Introduction

John is a senior associate in Fredrikson & Byron’s Advertising, Marketing & Trademark Group. His practice focuses on protecting and defending all forms of commercial creativity, including trademarks, advertising, promotions, and copyrightable works.

As an advertising account executive for five years before law school, John learned what trademark owners and the entire creative world need from an attorney – and how fast they need it. This real world experience left John uniquely suited to balance the legal risks and marketplace realities facing his clients. Unlike many IP attorneys, he’s not a patent attorney moonlighting on trademark and marketing issues or just a lawyer who thought trademarks and copyrights sounded fun. John is actually skilled in the ways of the marketplace and schooled in the creative process. Plus, for the past seven years, John has practiced law within the only real advertising law practice in Minnesota, handling legal issues most attorneys never encounter. This legal experience, coupled with John’s marketing background and common-sense approach, provide John’s clients with a true competitive advantage.

John’s impact in the creative community is even starting to be noticed by the legal community. He was named a Rising Star by Minnesota Law & Politics, Minneapolis St. Paul Magazine, and Twin Cities Business, plus the Trademark Insider named John one of the top 50 trademark attorneys in the nation in 2008.

Education

• William Mitchell College of Law, J.D., 2002, magna cum laude
• Iowa State University, B.S., Journalism/Advertising, 1990, graduated with Phi Kappa Phi honors

Bar Admissions

• Minnesota, 2002

Practice Areas

• Advertising, Marketing & Trademark Law
• Copyrights

Representative Experience

• Advertising Copy Compliance
• Sweepstakes Compliance
• Trademark Searches/Registrations
• Domain Name Selection/Protection
• Copyright Searches/Registrations
• Trademark/Copyright Disputes
• NAD/NARB Challenges
• Advertising Legal Disputes
• Errors/Omissions Insurance Review
• Agency/Client Agreements
• Celebrity Talent Agreements
• Website Development Agreements
• Non-Compete Agreements
• Music License Agreements
• Trademark Licensing Agreements

Selected Publications & Presentations

• “The New Generation of IP Challenges: Controlling Your Brand on You Tube, eBay, Wikipedia and Other Frontiers,” International Franchise Association 41st Annual Legal Symposium, Washington, D.C., May 12, 2008
• “Win, Lose or Draw - Protecting Board Games in a Competitive Marketplace,” Fredrikson & Byron’s Trademark Topics^SM, May 2008
• “Subway v. Quiznos: Homemade Advertising, YouTube & You,” Fredrikson & Byron’s Trademark Topics^SM, February 2008
• “Can Promotion Law Slow Down the Hannah Montana Machine?,” Fredrikson & Byron’s Trademark Topics^SM, January 2008
• “Comparative Advertising in Today’s Marketplace: Whatever Happened to ‘Brand X?’,” Fredrikson & Byron’s Trademark Topics^SM, December 2007
• “Naked Licensing ‘N The ‘Hood,” Fredrikson & Byron’s Trademark Topics^SM, September 2007
• “Top 5 Greatest Minnesota Marks – One Trademark Attorney’s Opinion” Fredrikson & Byron’s Trademark Topics^SM, July 2007
• “Sign, Sign, Everywhere a Sign,” Fredrikson & Byron’s Intellectual Property Focus Newsletter, June 2007
• “Using Competitive Trademarks As Search Engine Keywords: Trademark Infringement or Strategic Marketing?,” Fredrikson & Byron’s Trademark Topics^SM, April 2007
• “The Yin & Yag of Copyright: Protections and Prohibitions in Graphic Design,” 2007
• “Your Fictional Literary Character: Trademark Cash Cow or Unprotectable Loser?,” Fredrikson & Byron’s Trademark Topics^SM, March 2007
• “I Love You, You Hate Me:  Barney Loses Legal Bout to Stop On-line Parody,” Fredrikson & Byron’s Trademark Topics^SM, January 2007
• “Sign, Sign, Everywhere a Sign: Restrictions on Signage and What You Can Do,” Fredrikson & Byron’s Trademark Topics^SM, December 2006
• "Bank Name Robbery: Choosing and Policing Strong Marks," Fredrikson & Byron’s Bank Focus Newsletter, March 2006
• He Said, She Said: Using Testimonials, Endorsements and Spokespeople; 2005
• A Practical Guide to Selecting and Protecting Strong Trademarks in the Banking Industry; 2005
• Don’t Play Games with Your Promotions: A Marketing Law Overview; 2005
• Public Relations: Legal Landscapes & Landmines; 2005
• Advertising Pitfalls: Common Mistakes, Creative Solutions; 2004
• The Dangerous World Of Rebates, Free Offers and Pricing Claims; 2004
• Using Phone, Fax and E-Mail Advertising Effectively (and Legally); 2003
• Misleading Advertising Under the Lanham Act: Watch Yourself and Your Competitors; 2003
• Trademark Protection Basics: What, Where, When and How; 2003
• Copyright Damages & the Internet; 2003
• Madrid Protocol Update: A New Filing System For International Trademarks, co-authored with Dean R. Karau, 2003

Professional Activities

• Account Executive, Carmichael Lynch Advertising, 1994-1999, managing marketing campaigns and building brands for such clients as Harley Davidson, Rollerblade and United HealthCare (an invaluable education for any ad law and trademark attorney)
• Advertising Federation of Minnesota, Board member and legal counsel
• American Marketing Association
• American Institute of Graphic Arts, legal counsel
• Co-editor, Trademark Topics Online Newsletter
• MIPLA

Honors & Distinctions

• Ranked a Top 50 Trademark Attorney in CSC Q2-2008 Trademark Insider Report
• William Mitchell Law Review
• Magna Cum Laude
• Named 2007 Rising Star by Minnesota Law & Politics, Minneapolis St. Paul Magazine, and Twin Cities Business