Attorneys

John E. Ottaviani

John E. Ottaviani

John E. Ottaviani
Partner

401-861-8253

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Education

  • Columbia University School of Law, J.D., 1982

  • Bowdoin College, A.B. Mathematics and Government, magna cum laude, 1979

Bar Memberships & Admissions

  • Massachusetts, 1982
  • Rhode Island, 1989
  • U.S. Court of Appeals, 1st Circuit, 1982
  • U.S. Court of Appeals, Federal Circuit, 1993
  • U.S. District Court, Massachusetts, 1983

John is the Chair of our Intellectual Property and Technology practice and is a partner in the Business Law Group. His practice focuses on transactions, contracts and intellectual property protection for businesses of all sizes. John has extensive experience advising clients on U.S. and international trademark selection, registration, enforcement and licensing. He regularly provides clients with guidance in developing global trademark filing strategies to maximize brand protection in a cost-effective manner. He also works on the intellectual property aspects of business financing, acquisition and sale transactions. 


John works with technology companies and companies using technology in all industries on a wide range of business, contract and technology-related issues, including licenses and service agreements, Internet-related issues, social media, trademark, copyright, trade secrets, rights of publicity, advertising and marketing, data-protection, privacy, e-commerce, and liability issues. John also has extensive experience in preparing and negotiating agreements for technology companies and for companies using technology in all industries, including master services agreements, purchase and sale agreements, distribution agreements, terms and conditions, service and consulting agreements, sales representative agreements and nondisclosure agreements.  

Honors

  • AV® Preeminent Rated from Martindale-Hubbell, highest possible rating on both legal ability and ethics based upon the confidential opinion of peers and judges
  • Recognized as a leading intellectual property and corporate attorney since 2008 by
    Chambers USA, America's Leading Lawyers for Business
  • Selected by his peers for inclusion in Rhode Island Super Lawyers
  • Named a “Top Rated Lawyer – Intellectual Property Law” by American Lawyer Media (Fall 2016)

Representative Intellectual Property Experience

  • Managing trademark portfolios for trademark owners ranging from Fortune 100 companies to individuals, including determining availability of marks, preparing and filing applications to register marks, maintaining registrations, and enforcing trademark rights throughout the world
  • Representing Rhode Island's largest not-for-profit museum in its trademark, domain name, licensing and reproduction programs
  • Negotiating the multi-million-dollar acquisition of a line of personal care products and related trademarks
  • Negotiation of a multi-year, multi-million-dollar extension of marketing agreement and trademark license for academic institution

Representative Technology Experience

  • Negotiating software and technology license and services agreements on behalf of licensors and licensees, including the negotiation of a multi-year software and services agreement with a major footwear and apparel manufacturer
  • Negotiation of strategic alliance agreement, restricted stock agreement and software license with and investment in start-up online insurance company
  • Preparing and negotiating software license agreements, website and software development agreements, application service provider agreements, software-as-a-service agreements, e-commerce agreements, outsourcing agreements, website terms and conditions of use, privacy policies, other online agreements, service and consulting agreements, and nondisclosure agreements
  • Guiding a non-profit organization through the complex interaction of federal and state laws relating to charitable raffles on the Internet resulting in over $15 million being raised since inception
  • Updating privacy policies and terms of use for the websites of a publicly traded company and its affiliates

Representative Publications

Books

  • “Internet Law for the Business Lawyer” (2nd edition), Business Law Section, American Bar Association, August 2012. Author of chapter on “Electronic Contracting – Creating Enforceable Contracts.”
  • “Maine, New Hampshire, Rhode Island and Vermont Limited Liability Company Forms and Practice Manual”, Data Trace Publishing, October 1999. Updated through July 2016. Author of Rhode Island sections.

Articles

  • We May Modify These Terms at Any Time, Right?
    Business Law Today, June 2016 (Co-author)
  • Protecting Your Intellectual Property Rights When Buying or Selling a Business
    Providence Business News, June 10, 2016
  • Your Trademarks: Why Are They So Important?
    The Anchor Magazine, September 2014
  • An Ounce of Prevention...Don't Forget the Trademark Search
    Providence Business News, June 2014
  • Your Trademarks: Why Are They So Important
    Providence Business News, June 2013
  • Maybe You Can Take It With You: Post-Mortem Rights of Publicity In the United States
    World Trademark Review, September 2012 (co-author)
  • Browse-Wrap Agreements: Validity of Implied Assent in Electronic Form Agreements
    Business Lawyer, January 2007 (co-author)

PS&H eAlerts

Representative Speaking Engagements

  • "Recent Developments in Click-Wrap Contracts"” at the Annual Meeting of the Business Law Section of the American Bar Association (September 2016)
  • Cyberspace Law 2014-2015:  Where Have We Been?  Where Are We Going?” at the 2015  American Bar Association Cyberspace Law Institute (January 2015
  • Intellectual Property Protection for Small Business” at A Beacon For Small Business Expo (April 2013)

Professional Affiliations

  • American Bar Association
    • Business Law Section
      • Cyberspace Committee (former Co-Chair of Intellectual Property Subcommittee)
    • Intellectual Property Section
    • Science and Technology Section
      • Museum and Art Law Committee
  • International Trademark Association
    • Publications Committee
  • Rhode Island Bar Association
    • Business Organizations Committee (former Chair)
  • Massachusetts Bar Association
  • Tech Sandbox

Community Activities

  • Adoption Rhode Island
    • Board of Directors (former Board President)
  • Bowdoin Law Advisory Network
    • Member
  • Bowdoin College Alumni Club of RI
    • Member (former President)
  • Formerly active in youth hockey organizations in Woonsocket and Burrillville, RI

Our approach to the practice of law provides a broad range of expertise to our clients Practice Areas

Providence

40 Westminster Street
Suite 1100
Providence, RI 02903
401-861-8200

Boston

30 Federal Street
Boston, MA 02110
617-292-7900

Greater Boston

20 Pickering Street
Needham, MA 02492
781-444-2333

SouthCoast

128 Union Street
Suite 500
New Bedford, MA 02740
774-206-8200

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