Rosaya2

Lisa W. Rosaya

Partner
Baker & McKenzie LLP

Biography

Lisa Rosaya is a partner in Baker McKenzie's Intellectual Property Practice located in New York. In their 2019 rankings, Chambers comments that Lisa “offers significant experience across an array of trademark and copyright portfolio management matters. She is also noted for her skill in disputes before the TTAB” with a client commenting that they’ve found her to be “excellent; quick to grasp the issues at hand, providing timely advice and counsel, and helpful in finding solutions for the business."

Prior to joining the Firm in October 2005, she was an associate with a New York-based law firm and 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 global trademark portfolios and brand management services, including trademark selection and branding, trademark prosecution, opposition and cancellation proceedings, copyright and trademark licensing, enforcement and infringement matters, domain name issues and disputes and labeling and advertising issues. She also assists in addressing 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, food and beverage, telecommunications, media and entertainment, fashion and luxury goods, financial services, social media, and computer hardware and software industries.

Representative Legal Matters

  • Represents Unilever and its affiliates in US trademark clearance, prosecution and disputes before the US Patent & Trademark Office's Trademark Trial and Appeal Board
  • Advises Unilever and its affiliates in US IP due diligence and licensing matters relating to M&A and IP/commercial transactions
  • Represents Brooks Brothers Group, Inc. in its global trademark, copyright, advertising and rights of publicity matters and disputes
  • Provided strategic advice to large non-profit organization on trademark, keyword and domain name issues in lawsuit involving infringement and other related claims
  • 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 clients in recovering infringing domain names through the Uniform Domain-Name Resolution Policy and advised clients on proceedings under the Uniform Rapid Suspension System for new gTLDs

Professional Honors

  • Chambers Global, ranked in Intellectual Property: Trademark, Copyright & Trade Secrets, 2019
  • Chambers USA, ranked in Intellectual Property: Trade Mark & Copyright, 2010-2019
  • The Legal 500 US: Recognized Lawyer, Trademarks; non-contentious, 2013–2019
  • WTR Global Leaders Guide – featuring the trademark elite from across the WTR 1000 and WTR 300, Selected for Inclusion, 2019
  • WTR1000 – The World’s Leading Trademark Professionals: Recognized Lawyer, Prosecution and Strategy, NY/Gold and National/Silver rankings, 2015–2019
  • World Intellectual Property Review (WIPR): Leader in Trademark Law, 2018
  • Super Lawyers, Intellectual Property, NY Metro Region, 2012–2019

Professional Associations and Memberships

  • INTA - Chair of the Right of Publicity Committee (2020-2021)
  • INTA - Vice Chair of the Right of Publicity Committee (2018-2019)
  • International Trademark Association (INTA) - Rights of Publicity Committee (and former subcommittee) (2014-current)
  • 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

  • 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

Publications  

Author, "Luxury Fashion & The Importance Of Intellectual Property," Luxury Society, 18 April 2016

Co-author, client alert relating to U.S. Federal Appellate Court Striking Down Ban on Disparaging Trademarks as Unconstitutional, January 2016

Chapter author, "Identifying, Registering, Enforcing and Monetizing Your Intellectual Property Assets" Baker McKenzie Luxury and Fashion Handbook, 2015

Presentations

Presenter, "Protecting Your Brand in the 21st Century," Managing IP's Fashion & Luxury Conference, April 2016

Presenter, "Promoting and Protecting your IP," Webinars, April 2016

View All »