-2014 by Minnesota Monthly
The International Who's Who of Trademark Lawyers, 2012-2015
The International Who’s Who of Business Lawyers, 2013
Selected for inclusion in Minnesota Super Lawyers, 2006-2016
Who's Who in America, 1998-2008
Who's Who Legal: USA - Trademarks 2006-2014
Martindale-Hubbell® International Dispute Resolution Directory 2006
Martindale-Hubbell® AV Peer Review Rating for more than 15 years. Overall Peer Rating 5.0 out of 5.0.


On November 5, 2010, Jack was inducted as a Chevalier into the Ordre des Coteaux de Champagne, an honorary fraternity for the champagne industry first founded in the 1600s.

Publications & Speaking

Intellectual Property Update: A Fast-paced Overview of Current Trends in IP Litigation – “Frequent Flyers” are not just for the airlines anymore, The Federal Bar Association - Phoenix Chapter, May 21, 2015

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-five years

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

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

Trademark Bullying: Fact or Fiction, Institute of Intellectual Property and Social Justice CLE at Howard University on March 10, 2011

Strategies for Dealing with Trademark Bullies, Minnesota State Bar CLE on March 2, 2011

Navigating Private Label and Store Brand Issues and Disputes, Minnesota State Bar CLE on March, 2, 2011

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

Jack practices patent, trademark, and copyright law, with an emphasis on trademark and advertising law, for clients all over the world, particularly U.S. firms and Europeans. He counsels clients with large, global portfolios of intellectual property and with complex business issues involving patents and trademarks, including litigation. Jack has extensive experience working with private label manufacturers.

Jack has always admired creative people — those artists and businesspeople who imagine and invent products and services and, in doing so, propel the economy forward. He loves his part in the process,  helping his clients successfully navigate the interface between intellectual property and their businesses to build and protect the asset value of their companies.

As the filing correspondent for over 5,000 U.S. Trademark and Service Mark applications and more than 700 trademark oppositions and cancellations proceedings, Jack is dedicated to successfully exploiting his clients' opportunities in the marketplace and protecting their intellectual property. He also serves as an expert witness in trademark matters and as a qualified neutral for alternative dispute resolution.

Jack was the first lawyer ever to assert "Trademark Bullying" as an affirmative defense before the U.S. Trademark Trial and Appeal Board, leading to a vigorous debate about the practice. Jack has defended many clients against patent trolls, also known as Non-Practicing Entities (NPE’s), and created the webpagewww.theantitroll.com to bring useful information to the victims of attempted patent trolling.

Jack is married, has three grown children, and enjoys winemaking, downhill skiing, golf, painting, traveling, and listening to good music.

John A. Clifford, Best Lawyers - Lawyer of the Year 2014

 

Representative Cases

Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, Opposition No. 91179408 to application Serial No. 78971147. This Opinion is a Precedent of the TTAB.

Cosmetic Warriors Limited v. Luscious, LLC, Opposition Nos. 91158982 and 91169017 (T.T.A.B., August 1, 2012) Represented the successful Opposer, leading to a finding that Opposer's mark was very strong, widely known, and should be accorded a broad scope of protection with the opposition sustained.

Wind Turbine Industries Corp.,v. Jacobs Wind Electric Company, Inc., Civil No. 09-36 (MJD/SRN), Obtained summary judgment on priority of use and abandonment of trademark rights issues in a complex trademark case involving over thirty years of alleged trademark usage.

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.

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.

The First National Bank in Sioux Falls v. First National Bank South Dakota, et al, (Civ. Action No. 06-4101, D.S.D. 2009) Represented the plaintiff in a trademark dispute, obtaining an expanded injunction.

Champagne Louis Roederer v. J. Garcia Carrion and Friend Wine Marketing, Inc. d/b/a CIV USA, (Civ. Action No. 06-213 D. MN 2010) Represented the plaintiff in a trademark dispute, obtained an injunction.

Representative Trademark Registrations

Registration Number

Mark Class View

4,104,350

CRISTAL 33 View

1,557,151

CA'DEL BOSO 33 View

324,359

CALVET 33 View

1,612,646

CONDUX 6 View

3,114,402

CHAMPAGNE DELAMOTTE BRUT DEPUIS 1760 33 View

4,402,566

FILLIES RACE FOR HOPE CANTERBURY PARK 25, 36 View

4,322,493

FIORINDA BY CARLO PIGNATELLI 25 View

2,723,221

HENRIOT 33 View

3,661,816

INTELLECTUAL PROPERTY 33 View

3,9533,281

JAEGER 9, 12 View

3,651,194

JULIAN LENNON 9, 16, 25, 41 View

3,000,630

LAURENT-PERRIER 16, 21, 32, 33, 38, 41, 43 View

3,387,417

LORO PIANA 3 View

4,118,438

LUSH 3 View

102,579

MALT-O-MEAL 30 View

3,940,239

MARSHALL AMPLIFICATION 25 View

1,438,701

NOVUS 37 View

369,014

OUR FAMILY 1, 5, 29, 30, 31, 32 View

2,668,342

RENZO PIANO 37, 42 View

1,300,876

SANTA MARGHERITA 33 View

2,637,008

SECURIAN 36 View

1,965,234

THE AFTERNOON 33 View

2,653,543

TRIMBACH 33 View

2,945,942

VAN MORRISON 9, 16, 25, 41 View

2,696,925

VOSS 32 View

Quoted

ITC Claims Authority to Fast-Track Patent Cases, IP Law 360, August 8, 2013 (quoted concerning the issues in the case.)

The private label predicament, WorldTrademarkReview.com, October/November 2012 (Quoted on private label branding and trade dress issues.)  

Mediations

Jack has participated as a Neutral or Mediator on a number of occasions. In most cases the parties have requested that the matter not be disclosed. A list of lawyers who have used Jack as a mediator is available upon request.

Expert Witness Engagements

Available upon request

Featured

Jack was featured in the Spring 2012-2013 Creighton University Physics Newsletter.

February 2012 issue of Twin Cities Business magazine ran a profile of Jack and his 30 year law practice in the food, wine, and beverage industries.

Jack was featured in a January 31, 2012 article in INSIDE Super Lawyers entitled "Jack Clifford: The Lawyer as Chevalier."

October 30, 2009 issue of Minneapolis St. Paul Business Journal ran a story about Jack, the trademarks he owns, and the wine industry.

June 2007 issue of Minnesota Law & Politics magazine ran a story about Jack entitled “The Vintner.”


MEDIA CENTER

All Media
Press Releases
8/17/15
Merchant & Gould Attorneys Included in The Best Lawyers in America© 2016
Merchant & Gould announces today that thirteen attorneys have been included in The Best Lawyers in America© 2016. Best Lawyers compiles lists of outstanding attorneys by conducting peer-review surveys in which lawyers confidentially evaluate their ...
Articles
11/1/12
The Private Label Predicament
Click here to read article including commentary by John Clifford
Press Releases
10/1/12
Twelve Merchant & Gould Attorneys Named 2013 Best Lawyers in America
Merchant & Gould, an intellectual property law firm, today announced that 12 of the firm’s attorneys are named by their peers in The Best Lawyers in America 2013® (Copyright 2012 by Woodward/White, Inc., of Aiken, SC). Merchant & Gould ...
Articles
6/1/12
U.S. State Trademark and Unfair Competition Law: Minnesota
Click here to view the Minnesota State section of INTA publication State Trademark and Unfair Competition Law co-authored by John Clifford.
Articles
3/12/12
Decades After Pepsi, MOM Is 'Choice of a New Generation'
Instant-Cereal Marketer Assumes Soda Marketer's Iconic TaglineClick here to read article and quote from Jack Clifford.
Articles
1/1/12
Jack Clifford: The Lawyer as Chevalier
Click here to read article featuring Jack Clifford in The Super Lawyers Blog
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
7/29/10
U.S. District Court Protects CRISTAL Trademark
Merchant & Gould, an intellectual property law firm, today announced that its client, Champagne Louis Roederer, producer of Cristal Champagne® won a major trademark litigation victory. United States District Court Judge Joan Ericksen ruled that a permanent ...
Press Releases
7/26/10
26 Merchant & Gould Attorneys Named 2010 Super Lawyers
Merchant & Gould, an intellectual property law firm, today announced that 26 of the firm's attorneys are named Super Lawyers in 2010. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than ...
News Alerts
1/8/10
FALSE MARKING ALERT
 The Federal Circuit recently held in Forest Group, Inc. v. Bon Tool Co.i that the penalty for false marking under 35 U.S.C. §292 is up to $500 for each falsely marked article, in other words, up to $500 for every widget falsely ...
Press Releases
9/16/09
Merchant & Gould Scores Litigation Victory for The First National Bank in Sioux Falls
Firm Earns Permanent Injunction Against Defendant Roughly Twenty Times the Size of the Plaintiff Merchant & Gould, an intellectual property law firm, today announced it has won a major litigation victory on behalf of The First National Bank in Sioux ...
Press Releases
2/18/09
Merchant & Gould Scores Litigation Victory for Voss of Norway, ASA
Judge Notes "Deft, Flawless and Lethal" Cross-Examination by Merchant & Gould Attorney Regina Culbert Merchant & Gould, an intellectual property law firm, today announced it has won a major litigation victory on behalf of Voss of Norway, ...
Articles
5/12/08
Beware The Many Faces Of A Trademark Scam
News Alerts
5/1/08
Merchant & Gould Issues Warning Over Online Trademark Scam
Merchant & Gould, an intellectual property law firm, today issued a warning for companies to be on the lookout for scammers posing as legitimate domain registrars, usually from Asia, in which they try to sell website domains based on a term or phrase trademarked ...
Press Releases
8/1/06
Twelve Merchant & Gould Attorneys Named 2006 Super Lawyers by Minnesota Law & Politics magazine
Merchant & Gould, an intellectual property and litigation law firm, announced that twelve of the firm's attorneys were recognized as Super Lawyers in the August/September issue of Minnesota Law & Politics magazine.The Super Lawyers selected ...
Press Releases
7/3/06
Merchant & Gould's Trademark Practice Growing - Again
Merchant & Gould's trademark practice grew at a fast pace in first quarter, 2006, as the firm filed 275 trademarks. The intellectual property and litigation law firm ranked third among U.S. law firms in rankings tracked by Trademark Insider ®. ...
Press Releases
5/2/05
Merchant & Gould Named a Top Trademark Filer by NameProtect in Annual Ranking
Merchant & Gould is pleased to announce it has been named one of the top trademark law firms in the United States for the third consecutive year by NameProtect . The ranking appears in the annual Name Protect Trademark Insider ® 2004 report, ...
Press Releases
3/1/05
John A. Clifford Joins International Trademark Association's Panel of Neutrals
John A. Clifford of intellectual property law firm Merchant & Gould has been appointed to the International Trademark Association's (INTA) Panel of Neutrals.The Panel of Neutrals is part of INTA's Alternative Dispute Resolution (ADR) Program. The ...