PRACTICE AREAS
- Trademark, copyright, and unfair competition litigation in the United States and Mexico.
- Proceedings before the U.S. Trademark Trial and Appeal Board.
- Alternative Dispute Resolution
- Trademark prosecution and portfolio management in the United States.
- Trademark licensing.
- Trademark agreements.
- Domain name enforcement proceedings.
- Prosecution of criminal actions for trademark enforcement in Mexico.
LANGUAGES
- Spanish
- English
John is Of Counsel in BGAL ASOCIADOS and has over 30 years of experience in trademark, trade dress, and unfair competition law, mainly focused on the United States legislation and practice.
John’s commitment to his clients is evident in his representation in disputes before the United States Patent and Trademark Office and the US federal courts. His legal professional practice involves conducting trademark searches and drafting opinions on trademark registration, trademark prosecution and maintenance, and proceedings before the Trademark Trial and Appeal Board, including opposition and cancellation proceedings and ex-parte appeals. He has broad experience drafting trademark licenses, settlement and coexistence agreements, and other IP transactional matters.
John is a member of the Illinois Bar and has represented clients in federal district courts throughout the United States.
- Wesleyan University, Middletown, Connecticut. Bachelor of Arts in Government with High Honors, 1987. Phi Beta Kappa.
- Northwestern University Pritzker School of Law, Chicago, Illinois. Juris Doctor, 1990.
- Admitted by the Supreme Court of Illinois (1990), U.S. District Court for the Northern District of Illinois (1991), and U.S. Court of Appeals for the Seventh Circuit (1991).
- BGAL Asociados, S.C. (Of Counsel, 2020-present).
- Arochi & Lindner, S.C. (Of Counsel, 2005-2020).
- Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLC (Associate, 1990-1997; Partner, 1997-2004).
- The New Trademark Opposition System in Mexico, 107 Trademark Reporter 746 (May-June 2017).
- Famous Marks in Mexico: Past, Present and Future, 105 Trademark Reporter 1060 (September-October 2015).
- Análisis de la probabilidad de confusión y dilución en la ley de marcas de Estados Unidos (The analysis of likelihood of confusion and dilution in the United States trademark law, Foro (1er Semestre 2010).
- The Confusing Similarity Standard in Mexican Trademark Law, 96 Trademark Reporter 1182 (November-December 2006).
- The (Unfortunate) Significance of Intent in TTAB Proceedings Under Section 2(d) of the Lanham Act, 34 AIPLA Quarterly Journal 177 (Spring 2006).
- Playing the Numbers: A Quantitative Look at Section 2(d) Cases Before the Trademark Trial and Appeal Board, 94 Trademark Reporter 800 (July-August 2004).