John G.Froemming

Partner

(T) 1.202.879.4693

John Froemming is a trial lawyer with 34 years of experience in intellectual property and false advertising litigation and has been undefeated in all his trademark and design trials and district court cases over the past 10 years.

In 2018 The National Law Journal named John one of 25 "IP Trailblazers" in the country. Corporate counsel have recognized him in the 2016 BTI Client Service survey as one of the top 30 U.S. "All-Stars" in intellectual property, one of only three such IP All-Stars to be named an "MVP." He is also ranked as one of the top U.S. trademark litigators by The Legal 500 survey, as an "IP Star" by Managing IP Magazine, and is listed in Super Lawyers for intellectual property litigation.

John has won jury and bench trials as well as preliminary injunction evidentiary hearings for clients 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.

John is co-leader of the Firm's Intellectual Property Litigation group and is a registered patent attorney. He chairs the International Trademark Association's Designs Emerging Issues Subcommittee and headed its 3D Printing Task Force. 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

SharkNinja cleans up in one of the largest U.S. design patent cases in U.S. history
After Jones Day client SharkNinja Operating LLC successfully defended against vacuum and appliance manufacturer Dyson's claim for infringement on three asserted design patents, Dyson voluntarily dismissed its appeal to the U.S. Court of Appeals for the Federal Circuit on July 30, 2018, bringing to close a case that began more than four years ago.

BMW wins dismissal of claims that its car dealer's name infringes its motorcycle dealer's name
Jones Day won dismissal for BMW of North America, LLC and its Denver car dealer of claims that its car dealer's name (BMW of Denver Downtown) infringes its motorcycle dealer's name (BMW of Denver).

Bose resolves trademark and unfair competition lawsuit against competitor over new product
Bose Corporation hired Jones Day to defend it against trademark infringement and unfair competition claims relating to Bose’s new conversation-enhancing product, Hearphones, and plaintiff Doppler Labs’ Here Buds product.

SharkNinja resolves Lanham Act case against Dyson
SharkNina Operating LLC, the maker of class-leading Shark® vacuums and the innovative line of Ninja® kitchen appliances, hired Jones Day to take over--four months before the scheduled trial--a Lanham Act case against direct competitor Dyson regarding vacuum products of the respective parties.

eos Products and Kind Group get private label knockoff producer to surrender following pretrial rulings on trade dress and design patent issues
On the eve of a two-week jury trial, the seller of the popular egg-shaped eos™ lip balm represented by Jones Day, eos Products LLC and its parent Kind Group LLC, obtained a settlement in which a private label manufacturer has agreed to stop offering knockoff egg-shaped lip balm.

Reynolds Consumer Products wins permanent injunction against competitor
On behalf of Reynolds Consumer Products LLC, Jones Day obtained a permanent injunction against a competitor's use of trade dress similar to that of Reynolds Wrap® trade dress.

Reynolds Consumer Products wins jury verdict of willful infringement
On behalf of Reynolds Consumer Products, LLC, Jones Day prevailed in a jury trial involving infringement of Reynolds Wrap® trade dress.

Deutsche Telekom wins preliminary injunction against new business of AT&T
On behalf of Deutsche Telekom AG, Jones Day won a preliminary injunction against new AT&T subsidiary Aio Wireless' use of color similar to the magenta color trademark licensed by Deutsche Telekom to T-Mobile.

Abercrombie & Fitch defeats claims by Jersey Shore's Mike "The Situation" Sorrentino
Jones Day won summary judgment on behalf of Abercrombie & Fitch Co. dismissing plaintiffs' claims that a "Fitchuation" shirt and a press release responding to his wearing A&F-branded product on the television show infringed his alleged trademark and right of publicity.

BMW obtains $1.5M default judgment in counterfeiting case
Jones Day successfully obtained a $1.5 million default judgment for BMW in a trademark and counterfeiting case brought against a Chinese online platform in the Northern District of California.

H&R Block settles false advertising claims
Jones Day defended H&R Block, Inc. against a plaintiff pursuing five counts of false advertising and seeking $100 million in damages.

BMW successfully enforces trademark infringement claims against US Auto Parts Network
Jones Day successfully represented BMW of North America, LLC in unauthorized use by US Auto Parts Network, Inc. of the BMW word mark, use of "BMW" in domain name and the use of Internet links to unauthorized BMW parts dealers. 

BMW wins trial and Ninth Circuit affirmance in trademark infringement case
Jones Day 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.

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

  • September 2015Adversary Has Patent For Infringing Design? There's Hope
  • June 2014It's A Wrap, Intellectual Property Magazine
  • 2011Trademark, False Advertising and Unfair Competition Cases: The Lanham Act and Beyond, Calculating and Proving Damages, Chapter 7, coauthor, Law Journal Press 2011
  • December 2010Ebay und Co. in der Pflicht? (Ebay on Duty?), Markenartikel 86
  • June 15, 2007Initial Experience Under the Amended US Federal Rules Regarding E-Discovery, coauthor, Computer Law Review International
  • February 28, 2007New Criminal Law Against Pretexting, coauthor, Computer Law Review International
  • October 2005Regulation of Abusive and Infringing Content in e-Business and on the Internet: Developments in National Regulation of Internet Sites and Advertising, coaothor, Computer Law Association
  • March 2005Remedies in Intellectual Property Cases Before US Courts, VPP Rundbrief

Speaking Engagements

  • October 24, 2018George Washington University: Design Law 2018
  • April 24, 2018New York City Bar Association Panel: The Law of Design and Consumer Products
  • February 26-27, 2018INTA Designs Conference Panel: 3D Printing: Just Because I Can, Should I?
  • January 18, 2018Litigating Intellectual Property Rights in the USA, US IP Workshop, Humboldt University
  • May 21, 2017INTA Annual Meeting: Discussion of Design Law as Applied to “Functional” Aspects of Designs
  • December 11, 2015Litigating Intellectual Property Rights in the USA, US IP Workshop, Humboldt University
  • November 18, 2015Georgetown Law Center: Government and Its Regulation: "Soft" IP
  • October 27, 2015Federal Bar Association Litigation Conference: Cease and Desist Letters
  • July 22, 2015FDA Boot Camp: Advertising & Promotion
  • March 12, 2015Navigating the Lanham Act Litigation Frontier
  • March 11, 2015Competitor Challenges 101 - Introduction to the Lanham Act, National Advertising Division and Network Challenges
  • January 22-23, 2014Recent Developments in Trademark, Copyright, False Advertising and Right of Publicity Law
  • December 2013Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin
  • July 17, 2013Design and Utility Patent; Trade Dress and Copyright: How to Prosecute and Enforce Multiple Layers of IP Protection, Intellectual Property Owners Association (IPO)
  • January 31, 2013Trademarks, Social Media, Apps and Games, Jones Day University
  • April 19, 2012Winning (And Managing Costs In) False Advertising and Other Lanham Act Litigation
  • December 2011Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin
  • October 2011The 2011 Patent Reform Act: Auswirkungen im Bereich Patent-Gerichtsverfahren (Implications to Patent Litigation)
  • June 2010Litigating Intellectual Property Rights in the USA, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin
  • November 2007Data Privacy and Security Litigation in the US, International Technology Law Association
  • June 2007Initial Experience Under the Amended U.S. Federal Rules Regarding E-Discovery, Computer Law Association
  • November 2006How the New E-Discovery Rules Will Change US Litigation and EMail Retention Policies, International Technology Law Association
  • June 2005Litigation of IP Issues in the United States, Prof. Dr. Theo Bodewig's US IP Workshop, Humboldt University of Berlin
  • Fall 2003Evidentiary Issues In Trademark and Unfair Competition Cases, American Intellectual Property Law Association
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