John E. LyhusPartner

John E. Lyhus counsels clients worldwide, primarily in the areas of trademark prosecution, adversarial proceedings, enforcement, and brand protection. Complementing his guidance in these areas, John also represents clients in domain name dispute resolution, unfair competition, and copyright matters. He uses his global focus to assist clients in the consumer electronics, pharmaceuticals, medical devices, and food and beverage industries, among others, with their integrated branding needs.

Having lived and worked in Japan has strengthened John’s ability to understand and address the expectations and needs of clients from Asia. Prior to joining Fitch Even, John worked in the field of trademark research and brand protection both in the U.S. and in Asia. As General Manager of the Tokyo International Research Department of an international trademark research firm, he assisted major Japanese consumer product companies and law firms with international trademark research and projects. In this capacity, he developed several new trademark research services for the Japanese market and spearheaded the development of TRADEMARKSCAN -- Japan, a commercially available Internet database that made over 2.5 million Japanese trademark records accessible in English.

Leveraging his trademark research and international experience, John assists clients with the full range of their global trademark and branding protection strategies. His extensive background in trademark research positions him to engage in trademark availability and analysis related to instances of infringement. John has also lectured at several law schools on how to use trademark research to protect and develop trademark rights.

Represents a leading manufacturer in the defense industry in trademark prosecution, brand protection, and enforcement matters.

Represents medical device manufacturers in trademark prosecution, brand protection, and enforcement matters in the U.S and worldwide.

Represented a bar/restaurant establishment in opposing conflicting marks of an expanding national chain, resulting in a business resolution beneficial to the client.

Represented a Japanese consumer products company in protecting well-known marks against junior adopters trading on the established good will of the client.

Defended a restaurant entrepreneur’s service mark against opposition from a litigious national beverage maker, resulting in an expeditious settlement highly favorable to the small client.

Milbon Co., Ltd. et al. v. Hair Color Research Group, Inc. et al. (N.D. Ill. 2013). Enforced registered marks and obtained permanent injunction on behalf of Japanese personal care product manufacturer against national distributor of infringing hair care products in the United States.

Presentations

• “Common Law Trademark Use in the U.S. and Other Topics,” Seminars in Osaka, Nagoya, and Tokyo, Japan, September 2017.
• “Basics of U.S. Trademark Law,” Seminar in Nagoya, Japan, July 2015.
• "Product Packaging and Labeling: An Overview of Current Legal Principles," Fitch Even Webinar, with John M. Naber, October 29, 2014.
• “Design Protection in the Automotive Industry,” Licensing Executives Society International, Seoul, Korea, April 12, 2006.

Publications

• “U.S. Supreme Court Expands Trademark Protection for Certain Domain Names Composed of Generic Terms,” A.I.P.P.I., vol. 65, no. 11, 2020.
• Lyhus, J. and Van Engen, Z., “Federal Circuit Clarifies Secondary Meaning and Infringement Issues for Product Design Trade Dress,” A.I.P.P.I., vol. 64, no. 3, 2019.

•  International Trademark Association
  • Saul Lefkowitz Moot Court Competition Chicago Regional Committee, 2009–present
    • Brief-Reading Judge, 2009–19