Jonathan M. Gelchinsky
Partner
Jon Gelchinsky has specialized in trademark and copyright matters for 25 years, and his clients have included some of the world’s most well-known brands. His trademark practice involves counseling businesses on the selection of new marks, clearance searching, U.S. and international registration, licensing, enforcement, oppositions, and litigation.
Jon has represented clients in a wide range of industries, including sporting goods, apparel, consumer products, pharmaceuticals, cannabis, medical devices, software and hardware, online media, musical instruments, publishing, education, motorcycles, and industrial machinery. He has also been engaged by startups and entrepreneurs to provide strategic counseling on early-stage 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, and handling internet-related trademark and domain name disputes, including Uniform Dispute Resolution Policy (UDRP) proceedings and lawsuits before courts in the U.S. and abroad. Jon uses his expertise in the field, whenever possible, to negotiate practical business-minded resolutions to IP disputes.
Jon also advises clients on issues relating to anti-counterfeiting, social media, e-commerce, AI, and various other emerging technologies.
Jon has been a recurring presenter at the American Intellectual Property Law Association’s (AIPLA) annual Trademark Boot Camp, and has appeared as a panelist and speaker on trademark and unfair competition issues before organizations including the American Bar Association, New England Corporate Counsel Association, Maine Bankers Association, Maine Center for Entrepreneurs, University of New Hampshire, and Boston Bar Association.
Prior to joining Pierce Atwood, Jon was a partner at the intellectual property firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, in Boston.
- Recognized by World Trademark Review (WTR) WTR 1000, the first and only standalone ranking publication that focuses exclusively on trademark practices and practitioners. Jon received a silver rating for his work in the categories of Enforcement & Litigation and Prosecution & Strategy (2011-present).
- Recognized by The Legal 500 U.S. as a leading trademark litigator in 2008, and for non-contentious trademark work (2010-2011)
- International Trademark Association (INTA)
- Unreal Campaign Committee (2022-2023)
- Trademark Office Practices Committee (2020-2021)
- American Intellectual Property Law Association
- Co-author, Federal Court Rules NFTs Entitled to First Amendment Protection in Trademark Case, IP Litigator Vol. 28, No. 4 (July/August 2022)
- Four Truths for Successful Brand and Trademark Evolution, Package Design Magazine (September 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)
- Board of Directors, Temple Beth El, Portland, Maine
Practice Areas
Latest Updates in Intellectual Property & Technology
- Provide brand protection and global trademark portfolio management for baseball giants Rawlings and Easton
- Successfully resolved disputes involving misuse of a famous golf brand in a manner alleged to constitute parody
- Assisted 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
- Counsel and assist one of the world’s oldest and most revered educational institutions in protecting its brand assets before the U.S. Patent and 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
- 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 a world-leading therapeutic taping provider
- Obtained numerous federal court injunctions for Yahoo! involving the registration and use of infringing domain names