John M. Mueller

Counsel

Cincinnati
T +1 513.929.3413  |  F +1 513.929.0303

John Mueller focuses his practice on all aspects of intellectual property law, with a particular focus on the consumer products industry. He handles all matters related to the procurement, protection, management and litigation of intellectual property assets of companies worldwide.

Select Experience

  • Obtained broad patent protection for a pioneering technology in the medical diagnostic field related to isolation and detection of C. difficile toxins.
  • Secured multiple patents related to advances in car seat safety technologies, including a patent covering a groundbreaking energy-absorbing infant car seat.
  • Maintained the trademark portfolio and conducted clearance and prosecution of trademark applications for a large consumer retailer with more than 100 U.S. trademarks, as well as the worldwide portfolio of a large juvenile products company, including more than 250 registered marks worldwide. Attended to registration and renewal of federal and state trademark registrations in the U.S. and coordinated trademark management in countries all over the world. Maintained multiple enforcement actions, including litigation where necessary.
  • Filed and successfully maintained more than 30 Uniform Dispute Resolution Policy domain name actions in front of the National Arbitration Forum, both as complainant and as respondent, involving unauthorized and infringing use of clients' trademarks.
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Experience

  • Obtained broad patent protection for a pioneering technology in the medical diagnostic field related to isolation and detection of C. difficile toxins.
  • Secured multiple patents related to advances in car seat safety technologies, including a patent covering a groundbreaking energy-absorbing infant car seat.
  • Maintained the trademark portfolio and conducted clearance and prosecution of trademark applications for a large consumer retailer with more than 100 U.S. trademarks, as well as the worldwide portfolio of a large juvenile products company, including more than 250 registered marks worldwide. Attended to registration and renewal of federal and state trademark registrations in the U.S. and coordinated trademark management in countries all over the world. Maintained multiple enforcement actions, including litigation where necessary.
  • Filed and successfully maintained more than 30 Uniform Dispute Resolution Policy domain name actions in front of the National Arbitration Forum, both as complainant and as respondent, involving unauthorized and infringing use of clients' trademarks.
  • Rebuffed an attempt at reverse domain name hijacking of the carbwatchers.com domain name.
  • Wrested numerous domain names from China-based companies operating websites selling counterfeit products. Companies were counterfeiting products from a large international shoe retailer with significant charitable purpose.
  • Managed a team of attorneys for multiple defendants in the defense of a juvenile products company in a patent infringement suit related to highchair technology. The team included attorneys for a large national retailer of accused products, as well as the manufacturer thereof. Conducted prior art search and wrote a brief resulting in summary judgment of invalidity.
  • Filed and settled a copyright infringement case related to solar dock lights made by a Chinese manufacturer utilizing the client's molds. Copyright registration was obtained after infringement in specifications for molds provided the basis for infringement action.

Recognitions

  • Chambers USA: Intellectual Property Law in Ohio (2008 to 2013)
  • WTR 1000 – The World's Leading Trademark Professionals (2014 to 2017)
  • The Best Lawyers in America© (2015 to 2017)
    • Cincinnati: Litigation – Intellectual Property
  • Martindale-Hubbell: AV Preeminent

Services

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. District Court, Southern District of Ohio
  • U.S. Patent and Trademark Office, Registration No. 44,248
  • Ohio

Education

  • J.D., Indiana University School of Law, Bloomington, 1997
  • B.S., Chemical Engineering, Purdue University, 1993