John Froemming is an intellectual property and advertising trial lawyer and has been undefeated in his more than 60 trademark and design trials and district court cases over the past 15 years.
Corporate counsel have recognized John in multiple BTI Client Service surveys as one of the top 30 U.S. "All-Stars" in intellectual property (including once as one of only three as an "MVP"). In 2022, the World Trademark Review cited him as a Global Leader. He has been ranked as one of 25 "IP Trailblazers" by The National Law Journal, one of the top trademark litigators in the United States by The Legal 500, and as an "IP Star" by Managing IP Magazine.
John has won jury and bench trials as well as preliminary injunction evidentiary hearings for clients against competitors in federal courts across the country. He also has resolved many cases short of trial, including a summary judgment dismissal of one of the highest stakes design patent cases in U.S. history. He also represents clients in high-stakes, competitor-versus-competitor advertising disputes, including $100 million district court litigation and complex technical disputes before the NAD/NARB (National Advertising Division/National Advertising Review Board).
John is also a registered patent attorney. He chairs the International Trademark Association's Designs Enforcement Subcommittee. He has published and spoken in Europe and the United States on a variety of topics involving intellectual property litigation before U.S. courts.
Experience
The following represents experience acquired prior to joining Jones Day.
Evert Fresh Corp. v. Pactiv Corp. Won Texas jury trial against plaintiff represented by respected Texas trial lawyer Randy McClanahan. Plaintiff sought $11 million for alleged breach of a trademark settlement agreement and attorneys' fees under a Texas fee statute.
Abercrombie & Fitch Co. v. Moose Creek, Inc. Won jury trial for plaintiff client on trademark, unfair competition, and contract claims, including a verdict for $5.7 million.
BMW v. Mini Works LLC, et al. Won bench trial for BMW's MINI division on trademark infringement, unfair competition, and cybersquatting claims against defendants offering accessories and sportswear under the name Mini Works.
Nissan Motor Co., Ltd. v. BMW (US) Holding Corp. Nissan filed a motion for preliminary injunction seeking to block BMW from manufacturing, advertising, introducing, and selling its Z4 roadster. As lead counsel for BMW, forced Nissan in effect to withdraw its motion for preliminary injunction.
Cable & Wireless v. MCI WorldCom. Conducted a plurality of the direct examinations for plaintiff Cable & Wireless in internet contract arbitration against MCI Worldcom that resulted in recovery of $248 million.
Abercrombie & Fitch Co. v. Knowles. Obtained confidential settlement of trademark claims against singer Beyoncé.
Valentino USA Inc., et al. v. Abecassis, et al. Successfully tried preliminary injunction evidentiary hearings and won a rare asset freeze for plaintiff Valentino against trademark infringers.
adidas-America, et al. v. Abercrombie & Fitch Co. Defended Abercrombie & Fitch in trademark litigation brought by adidas.
United Communications Group v. Data Transmission Network. Successfully tried preliminary injunction evidentiary hearing for plaintiff alleging false advertising of oil price information services product.
BMW of North America, et al. v. Highlinewheels Corp. Successfully tried a contempt case and recovered attorneys' fees from a seller of non-genuine wheels.
BMW v. Bekkers. Won injunctive and monetary settlement from major distributor of grey market goods.
Gonzalez v. Amoco. Represented defendant in successful jury trial of dealer termination claims.
Havassy v. Hollister Co., et al. Won dismissal of right of publicity claims and settled remaining copyright claim.
MDL-150 Petroleum Products Antitrust Litigation. Represented Shell Oil in MDL-150 petroleum products antitrust litigation; responsible for government controls witnesses, including Paul McCracken, chairman of President Nixon's Council of Economic Advisers.
Nippon Chemical Sales v. Texaco. Managed Texaco's successful defense of contract litigation brought by Japanese dealer seeking "lost profits" totaling $6 million.
Northland Cranberries Inc., et al v. Ocean Spray Cranberries Inc. Represented plaintiff manufacturers in substantial price-fixing and monopolization litigation against Ocean Spray and its grower members.
Sherwood Brands v. Heritage Wafers. Defeated TRO motion brought by consumer products manufacturer alleging trade dress infringement.
State of New York v. Microsoft Corp. Represented Gateway and its attorney/witness in the Microsoft states trial.
Vitamins Antitrust Litigation. Represented opt-out plaintiff and advised other plaintiffs on European/extraterritorial discovery issues.
Additional Publications
- August 2021
Hidden Meanings, 47 Litigation 10
Speaking Engagements
- August 7, 2023
USPTO Enforcement Consultations with the Saudi Authority for Intellectual Property: Roundtable Discussion of Trademark Enforcement Issues - July 26, 2023
USPTO Indo-Pacific Judicial Colloquium on IP, Innovation and Technology: Challenges and Issues In Trademark Litigation - January 24, 2023
USPTO Intellectual Property Rights Judicial Exchange: Trademark Practitioner Experience with Civil Cases and Seeking Damages - May 24, 2022
USPTO-ASEAN Connect Digital Economy Series: Developments in U.S. Copyright Law and Enforcement - August 18, 2021
USPTO/ASEAN Workshop: Civil Actions in Trade Secret Misappropriation - August 17, 2021
The Right of Publicity - March 17, 2021
USPTO and ASEAN Webinar: Enforcement of Copyright in the Digital Environment - March 16, 2021
USPTO/APEC Webinar: Enforcement Approaches and Strategies Against Illicit Streaming - December 9, 2020
USPTO and ASEAN Judicial Colloquium: Provisional Remedies, Calculation of Damages, and Use of Expert Testimony in IP Civil Cases - October 9, 2020
APEC USPTO: Organized Online Design Webinar: Enforcement of Industrial Designs - September 25, 2020
Protecting The Appearance of Pharmaceutical Products and Packaging - October 24, 2018
George Washington University: Design Law 2018 - April 24, 2018
New York City Bar Association Panel: The Law of Design and Consumer Products - February 26-27, 2018
INTA Designs Conference Panel: 3D Printing: Just Because I Can, Should I? - January 18, 2018
Litigating Intellectual Property Rights in the USA, US IP Workshop, Humboldt University - May 21, 2017
INTA Annual Meeting: Discussion of Design Law as Applied to “Functional” Aspects of Designs - May 4, 2016
Compliance in the Precision Medicine Era: Legal Considerations for the Contemporary Life Sciences Industry - December 11, 2015
Litigating Intellectual Property Rights in the USA, US IP Workshop, Humboldt University - November 18, 2015
Georgetown Law Center: Government and Its Regulation: "Soft" IP - October 27, 2015
Federal Bar Association Litigation Conference: Cease and Desist Letters - July 22, 2015
FDA Boot Camp: Advertising & Promotion - March 12, 2015
Navigating the Lanham Act Litigation Frontier - March 11, 2015
Competitor Challenges 101 - Introduction to the Lanham Act, National Advertising Division and Network Challenges - February 26, 2014
Executive Roundtable Series: Protecting Your Business Against Online Counterfeiting and Patent Trolls - January 22-23, 2014
Recent Developments in Trademark, Copyright, False Advertising and Right of Publicity Law - December 2013
Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin - July 17, 2013
Design and Utility Patent; Trade Dress and Copyright: How to Prosecute and Enforce Multiple Layers of IP Protection, Intellectual Property Owners Association (IPO) - January 31, 2013
Trademarks, Social Media, Apps and Games, Jones Day University - April 27, 2012
Executive Roundtable Series
Hot Topics in Trademark, False Advertising, and Copyright Law - April 19, 2012
Winning (And Managing Costs In) False Advertising and Other Lanham Act Litigation - March 2012
Wie Sie Marken und Unternehmensnamen in den USA Schűtzen (How to Protect Marks and Company Names in the U.S.), Markensymposium, German Ministry for Economics and Technology, and the German Brands Association - December 2011
Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin - October 2011
The 2011 Patent Reform Act: Auswirkungen im Bereich Patent-Gerichtsverfahren (Implications to Patent Litigation) - October 2010
Die Haftung von Internet-Verkaufsplattformen für Markenverletzungen nach Deutschem und US-Recht, (The Liability of Internet Sales Platforms for Trademark Infringements under German and US Law), Markenverband - June 2010
Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin - November 2007
Data Privacy and Security Litigation in the US, International Technology Law Association - June 2007
Initial Experience Under the Amended U.S. Federal Rules Regarding E-Discovery, Computer Law Association - November 2006
How the New E-Discovery Rules Will Change US Litigation and EMail Retention Policies, International Technology Law Association - June 2005, March 2005
Die Prozessführung vor US-amerikanischen Gerichten im gewerblichen Rechtsschutz (Intellectual Property Litigation Before US Courts). Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V. (German Union for Intellectual Property and Copyright) - June 2005
Litigation of IP Issues in the United States, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin - March 2005
Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V. (German Union For Intellectual Property and Copyright) - March 2005 & May 2004
Rechtsmittel zum Schutz geistigen Eigentums vor US-amerikanischen Gerichten, Vereinigung von Fachleuten des gewerblichen Rechtsschutzes (GRUR, VPP) - Fall 2003
Evidentiary Issues In Trademark and Unfair Competition Cases, American Intellectual Property Law Association
Cutting-edge cases are a forte of "go-to litigator" John Froemming.World Trademark Review
- The George Washington University, Graduate School of Engineering and Applied Science (M.S. in Computer Science 2011); Northwestern University (J.D. 1985); Dartmouth College (A.B. cum laude 1982)
- Registered to practice before the U.S. Patent and Trademark Office and admitted to: District of Columbia, Virginia, U.S. Courts of Appeals for the District of Columbia and Fifth and Ninth Circuits, and U.S. District Courts for the District Columbia, District of Maryland, and Eastern District of Virginia
- World Trademark Review (2019): "an amazing trial lawyer with the ability to focus in on his clients' business needs and how best to serve them...he runs things lean so everyone working for him knows what their role and contribution is; his teams are like well-oiled machines"
- German