John A. Clifford,  Attorney
		612.336.4616  |  Email  |  vCard Minneapolis Office 3200 IDS Center 80 South Eighth Street Minneapolis, MN 55402 USA ph: 612.332.5300 fax: 612.332.9081

Education

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

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

Professional Affiliations

International Trademark Association (INTA)
Panel of Neutrals
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

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.

Recent 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

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.

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.

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.

Listings

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

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 will celebrate 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 2,600 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 350 such proceedings.

Jack was named a Super Lawyer in the Minnesota Journal of Law and Politics in 2006 and 2007.