John C Nishi

John C. Nishi

Member and Trademarks and Copyrights Practice Group Co-Chair
John Nishi assists clients with domestic and foreign trademarks, focusing on strategic counseling in brand selection, protection and risk management strategies, trademark prosecution, and portfolio management. In addition, he has extensive expertise and experience in the licensing of trademarks, copyrights and publicity rights, as well as counselling on intellectual property aspects of transactions. His clients have included many of America’s and the world’s most prominent brand owners across a range of industries, including one of the world’s largest and most innovative online technology companies, one of the world’s largest retailers, and leading brand owners in the pharmaceutical, nutritional supplement, healthcare, apparel, computing, and print and online media industries.

Before entering law school, John performed professionally for ten years as an orchestral and chamber musician and soloist, and served for eight years as Principal Clarinetist of the Florida Symphony Orchestra.

Education & Credentials

Education

Yale University

B.A., Philosophy, 1977
  • cum laude

University of Southern California

Master of Music, Clarinet Performance, 1980
  • Sole Recipient, Outstanding Graduate Award

University of Chicago

J.D., 1993
  • Associate Articles Editor, University of Chicago Legal Forum

Bar Admission

  • Michigan2006
  • California1995
  • Illinois1993 (Inactive)

Acknowledgements

  • Chambers USA: America's Leading Lawyers for Business
    • Intellectual Property, 2017-2020
  • WTR 1000
    • World’s Leading Trademark Attorneys, Michigan – Gold Band, 2018-2020
  • Best Lawyers in America®
    • Litigation - Intellectual Property, 2020-2021

Prominent Assignments

  • Developed an innovative brand ownership and licensing structure for a leading global mobile device company.
  • Counseled one of the world’s leading mobile device and home computing providers on strategies for product configuration trade dress protection.
  • Advised a start-up clothing manufacturer on brand protection and acquisition strategies.
  • Managed legal aspects of a large healthcare provider’s corporate rebranding.
  • Implemented the worldwide trademark clearance and filing program for an international electronics provider’s $100 million brand launch.
  • Domestic and foreign trademarks, including trademark prosecution, portfolio management, and availability counseling.
  • Copyright, advertising, unfair competition, consumer protection, and Internet law counseling.
  • Licensing of trademarks, copyrights and publicity rights.
  • Counseling on intellectual property aspects of transactions.
  • Litigation of trademark, copyright, unfair competition and Internet law matters.
  • Developed an innovative brand ownership and licensing structure for a leading global consumer electronics company.
  • Directed the worldwide trademark clearance and filing program for a $100 million brand launch.
  • Negotiated trademark aspects of a $117.5 million purchase from bankruptcy of the assets of an internationally known athletic shoe company.
  • Supervised the acquisition by a leading toy company of a portfolio of classic computer game trademarks and developed strategies to minimize the vulnerability of the acquired rights.

Professional Involvement

  • Member, International Trademark Association (INTA)    
  • Related Rights Committee - Right of Publicity/Persona Subcommittee (2014-2015 term)
  • Non-Traditional Marks Committee (2012-2013 term)
  • Committee Chair, INTA Emerging Issues Committee (2010-2011 term) (Vice-Chair for 2008-2009 term)
  • Subcommittee Chair, INTA Emerging Issues Committee, Fair Use and Other Boundaries Subcommittee, 2006-2007 (Subcommittee Member, 2004-2005)
  • Member, INTA Special Committee for the Internet, 1999-2000
  • INTA Editorial Board for the Trademark Reporter, 1996-1999

Publications/Presentations

  • Co-Author, “Copyright Office Response to COVID-19 Pandemic,” Dickinson Wright Client Alert, April 2020 
  • Table Topic Discussion Facilitator, "Madrid Protocol - a U.S. Perspective," INTA Annual Meeting, May 2006
  • Speaker, "Trademark Issues in Advertising," April 2006
  • Speaker, "IP Issues in Transactions," March 2006
  • Speaker, "Internet Trademark Issues," February 2005
  • Table Topic Discussion Facilitator, "Hot Issues in Trademark Law," INTA Annual Meeting, May 2004
  • Table Topic Discussion Facilitator, "Conducting a Trademark Audit," INTA Annual Meeting, May 2002
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