Jon Gelchinsky specializes in the protection and enforcement of trademark rights for businesses of all sizes. His diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, enforcement, oppositions, and litigation. He also assists clients with the protection, enforcement, and licensing of copyrights. Over the past 17 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, sporting goods, and heavy machinery. He has also been engaged by numerous startups, entrepreneurs, and early-stage companies to provide strategic counseling in intellectual property matters.

Jon’s experience includes litigating trademark disputes before federal courts and the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. He has also handled internet-related trademark issues and domain name disputes for clients, including Uniform Dispute Resolution Policy (UDRP) proceedings and lawsuits before courts in the U.S. and abroad. Jon also advises clients on issues relating to keyword advertising and social media.

Jon has appeared as a panelist and speaker on trademark and unfair competition issues before organizations including the American Bar Association, American Intellectual Property Law Association (AIPLA), New England Corporate Counsel Association, Maine Bankers Association, Maine Center for Entrepreneurial Development, University of New Hampshire, and Boston Bar Association. Jon been a guest lecturer on trade dress at Suffolk University Law School, and has been a featured speaker at the AIPLA'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 2017 edition of WTR 1000. This is the sixth 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 (INTA): Legislation and Regulation Committee, 2016-2017

American Intellectual Property Law Association

Boston Bar Association

Publications

Four Truths for Successful Brand and Trademark Evolution, Package Design Magazine, Sept. 2016

A Name Worth Remembering: Critical Steps to Creating and Protecting your Trademark, Brand Experience Magazine, April 2016

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

Protect Your Brand in a Digital World, Mainebiz, July 2017

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

Secretary, Board of Directors, Temple Beth El, Portland, ME

Practice Areas

Representative Experience

  • Provide brand protection and global trademark portfolio management for Easton, the world’s leading manufacturer of baseball and softball equipment
  • Assist leading footwear manufacturer, through litigation and other means, to curb the sale of its products through unauthorized channels  
  • Support efforts by Caterpillar subsidiary, Solar Turbines, to enforce and protect trademark rights for its line of gas turbine machinery products
  • Counsel and assist one of the world’s oldest and most revered educational institutions in protecting its brand assets before the U.S. Patent & Trademark Office
  • Successfully settled a dispute after initiating litigation to stop the use of a famous sporting goods brand as the name of a competing sports training academy
  • Successfully defended a party’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 U.S. Court of Appeals for the Seventh Circuit Court 
  • Developed and prepared a comprehensive certification trademark licensing program for Kinesio, the world's leading therapeutic taping provider
  • Obtained numerous federal court injunctions for Yahoo! involving the registration and use of infringing domain names 

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