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  • Villanova University School of Law, J.D.
  • George Washington University, B.A., cum laude, Political Science
John J. O’Malley
Professional Experience

John’s practice focuses on advising clients on strategies for building brands and developing and protecting U.S. and international trademark portfolios.

Client Work

John works extensively with clients in developing strategies for building brands and developing and protecting U.S. and international trademark portfolios. In particular, John specializes in developing creative strategies to achieve these ends.

In addition to his work in the trademark field, John has extensive experience in conducting IP audits and IP due diligence for banks, IP investment companies, venture capital and private equity investors.

John also negotiates and drafts intellectual property agreements including licenses, confidentiality assignments, joint development, software development, and website development agreements.

A significant part of John’s practice involves counseling start-up and emerging companies in cost effective strategies to protect their key IP assets.

Litigation can be an important and necessary step in protecting intellectual property rights and John has litigated and enforced rights involving trademarks, domain names, patents, copyrights, unfair competition, false advertising and the internet.

Publications, Presentations and Recognitions

Intellectual Property Insurance, The Legal Intelligencer (March 1996).

Preparing a Technical Witness for a Deposition, The Legal Intelligencer (May 1998).

Development of Collateral Estoppel as it Applies to Markman Hearings, The Legal Intelligencer (March 2000).

Personal Liability of Corporate Officers for Patent, Trademark and Copyright Infringement, The Metropolitan Corporate Counsel (June 2000).

Co-Author, Intellectual Property in the Food Technology Industry, published by Springer (2008).

Is Use Alone Enough to Establish Trademark Rights?, The Legal Intelligencer (April 2009).

“Madrid Protocol: Impact on U.S. Trademark Applicants,” Halfmoon, LLC, Philadelphia, PA (June 16, 2003).

“Trademarks 101: Fundamentals,” International Trademark Association, Philadelphia, PA (October 30, 2003).

“Due Diligence in IP Transactions,” American Lawyer Media Philadelphia, PA (May 19, 2005).

“Protecting Your Innovations: Obtaining, Maintaining, and Sustaining Intellectual Property Rights in Your Brand, Products and Processes,” Institute of Food Technologists Annual Expo, Orlando, Florida (June 28, 2006).

“Intellectual Property Law Primer,” Pennsylvania Bar Institute (August 28, 2006).

“Intellectual Property Valuation: What’s Your IP Worth,” National Constitution Center Conferences, (February 22, 2007).

“Monetization of IP and Using IP as Financial Tools,” Rowan University (November 2, 2009).

John was selected for inclusion in Pennsylvania Super Lawyers®, published by Thomson Reuters, from 2012-2018, and in Pennsylvania Super Lawyers® Rising Stars from 2006-2007. John was also selected for inclusion in Best Lawyers in America®, published by Best Lawyers LLC, from 2012-2019.

Professional Activities

John is an active member in the legal community and is especially active in the Irish-American community in Philadelphia. John currently serves on the boards of the Irish-American Chamber and Business Network, the Irish Immigration Center of Philadelphia, and the Brehon Law Society, of which he was a past president.

In prior years, John has served as Board Member for Family and Community Services of Delaware County and the Committee of 70.

In addition to community services, John is also an active member of the International Trademark Association and Greater Philadelphia Chamber of Commerce.

Bar and Court Admissions

Commonwealth of Pennsylvania (1993)
Supreme Court of the United States (1998)
Court of Appeals for the Federal Court (1996)
Court of Appeals for the Third Circuit (2002)
United States District Court for the Eastern District of Pennsylvania (1995)

Life Beyond the Law

I enjoy reading about history, and especially ancient history. My guilty pleasure is following the always interesting local sports teams we have in Philadelphia.