John C. McElwaine
Partner
151 Meeting Street
Suite 600
Charleston, SC 29401
901 15th Street, NW
Suite 1200
Washington, D.C., 20005
John serves as the office managing partner of the firm’s Charleston office, focusing his practice on intellectual property, Internet, domain name, and technology litigation, as well as strategic counseling. He works with clients across diverse industries to develop and implement online intellectual property enforcement strategies, protect their brands, and advise on safeguarding assets across the...
John serves as the office managing partner of the firm’s Charleston office, focusing his practice on intellectual property, Internet, domain name, and technology litigation, as well as strategic counseling. He works with clients across diverse industries to develop and implement online intellectual property enforcement strategies, protect their brands, and advise on safeguarding assets across the Internet and social media platforms.
John has counseled and advocated for clients on a variety of domain name and ICANN policy matters. He has been involved in federal and state proceedings, actions before the Trademark Trial and Appeal Board, and arbitrations under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). He manages, maintains, and enforces trademark portfolios for large corporate and educational institutions and advises technology clients on intellectual property matters, including the assignment, licensing, and development of software, applications, and other technology.
John is active in international Internet governance, currently serving as President of ICANN’s Intellectual Property Constituency (IPC) and as a representative to the Commercial Stakeholder Group (CSG). He previously served two terms as a GNSO Councilor representing the IPC (2019–2023) and was elected Vice-Chair of the GNSO Council (Non-Contracted Parties House) (2022–2023). He has been a WIPO panelist for UDRP cases since 2015.
Internet and social media platforms.
John has counseled and advocated for clients on a variety of domain name and ICANN policy matters. He has been involved in federal and state proceedings, actions before the Trademark Trial and Appeal Board, and arbitrations under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). He manages, maintains, and enforces trademark portfolios for large corporate and educational institutions and advises technology clients on intellectual property matters, including the assignment, licensing, and development of software, applications, and other technology.
John is active in international Internet governance, currently serving as President of ICANN’s Intellectual Property Constituency (IPC) and as a representative to the Commercial Stakeholder Group (CSG). He previously served two terms as a GNSO Councilor representing the IPC (2019–2023) and was elected Vice-Chair of the GNSO Council (Non-Contracted Parties House) (2022–2023). He has been a WIPO panelist for UDRP cases since 2015.
Experience
Experience
- Has counseled and advocated for clients on a variety of domain name and ICANN policy matters.
- In the area of litigation, he has been involved with federal and state proceedings, as well as actions brought at the Trademark Trial and Appeal Board and arbitration under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).
- Has experience in researching and analyzing trademark availability opinions, preparing and prosecuting trademark applications, including drafting amendments and responses to examining attorneys, and trademark strategic counseling.
- Manages, maintains, and polices a variety of large corporate and educational institution's trademark portfolios.
- Works in the area of strategic counseling involves advising technology clients on intellectual property matters, including the assignment, licensing and development of software, applications and other technology.
- Has lectured on copyright, trademark, trade secret, Internet and technology legal issues to various organizations and for continuing legal education credit.
- Counsels and negotiates the acquisition and all aspects of the transfer process for number (IPv4 and IPv6 IP addresses) and name (domain names) resources, including navigating Regional Internet Registry and ICANN policies and procedures.
Publications
- “Bedazzled, but Protectable? The Trademark Questions Behind ‘MURRRDER’ Merch Dispute,” The National Law Review (Feb. 26, 2026)
- “Key Policy Work for Intellectual Property Owners at ICANN81,” JD Supra (Nov, 1, 2024)
- “Walgreen’s v. Walgreen Health or ‘My Name, My Heritage, My Trademark Infringement Suit: Part 2’,” JD Supra (Sept. 30, 2024)
- “Dispute Over the Smiths Trademark: ‘Is It Really So Strange?’,” Practice Source (Sept.19, 2024)
- “AI-Generated Content and Trademarks,” The National Law Review (Aug. 23, 2024)
- “The Successes and Challenges of ICANN’s Registration Data Request Service (RDRS),” The National Law Review (Aug. 6, 2024)
- “ICANN 80 Gears Up for Important Policy Topics for Brand Owners,” The National Law Review (June 12, 2024)
- “NFTs Found to Infringe Hermès Trademark,” The National Law Review (Feb. 13, 2023)
- “Tackling Bad Faith Registration of Domain Names in a Fast-Changing Landscape,” WIPO Magazine (Dec. 2019)
Education
-
University of South Carolina School of Law,
JD
(1995)
- Earned first place, ASCAP Nathan Burkin Memorial Competition for a paper titled, “Digital Audio Technology and Copyright Law”
- Associate Editor, Notes and Articles, The South Carolina Environmental Law Journal
- University of South Carolina, Honors College, BA, Political Science and History, cum laude (1992)
Admissions
- South Carolina
- District of Columbia
- U.S. Court of Appeals for the Fourth Circuit
- U.S. District Court for the District of South Carolina
Practice Areas
Experience
- Has counseled and advocated for clients on a variety of domain name and ICANN policy matters.
- In the area of litigation, he has been involved with federal and state proceedings, as well as actions brought at the Trademark Trial and Appeal Board and arbitration under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).
- Has experience in researching and analyzing trademark availability opinions, preparing and prosecuting trademark applications, including drafting amendments and responses to examining attorneys, and trademark strategic counseling.
- Manages, maintains, and polices a variety of large corporate and educational institution's trademark portfolios.
- Works in the area of strategic counseling involves advising technology clients on intellectual property matters, including the assignment, licensing and development of software, applications and other technology.
- Has lectured on copyright, trademark, trade secret, Internet and technology legal issues to various organizations and for continuing legal education credit.
- Counsels and negotiates the acquisition and all aspects of the transfer process for number (IPv4 and IPv6 IP addresses) and name (domain names) resources, including navigating Regional Internet Registry and ICANN policies and procedures.
Publications
- “Bedazzled, but Protectable? The Trademark Questions Behind ‘MURRRDER’ Merch Dispute,” The National Law Review (Feb. 26, 2026)
- “Key Policy Work for Intellectual Property Owners at ICANN81,” JD Supra (Nov, 1, 2024)
- “Walgreen’s v. Walgreen Health or ‘My Name, My Heritage, My Trademark Infringement Suit: Part 2’,” JD Supra (Sept. 30, 2024)
- “Dispute Over the Smiths Trademark: ‘Is It Really So Strange?’,” Practice Source (Sept.19, 2024)
- “AI-Generated Content and Trademarks,” The National Law Review (Aug. 23, 2024)
- “The Successes and Challenges of ICANN’s Registration Data Request Service (RDRS),” The National Law Review (Aug. 6, 2024)
- “ICANN 80 Gears Up for Important Policy Topics for Brand Owners,” The National Law Review (June 12, 2024)
- “NFTs Found to Infringe Hermès Trademark,” The National Law Review (Feb. 13, 2023)
- “Tackling Bad Faith Registration of Domain Names in a Fast-Changing Landscape,” WIPO Magazine (Dec. 2019)
Media
Recognitions
- The Best Lawyers in America®, Copyright Law (2013–2026), Trademark Law (2013–2026)
- Managing Intellectual Property magazine, "Trademark Star" (2022, 2023), "Transactions Star" (2022, 2023)
- National Law Journal, Intellectual Property Trailblazer (2020) – selected as one of the top 30 Intellectual Property attorneys in the Unites States for pioneering work in intellectual property
- World Trademark Review
- Recognized as a World Trademark Review Global Leader (2020, 2024, 2026)
- Recognized as a World Leading Trademark Professional by the WTR 1000 (2019–2023)
- Recognized nationally and in the D.C. Metro Area for trademark enforcement and litigation (2021)
- Recognized in the D.C. Metro Area for prosecution and strategy (2021)
- Charleston Business Magazine "Legal Elite of the Lowcountry", Intellectual Property and Innovation (2021-2024)
- 2012 INTA Volunteer Service Award for the Advancement of Committee Objectives
- Graduate, Dick Riley Institute Diversity Leadership Academy (2006)
- Leadership Charleston Class of 2002
Professional Activities
- Board of Directors, Charleston Metro Chamber of Commerce
- Chairman of the Internet Committee, International Trademark Association (INTA) for 2016–2017
- Intellectual Property Constituency (IPC) of ICANN (member since 2009)
- Treasurer (2018–2019)
- IPC Participation Coordinator (2015–present)
- ICANN Board Nominating Committee representative (2013, 2014)
- Selected to serve on the Implementation Recommendation Team for the Trademark Clearinghouse.
- Selected to serve on the ICANN Working Group developing the High Security Top Level Domain Zone Certification.
- World Intellectual Property Organization (WIPO) panelist for UDRP cases (2015–present)
- Vice Chairman of the Internet Committee, International Trademark Association (INTA) for 2014–2015
- Subcommittee Chairman of the INTA New gTLD Registry Issues Subcommittee (2012–2013)
- Intellectual Property Section’s Special Committee on Trademark and the Internet, American Bar Association
John serves as the office managing partner of the firm’s Charleston office, focusing his practice on intellectual property, Internet, domain name, and technology litigation, as well as strategic counseling. He works with clients across diverse industries to develop and implement online intellectual property enforcement strategies, protect their brands, and advise on safeguarding assets across the... Internet and social media platforms.
John has counseled and advocated for clients on a variety of domain name and ICANN policy matters. He has been involved in federal and state proceedings, actions before the Trademark Trial and Appeal Board, and arbitrations under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). He manages, maintains, and enforces trademark portfolios for large corporate and educational institutions and advises technology clients on intellectual property matters, including the assignment, licensing, and development of software, applications, and other technology.
John is active in international Internet governance, currently serving as President of ICANN’s Intellectual Property Constituency (IPC) and as a representative to the Commercial Stakeholder Group (CSG). He previously served two terms as a GNSO Councilor representing the IPC (2019–2023) and was elected Vice-Chair of the GNSO Council (Non-Contracted Parties House) (2022–2023). He has been a WIPO panelist for UDRP cases since 2015.
Experience
The following is a selected sampling of matters and is provided for informational purposes only. Past success does not indicate the likelihood of success in any future matter.Experience
- Has counseled and advocated for clients on a variety of domain name and ICANN policy matters.
- In the area of litigation, he has been involved with federal and state proceedings, as well as actions brought at the Trademark Trial and Appeal Board and arbitration under ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP).
- Has experience in researching and analyzing trademark availability opinions, preparing and prosecuting trademark applications, including drafting amendments and responses to examining attorneys, and trademark strategic counseling.
- Manages, maintains, and polices a variety of large corporate and educational institution's trademark portfolios.
- Works in the area of strategic counseling involves advising technology clients on intellectual property matters, including the assignment, licensing and development of software, applications and other technology.
- Has lectured on copyright, trademark, trade secret, Internet and technology legal issues to various organizations and for continuing legal education credit.
- Counsels and negotiates the acquisition and all aspects of the transfer process for number (IPv4 and IPv6 IP addresses) and name (domain names) resources, including navigating Regional Internet Registry and ICANN policies and procedures.
Publications
- “Bedazzled, but Protectable? The Trademark Questions Behind ‘MURRRDER’ Merch Dispute,” The National Law Review (Feb. 26, 2026)
- “Key Policy Work for Intellectual Property Owners at ICANN81,” JD Supra (Nov, 1, 2024)
- “Walgreen’s v. Walgreen Health or ‘My Name, My Heritage, My Trademark Infringement Suit: Part 2’,” JD Supra (Sept. 30, 2024)
- “Dispute Over the Smiths Trademark: ‘Is It Really So Strange?’,” Practice Source (Sept.19, 2024)
- “AI-Generated Content and Trademarks,” The National Law Review (Aug. 23, 2024)
- “The Successes and Challenges of ICANN’s Registration Data Request Service (RDRS),” The National Law Review (Aug. 6, 2024)
- “ICANN 80 Gears Up for Important Policy Topics for Brand Owners,” The National Law Review (June 12, 2024)
- “NFTs Found to Infringe Hermès Trademark,” The National Law Review (Feb. 13, 2023)
- “Tackling Bad Faith Registration of Domain Names in a Fast-Changing Landscape,” WIPO Magazine (Dec. 2019)
Education
-
University of South Carolina School of Law,
JD
(1995)
- Earned first place, ASCAP Nathan Burkin Memorial Competition for a paper titled, “Digital Audio Technology and Copyright Law”
- Associate Editor, Notes and Articles, The South Carolina Environmental Law Journal
- University of South Carolina, Honors College, BA, Political Science and History, cum laude (1992)
Admissions
- South Carolina
- District of Columbia
- U.S. Court of Appeals for the Fourth Circuit
- U.S. District Court for the District of South Carolina
Practice Areas
- FinTech
- Intellectual Property Litigation
- Trademarks & Copyrights
- Intellectual Property Transactions
- NMWatch™
Industries
- The Best Lawyers in America®, Copyright Law (2013–2026), Trademark Law (2013–2026)
- Managing Intellectual Property magazine, "Trademark Star" (2022, 2023), "Transactions Star" (2022, 2023)
- National Law Journal, Intellectual Property Trailblazer (2020) – selected as one of the top 30 Intellectual Property attorneys in the Unites States for pioneering work in intellectual property
- World Trademark Review
- Recognized as a World Trademark Review Global Leader (2020, 2024, 2026)
- Recognized as a World Leading Trademark Professional by the WTR 1000 (2019–2023)
- Recognized nationally and in the D.C. Metro Area for trademark enforcement and litigation (2021)
- Recognized in the D.C. Metro Area for prosecution and strategy (2021)
- Charleston Business Magazine "Legal Elite of the Lowcountry", Intellectual Property and Innovation (2021-2024)
- 2012 INTA Volunteer Service Award for the Advancement of Committee Objectives
- Graduate, Dick Riley Institute Diversity Leadership Academy (2006)
- Leadership Charleston Class of 2002
- Board of Directors, Charleston Metro Chamber of Commerce
- Chairman of the Internet Committee, International Trademark Association (INTA) for 2016–2017
- Intellectual Property Constituency (IPC) of ICANN (member since 2009)
- Treasurer (2018–2019)
- IPC Participation Coordinator (2015–present)
- ICANN Board Nominating Committee representative (2013, 2014)
- Selected to serve on the Implementation Recommendation Team for the Trademark Clearinghouse.
- Selected to serve on the ICANN Working Group developing the High Security Top Level Domain Zone Certification.
- World Intellectual Property Organization (WIPO) panelist for UDRP cases (2015–present)
- Vice Chairman of the Internet Committee, International Trademark Association (INTA) for 2014–2015
- Subcommittee Chairman of the INTA New gTLD Registry Issues Subcommittee (2012–2013)
- Intellectual Property Section’s Special Committee on Trademark and the Internet, American Bar Association
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