Jonathan M. Gelchinsky

Partner

Jonathan Gelchinsky has a diverse trademark practice that includes litigation, domestic and international prosecution and disputes, clearance, counseling, licensing, and proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. He also assists clients with the protection, enforcement, and licensing of copyrights. He 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.

Mr. Gelchinsky has experience managing and advising on the global trademark portfolios of highly successful, leading businesses of all sizes. He has handled numerous trademark litigations and Board proceedings, and has been involved in such cases from filing to trial. Mr. Gelchinsky has particular experience in Internet-related trademark issues such as domain name disputes, including handling dozens of complaints under the Uniform Dispute Resolution Policy (UDRP) and numerous federal lawsuits and foreign litigations involving domain names.

Mr. Gelchinsky has appeared as a speaker on trademark issues before organizations such as the New England Corporate Counsel Association and the American Bar Association; has been a guest lecturer on trade dress at Suffolk Law School; and has twice been a featured speaker at the American Intellectual Property Law Association's annual Trademark Boot Camp, providing training to lawyers on trademark practice. Mr. Gelchinsky also serves as the editor-in-chief of Finnegan's monthly trademark newsletter, Incontestable.

Highlights

• Obtained a temporary restraining order (TRO) for Yahoo! enjoining the defendants from using an infringing domain name for a website offering free stock in the defendants' company.
• Obtained statutory damages awards for Yahoo! in three separate cybersquatting lawsuits, in the amounts of $75,000, $100,000, and $225,000.
• Obtained summary judgment that software company's ComponentArt mark and name did not infringe or dilute its competitor's ComponentOne mark and name for computer software.  2008 WL 4790661

Professional Recognition

• Ranked among top Massachusetts trademark lawyers for contentious and non-contentious work in World Trademark Review 1000, 2012-2013.
• Recognized by The Legal 500 U.S. as a leading trademark litigator, 2008; and for non-contentious trademark work, 2010-2011.

Professional Activities

• International Trademark Association
• American Bar Association (Section on Intellectual Property Law)
• American Intellectual Property Law Association

Select Publications

• Coauthor. "U.S. Bose Decision - Effects on Madrid System Users," WIPO Magazine, June 2010.  
• Coauthor. "Common Workplace Activities Can Cause Copyright Problems," New England In-House, May 2010.
• "A Home Run for Fantasy Baseball Leagues," Journal of Intellectual Property Law and Practice, Jan. 2008.
• Coauthor. "Trademark Law and the Internet," Trademark Practice & Forms, April 2002 and Sept. 2005.