Jon Gelchinsky specializes in managing and advising on the global trademark portfolios of highly successful, leading businesses of all sizes. His diverse trademark practice ranges from counseling clients on the selection of new trademarks, clearance searching, U.S. and international prosecution, and licensing, to enforcement, oppositions, and litigation. He also assists clients with the protection, enforcement, and licensing of copyrights. Over the past 16 years, Jon has represented a wide range of clients in a variety of industries, including consumer products, musical instruments, medical devices, pharmaceuticals, computer software and hardware, online media, telecommunications, publishing, education, motorcycles, and heavy machinery. He has also been engaged by numerous startups, entrepreneurs, and early-stage companies in intellectual property matters.

Jon has handled trademark litigations and proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office from filing to trial. He has particular experience handling internet-related trademark issues and domain name disputes, including dozens of complaints under the Uniform Dispute Resolution Policy (UDRP) and numerous federal lawsuits and foreign litigations involving domain names. Jon also advises clients on issues relating to keyword advertising and social media.

Jon has appeared as a speaker on trademark issues before organizations such as the Maine Bankers Association, the Maine Center for Entrepreneurial Development, the New England Corporate Counsel Association, the Boston Bar Association, and the American Bar Association; has been a guest lecturer on trade dress at Suffolk Law School in Boston; and has been a featured speaker at the American Intellectual Property Law Association's annual Trademark Boot Camp, providing training to lawyers and administrators on trademark practice.

Prior to joining Pierce Atwood, Jon was a partner at the intellectual property firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, in Boston.

Honors & Distinctions

Recognized by World Trademark Review (WTR) for inclusion in its 2016 edition of WTR 1000. This is the fifth consecutive year that Jon has received recognition from this first and only stand-alone ranking publication to focus exclusively on trademark practices and practitioners. Jon received a silver rating for his work in the categories of Enforcement & Litigation and Prosecution & Strategy.

Recognized by The Legal 500 U.S. as a leading trademark litigator in 2008 and for non-contentious trademark work for 2010-2011.

Professional Activities

International Trademark Association: Legislation and Regulation Committee, 2016-2017

American Intellectual Property Law Association

Boston Bar Association

Publications

2014 Trademark Law Decisions of the Federal Circuit, American University Law Review (64 Am. U. L. Rev. 967), June 2015

U.S. Bose Decision - Effects on Madrid System Users, WIPO Magazine, June 2010

Common Workplace Activities Can Cause Copyright Problems, New England In-House, May 2010.

Civic Activities

Board Member, Temple Beth El, Portland, ME

Practice Areas

Representative Experience

  • Successfully defended a client's bid to operate as a registry for the new top-level domain .moto against a legal rights objection asserted by the owner of the MOTO trademark
  • Obtained a temporary restraining order, preliminary injunction, and preliminary anti-suit injunction on behalf of Harley-Davidson against a former licensee, all of which were affirmed on appeal to the Seventh Circuit Court of Appeals
  • Developed and prepared a comprehensive certification trademark licensing program for Kinesio, the world's leading therapeutic taping provider

Highlights

Clients and peers call Jon, "a boon to the vibrant start-up community in Boston," renowned for his “excellent knowledge of substantive and procedural trademark law,” and he has"carved out a niche in keyword advertising and social media issues.“

-2017 World Trademark Review WTR 1000