Long-time Merchant & Gould attorney John (“Jack”) Clifford will transition his full-time practice into a part

Tuesday, January 1, 2019

Long-time Merchant & Gould attorney John (“Jack”) Clifford will transition his full-time practice into a part-time, “of counsel” role, effective Jan. 2.  Jack started his career at Merchant & Gould in 1981; and, for 38 years, he has been practicing patent, trademark, and copyright law for clients all over the world.  He will stay connected to the firm and Merchant & Gould clients as counsel, while moving toward a more-limited schedule.

“We will miss working with Jack on a day-to-day basis as a shareholder of the firm; but after almost four decades of providing great assistance to our clients, we are grateful that he will continue to counsel and bring his perspective in his new role with the firm,” said Christopher J. Leonard, Managing Director of Merchant & Gould.  “In addition to being an incredible attorney and advisor, he has been a teacher and listener to so many of our clients, peers and friends — and the entire IP community.” 

Jack admires creative people — those artists and businesspeople who imagine and invent products and services — and, in doing so, he has propelled the economy forward.  
Throughout his years with Merchant & Gould, he has been a key contributor on large, global portfolios of intellectual property, as well as with complex business issues involving patents and trademarks, including litigation. Jack has helped 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 900 trademark oppositions and cancellations proceedings, Jack has successfully  leveraged his clients' opportunities in the marketplace and protected their intellectual property. He has also served as an expert witness in trademark matters and as a qualified neutral for alternative dispute resolution.

As an IP pioneer, 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. He has defended many clients against patent trolls, also known as Non-Practicing Entities (NPE’s), and created a listing of known NPE’s to bring useful information to the victims of attempted patent trolling.

As Jack shifts to a part-time role, he will have more time for his family and interests in winemaking, downhill skiing, golf, painting, traveling and listening to good music.  However, he will continue to save some time for Merchant & Gould’s clients as “of counsel.” 

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