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Lisa W. Rosaya
Biography
In their 2023 rankings, Chambers comments that Lisa "is highly regarded for her trademark expertise and routinely advises clients on portfolio development and management, including due diligence counsel in relation to transactions, with a client commenting that "her knowledge is stellar and her recommendations turn out to be the best course of action. She is clear and concise and explains the matter in a manner that is not only comprehensible but makes me feel that I understand the direction she is recommending."
Prior to entering private practice, she was a trademark examining attorney at the US Patent and Trademark Office. She has authored numerous articles and spoken at various industry events on trademark, copyright, advertising, Internet and domain name issues.
Practice Focus
Lisa focuses on providing clients with strategic advice in relation to protecting and enforcing their trademarks, copyrights, designs, and related IP rights. She works with clients on analyzing and optimizing their global trademark portfolios and brand management strategies, including trademark vetting and clearance, trademark, trade dress, and copyright registration, opposition and cancellation proceedings, copyright and trademark licensing, enforcement and infringement matters, domain name disputes, on-line enforcement and certain advertising issues. She also advises clients on IP issues in the context of corporate and financing transactions, including drafting and analyzing IP-related provisions and agreements, due diligence, and perfection of security interests domestically and internationally. Her clients include companies from the consumer goods and retail sector, with a focus on fashion and luxury goods, personal care products, foods and beverages, as well as clients in the media and entertainment industries.
Representative Legal Matters
- Represents Unilever, Nielsen Media, Nielsen IQ and affiliates, as well as numerous other fashion and consumer goods and retail clients in US trademark clearance and prosecution matters and disputes involving trademark and copyright issues as well as analysis and strategy for bolstering IP protection in the US.
- Advised Johnson & Johnson and Nielsen on trademark, copyright, and domain name issues and drafted and revised various transactional documents, IP licenses and assignments relating to the reorganization and spin-off of large portions of their respective businesses.
- Advised Unilever and its affiliates in US IP due diligence and licensing matters relating to M&A and IP/commercial transactions.
- Represented Brooks Brothers Group, Inc. in its global trademark, copyright, advertising and rights of publicity matters and disputes.
- Represented and provided strategic advice to Swarovski on US trademark, trade dress, and copyright protection and enforcement.
- Counseled well-known global fashion company on trademark issues and licensing arrangements as part of post-acquisition integration of a well-known shoe and accessories company.
- Represented apparel company in defending and settling copyright infringement claim relating to piecework used in part of certain garments.
- Represented global fashion company in defending and settling copyright infringement claim relating to fabric pattern.
- Successfully represented numerous luxury goods clients in recovering infringing domain names through the Uniform Domain-Name Resolution Policy.
- Provided strategic advice to large non-profit organization on trademark, keyword and domain name issues in lawsuit involving infringement and other related claims.
Professional Honors
- Super Lawyers, Intellectual Property, NY Metro Region, 2012-2023
- Ranked Band 2 by Chambers USA, Intellectual Property: Trademark & Copyright, 2010- 2023
- WTR Global Leaders Guide, featuring the trademark elite from across the WTR 1000 and WTR 300, Selected for Inclusion, 2015-2023
- WTR1000, The World's Leading Trademark Professionals, Recognized lawyer at New York and national levels in prosecution and strategy (Gold), and enforcement and litigation (Bronze), 2015-2023
- Recognized as a Global Leader by World Trademark Review, WTR Global Leaders 2022
- Named among "The Top 250 Women in IP," Managing IP 2022
- Ranked Band 2 by Chambers Global, Intellectual Property: Trademark, Copyright & Trade Secrets, 2019-2022
- US Legal 500, Recognized Lawyer, Trademarks; non-contentious, 2013-2020
- Managing IP, IP Star, 2020-2022
- Managing IP Americas Awards, shortlisted for Practitioner of the Year (Trademark), 2021
- World Intellectual Property Review (WIPR): Leader in Trademark Law, 2018-2020
- Top Women Attorneys in NY Metro, Selected, 2020
Professional Associations and Memberships
- INTA – Commercialization of Brands Committee (2022-2023)
- INTA - Chair of the Right of Publicity Committee (2020-2021)
- INTA - Vice Chair of the Right of Publicity Committee (2018-2019)
- INTA - Rights of Publicity Committee (and former subcommittee) (2014-2021)
- INTA - Presidential Task Force (2016)
- New York State Bar Association - Treasurer, Intellectual Property Law Section (2013-2014); co-chair, Trademark Committee (2008-2013)
- ICANN - GNSO-chartered Registration Abuse Policies Implementation Drafting Team, Fall 2010
- INTA - Internet Committee - Domain Disputes and WHOIS Subcommittee (2010-2013)
- INTA - Dilution and Well Known Marks Committee - North America Subcommittee (2006-2009)
Admissions
- Colorado~United States (2022)
- U.S. District Court, Southern District of New York~United States (2008)
- U.S. District Court, Eastern District of New York~United States (2008)
- New York~United States (2006)
- U.S. Court of Appeals, Federal Circuit~United States (1999)
- U.S. Court of Appeals, District of Columbia Circuit~United States (1998)
- District of Columbia~United States (1998)
- U.S. District Court, District of New Jersey~United States (1998)
- New Jersey~United States (1997)
Education
- University of San Diego School of Law (J.D.) (1996)
- Boston University (B.A., cum laude) (1992)
Languages
- English
- French
- German
Previous Offices
- Washington, DC
Baker & McKenzie LLP is a Limited Liability Partnership organized under the laws of the State of Illinois (USA) and is a member of Baker & McKenzie International, a Verein organized under the laws of Switzerland.