John Halski

John provides a full range of brand management services, from trademark clearance to global portfolio maintenance. He works with companies of all sizes and sorts to create, build, maintain and protect their intellectual property, including trademarks, trade dress, copyrights, and trade secrets. His clients include biotech start-ups, educational nonprofits, and multinational software companies. Taking a collaborative approach, John seeks practical, cost-effective approaches to his clients’ legal issues tailored to align with their goals and values as well as their budget.

His skillsets include:

• Filing and prosecuting trademark and copyright applications,
• Filing and defending against trademark oppositions and cancellation actions,
• Managing licensing programs and anti-piracy strategies,
• Domain name enforcement actions, and
• Trademark and copyright enforcement and litigation.

John specializes in finding innovative solutions in a changing intellectual property landscape. He has handled the registration of non-traditional trademarks such as color marks and counseled clients on brand enforcement in virtual spaces and the “fan fiction” community. He regularly advises nonprofit and advocacy-driven organizations on their unique intellectual property challenges, and he is a published author on the subject of trademark rights in the political space.

Representative Experience

• Trademark and copyright enforcement and litigation.
• Managed global trademark portfolios of clients ranging from a Fortune 500 software company to a non-profit yoga association.
• Advised dozens of start-ups, emerging companies, political campaigns (including presidential candidates), and public advocacy organizations on creating and launching their brands.
• Defended major political organizations and figures from intellectual property infringement claims.
• Handled the intellectual property components of major company sales, acquisitions, and mergers.

Articles

• Co-Author, “White Paper Trademarks in the Metaverse”, International Trademark Association (April 2023)
• “Six Things to Know About Trademark Protection in Foreign Countries” (March 2023)
• “Six Things to Know About Social Media Handles, and How They Can Benefit (or Damage) Your Brand” (October 2022)
• “Six Questions to Ask if You’re Wondering Whether to Protect Your Trademarks in the Metaverse” (June 2022)
• “USPTO Should Rethink Its Resistance To Political Slogan TMs” (Law360, February 2021)
• “Supreme Court Holds Disparagement Clause Unconstitutional” (June 2017)
• “A Question of ‘Integrity’” (March 2017)
• “En Banc Federal Circuit Overhauls Inequitable Conduct Law” (July 2011)
• “Applying Inwood to Online Market Place, Second Circuit Finds ‘Generalized Knowledge’ of Counterfeiting Insufficient for Contributory Trademark Infringement” (July 2010)
• “Fed Circuit Affirms En Banc a Separate ‘Written Description’ Requirement under 35 U.S.C. § 112, Paragraph 1” (July 2010)
• “When Your Case May Hang on a Single Comma: Ariad Revives the Written Description Debate under 35 U.S.C. §112, ¶1” (September 2009)
• “Inter partes re-examination: What lies ahead?” (August 2008)

Speaking Engagements

• “Hitting the Mark: Identifying the Best Time(s) to Use Outside Trademark Counsel”, King County Bar Association (September 2023)
• “Legal Answers – Trademark Domain Name Dispute“, Ryan Swanson Video Series (May 2023)
• “Trademark Law 101: Basics of Brand Selection and Protection”, Parenthood Ventures (November 2022)
• “Trademark Re-Examination and Expungement Procedures at the USPTO”, King County Bar Association (October 2022)
• “Selecting a Strong Trademark: Legal Considerations for Naming Your Start-Up” (July 2022)

Legal Answers – Trademark Domain Name Dispute

Someone is using your trademark in their domain name without your permission – What do you do? In the short video below, John provides valuable insights on how the Uniform Domain-Name Dispute Resolution Policy (UDRP) can be used to cost-effectively address this issue and protect your brand’s identity.