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, luxury goods makers and cosmetics companies.

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 well over 5,000 U.S. Trademark and Service Mark applications and more than 900 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 a webpage to bring useful information to the victims of attempted patent trolling.

Jack lives in Phoenix, Arizona, is married, has three grown children, two adult step children and enjoys winemaking, downhill skiing, golf, painting, traveling, and listening to good music. He is proud to have spent his entire legal career, since 1981, at Merchant & Gould.

Representative Cases

Cosmetic Warriors Limited v. Nailush, LLC, Civil No. 17-1475 (RBK/JS) (D. NJ 2017). Represented the successful plaintiff in a trademark infringement action leading to a permanent injunction, an award of damages and an award of plaintiff’s attorneys’ fees and costs under both federal and state law claims. The Court found the Plaintiff’s mark to be both “conceptually and commercially strong.”

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.

Education

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

Admissions

U.S. Court of Appeals for the Ninth Circuit, 2017
U.S. District Court, District of Michigan, 2013
Nebraska State Bar, 2010-2018
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, 1999-2018
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 (ECTA) 2000-2018
International Federation of Industrial Property Attorneys (FICPI), 2006-2011
American Bar Association, 1981-2018
The Federal Bar Association - Phoenix Chapter, 2014-2018
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, 2014-2018
Nebraska Bar Association, 2010-2014
The French-American Chamber of Commerce, 2013

Awards & Recognition

Who's Who Legal - Trademarks, 2019
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, 2012-2021 by The Best Lawyers in America
IP Stars by Managing IP, 2013-2019
Minnesota’s Best Lawyers, 2013-2018 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, 2006-2019
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 18 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.

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

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

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.”

Publications & Speaking

Publications

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 thirty-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

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.)

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