John C Nishi

Member Partner at Dickinson Wright
Ranked in United States: Michigan
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Gold - Individuals

A one-stop shop for all trademark and brand needs, Dickinson Wright maintains a well-resourced trademark group that can effectively tailor its response to work demands thanks to a collaborative ethos. Integral to many cross-office team efforts, John Nishi is a valuable contact in Ann Arbor. He dives deep into the detail of all manner of complex briefs: as examples, he has lately been developing innovative brand ownership and licensing structures; overseeing major rebranding efforts; and implementing global clearance and filing programmes.

John C Nishi's Profile

John Nishi assists clients with domestic and foreign trademark matters, including trademark counselling and prosecution, portfolio management, transactional matters, pre-litigation disputes and availability counselling. His clients include leading companies in a wide range of industries, including one of the world’s largest and most innovative and diverse technology companies; numerous technology, pharmaceutical and consumer products companies; and a leading developer of medical and laboratory test solutions. He has particular expertise in the licensing of trademarks, copyrights and publicity rights; counselling on IP aspects of transactions; and strategic brand development, risk management and protection initiatives. He has developed an innovative brand ownership and licensing structure for a leading global consumer electronics company and directed the worldwide trademark clearance and filing programme for a $100 million brand launch for one of the world’s most recognised technology companies. He negotiated trademark aspects of a $117.5 million purchase from bankruptcy of the assets of an internationally known athletic shoe company and supervised the acquisition by a leading toy company of a portfolio of classic computer game trademarks.

Mr Nishi is active in INTA, has served on numerous INTA committees and is past chairp of INTA’s Emerging Issues Committee. He is ranked as a Leader in his Field by Chambers USA for intellectual property. Mr Nishi received a BA from Yale University in philosophy, a master’s of music in clarinet performance from the University of Southern California, and a JD from the University of Chicago.

Firm Profile

Dickinson Wright PLLC is a growing, full-service law firm of experienced, creative, diverse and dedicated legal professionals. We have more than 475 attorneys in 19 offices across more than 40 practice areas. Our IP group is one of the firm's largest and most robust practice groups, employing more than 100 lawyers, with 20+ dedicated exclusively to trademark law.

Our trademark group counsels clients in all aspects of trademark law, striving to provide cutting-edge, cost-effective legal advice with excellent results. From clearing new marks to resolving disputes, we help clients secure, optimise and protect their trademarks, trade names and domain names worldwide. Our trademark lawyers have been recognised in Chambers USA, Best Lawyers in America and Super Lawyers.

Our experience

The Dickinson Wright team handles every type of trademark issue, from managing global trademark portfolios to helping emerging companies to develop, optimise and enforce their rights. We routinely guide clients through all aspects of trademark protection and risk management, negotiating and structuring acquisitions, licences and transfers of marks. We counsel clients in trademark and domain name registration strategies to protect their intellectual property in the United States and around the world.

We routinely advise on the full range of infringement and unfair competition matters, including piracy, anti-counterfeiting, copyright, cybersquatting, non-compete and non-solicitation agreements, false advertising and deceptive trade practices, as well as strategies for maximising the value of intellectual property through licensing and other creative arrangements to achieve client goals.

We represent firms ranging from Fortune 100 companies to small and emerging businesses. Our clients own some of the most notable and valuable trademarks in history and come from myriad industries, including high-tech, automotive, broadcasting, chemicals, consumer electronics, retail, food and beverages, e-commerce, entertainment, hospitality, gaming, healthcare, real estate and development, pharmaceuticals and publishing.

International experience

In addition to our domestic practice, our team has an extensive background in foreign and multi-jurisdictional trademark policing, protection and enforcement efforts. We have represented some of the largest companies in the world, as well as start-ups, artists and other rights holders, in the international arena – where local laws can be challenging, and piracy and trademark counterfeiting are a constant threat. Our lawyers are proficient at working with foreign trademark counsel in creative and meaningful ways to provide worldwide trademark protection and fight unfair competition.

Trademark litigation

Dickinson Wright trademark litigators are highly skilled in representing clients in claims involving trademarks, product design, trade dress and copyright. Our lawyers are experienced at preventing the import, sale and distribution of both counterfeit products (through both civil and criminal proceedings) and grey-market goods in the United States and internationally. Our team members are highly adept at obtaining emergency seizure orders, as well as temporary and permanent injunctive relief.

Dickinson Wright litigates complex cases before the TTAB and regularly represents clients before the USPTO, the International Trade Commission and courts and arbitral bodies at all levels throughout the United States. Our team has extensive experience litigating cases involving the infringement of IP rights over the Internet, successfully shutting down websites containing infringing material and securing the transfer of infringing domain names.

Recent highlights for the firm include:

  • shutting down six different Chinese manufacturers/suppliers promoting and selling infringing automotive goods at a major international trade show by obtaining a seizure and temporary restraining order within 24 hours of their set-up;
  • defending a client against allegations of violations of the Indian Arts and Crafts Act brought by the Navajo Nation;
  • resolving an international dispute by shutting down a trademark infringer in the high-tech space at a US trade show through a temporary restraining order 48 hours after set-up; 
  • successfully defending a small business owner's registration against a highly contentious attack at the TTAB by a world-famous athlete; and
  • shutting down a trademark infringer offering a fraudulent crypto-currency within an hour of the currency being launched, by way of a temporary restraining order.
     

Get unlimited access to all WTR content