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John A. "Jack" Clifford

Of Counsel

JClifford@MerchantGould.com
D 612.336.4616
M 480.725.8806

Assistant

Amanda J. Lundquest

ALundquest@MerchantGould.com
D 612.336.4712
John A. Clifford photo

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.

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.”

Represented a French wine maker in an important matter concerning a regional indicator dispute. This Opinion is a Precedent of the TTAB.

Represented the successful Opposer,...

  • Creighton University, J.D., 1981,

    Member, Creighton Law Review

  • Creighton University, B.S. Physics, 1978
  • Nebraska State Bar, 2010-2018
  • Arizona State Bar, 2006
  • Minnesota State Bar, 1981-2021
  • U.S. Patent and Trademark Office, 1981
  • U.S. Court of Appeals for the Ninth Circuit, 2017
  • U.S. District Court, District of Michigan, 2013
  • 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
  • U.S. Court of Appeals for the First Circuit, 2004
  • U.S. District Court, District of Colorado, 1999-2018
  • 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

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, 1981-2021
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

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, 2012-2023 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, 2006-2021
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 25 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.

Super Lawyer for 15 Years Best Lawyers Lawyer of the Year 2014

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.

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.)

Available upon request