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About Jon

Jon advises artists, inventors, entrepreneurs, and Fortune 500 companies on intellectual property matters, with a particular emphasis on copyrights and trademarks. In addition to handling IP-related matters, Jon counsels clients on advertising, business formation, cybersecurity, data privacy, commercial transactions, open source and Creative Commons licensing, free speech, fair use, and other business concerns.

In terms of proactive IP protection, Jon is known for developing efficient global strategies that take into account clients’ objectives and budget. Jon brings a profound sense of empathy to his client relationships, drawing on his own experience as an entrepreneur and developing an in-depth knowledge of each client’s products, brands, and objectives. Then, he is known for providing clear, practical guidance that clients can actually understand. Recognizing Jon’s skills in this arena, the International Trademark Association (INTA) selected him to moderate a discussion on holistic IP strategy for start-ups with attorneys from four continents.

Jon works closely and collaboratively with clients at every step, from helping to resolve issues with trademark applications, to negotiating, documenting, and closing IP transactions. With transactions, he is known for his thoughtful, focused, and detail-oriented approach. The key to Jon’s success in this area is that he shares his clients’ excitement for new opportunities and harnesses that energy to move the parties toward the finish line before the transaction becomes overburdened with lawyers. As he often notes, “time is often the greatest cause of death for a deal.” Whenever Jon represents a client in a deal, he does everything in his power to prevent that from happening.

When disputes arise, Jon goes to great lengths to work with opposing counsel to avoid costly litigation. When matters cannot be resolved amicably, he is a fierce advocate, representing clients in litigation, appeals, settlement negotiations, and other actions in state and federal courts, at the Trademark Trial and Appeal Board, and in arbitration. Among other cases, he has counseled clients in disputes involving contracts, copyrights, trademarks, false association, fraud, unfair competition, cybersecurity, data privacy, IP licensing, domain-name disputes, and takedown proceedings.

Jon’s clients have interests and operations in a wide array of industries, including analytics, cosmetics, cleantech, consumer products, cloud computing, computer hardware and software, cybersecurity, digital health, digital media, e-commerce, education, entertainment (music, art, performance), fashion, financial services, medical devices, medical and recreational cannabis, hemp and CBD, optics, pharmaceuticals, publishing, renewable energy, robotics, semiconductors, telecommunications, and virtual/augmented reality.

Jon contributes regularly to Fish & Richardson’s Trademark & Copyright Thoughts blog and is a former author and co-editor of a textbook on trademark law. He is also an active member of INTA and the Intellectual Property Owners Association (IPO), and a dedicated pro bono legal advocate, providing an average of 200 hours of pro bono legal services per year.

In his free time, Jon is an avid fiction writer, and is currently finalizing his novel, Inter Vivos, for publication. His other hobbies include attending live music events (when possible), managing a 3,000+ LP collection, and riding his Peloton (username: CatamaRandy—Jon’s more fun fictional persona).

Publications

Speaking Engagements

  • IP and Cannabis: The Current Landscape,Fish & Richardson Webinar (October 2020)
  • “Holistic IP Strategy for Start-Ups,” INTA 2019 Table Topic (May 2019)
  • “Domain Name Disputes Post-GDPR: Navigating URS, UDRP With Reduced Access to Information,” Strafford (November 2018)
  • “Green Business: Advising Clients on Protecting and Enforcing Cannabis Brands,” California State Bar (March 2017)

Perfected an efficient, creative approach to takedown matters, which helped scale up the firm’s high-volume efficiency for a Fortune 10 consumer electronics company, more than doubling the number of matters handled annually and increasing the success rate, mostly on first attempt, to 95%.

Defended a pro bono client in a Creative Commons licensing matter against a copyright troll with an extensive history of suing in federal court for infringements based on minor mistakes regarding a very specific attribution license. Successfully exposed the scheme and protected his client’s interests, subsequent to which the copyright troll was fired by his counsel.

Obtained $780,000 on behalf of a typeface company in a successful copyright enforcement action. Also handled numerous transactional matters and disputes for the same client.

Successfully differentiated coolers from insulated cups before the TTAB for a client with an insulated cup product. Successfully distinguished the differences based on the concepts of transporting multiple food/drink items versus the contemporaneous consumption of a single drink.

Focus Areas
Education

J.D., University of San Diego School of Law (2014) Member, San Diego Law Review, President, Intellectual Property Law Association, Pro Bono Service Recognition, 500 Hours of Pro Bono Legal Services


B.A., Creative Writing (Fiction), Florida State University (2008)

Admissions
  • California 2014
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
Memberships & Affiliations

• International Trademark Association (INTA)

• Intellectual Property Owners Association (IPO)—U.S. Trademark Law Committee

What's trending with Jon

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Blog
December 2, 2020
IP and Cannabis: The Current Landscape
Authors: Steffen C. Lake, Jon Jekel, Keith A. Barritt, M. Angela Parsons, Ph.D., Steven R. Katz
Event
October 20th, 2020 | 1:30 pm EDT
Webinar | IP and Cannabis: The Current Landscape
Webinar
Blog
April 10, 2020
Federal Circuit Rules Color Trademarks Can Be Inherently Distinctive, Vacating TTAB
Authors: Jon Jekel, Lisa Greenwald-Swire
Blog
Blog
November 26, 2018
Color Guard: Tips for Registering a Color as a Trademark with the USPTO
Authors: Jon Jekel, Lisa Greenwald-Swire
Uncategorized
Blog
July 19, 2018
Tips for Dealing with Domain Name Disputes without WHOIS Information
Authors: Jon Jekel, Lisa Greenwald-Swire
Uncategorized
Blog
June 28, 2018
ICANN Proposes Framework for WHOIS Access, but Questions Remain
Authors: Jon Jekel, Lisa Greenwald-Swire
Blog
Blog
March 22, 2018
Embedding Content is Safe, Right? A Recent Case Says No, Creating Serious Concerns for Websites with Unlicensed Third-party Content
Authors: Jon Jekel, Lisa Greenwald-Swire
Blog
Blog
March 16, 2018
Two Recent Trademark Decisions Provide Ammunition for Trademark Owners Who Receive Improper Specimen Refusals for Service Marks
Authors: Jon Jekel, Lisa Greenwald-Swire
Blog
Blog
February 5, 2018
Branding Social Movements: Why Attempts to Trademark #MeToo, Black Lives Matter, and Other Movements are Likely to Fail and Could Harm Core Brands
Authors: Jon Jekel, Lisa Greenwald-Swire
Blog
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