Lesley Grossberg is an intellectual property practitioner who works with clients to maximize the value of their intellectual property, with a focus on brand strategy. Lesley represents clients in all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, and has extensive experience in trademark clearance, prosecution and global portfolio management.
She represents clients in federal district and appellate court litigation, as well as proceedings before the Trademark Trial and Appeal Board (TTAB) and investigations before the International Trade Commission. She routinely handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy and is familiar with intellectual property enforcement tools across various e-commerce services.
Reported and Representative Cases
- Oversaw worldwide trademark enforcement program for publicly traded industrial products company.
- Represented pharmaceutical company in patent infringement case before the U.S. International Trade Commission. ITC found no violation of Section 337, resolving all issues in client’s favor.
- Represented a construction machinery and equipment company in a complex products liability suit involving electric power generators.
- Represented a defendant/counterclaim plaintiff in an eight-patent litigation related to heavy construction and earth-moving vehicles.
- Obtained a summary judgment of invalidity of an opposing party's asserted trademark in a pastry configuration on behalf of a large premium bakery, with the court finding that the asserted trade dress was functional and the Third Circuit affirming.
- Represented a nationwide restaurant chain in TTAB proceedings and trademark enforcement matters. Successfully opposed registration of a confusingly similar mark, with the TTAB holding that the client’s marks are famous and entitled to a broad scope of protection.
- Represented an individual subjected to involuntary psychiatric commitment in a civil rights action against Delaware County challenging procedural due process in commitment procedures, resulting in a change in policy to provide additional safeguards. Orally argued an appeal from grant of summary judgment to the Third Circuit.
- Defended a large technology company in a patent case in the District of New Jersey involving contact- voltage detection along streets. District court litigation was stayed following successful institution of inter partes review at the U.S. Patent and Trademark Office. A Patent Trials and Appeals Board decision invalidating the patents at issue was affirmed by the Federal Circuit.
- Investigated phishing schemes, issued takedown notices to ISPs, and successfully transferred infringing domain names to clients via Uniform Domain Dispute Resolution Policy proceedings.
Representative Transactions
- Provides trademark and patent advice to publicly traded financial services company, including trademark clearance searches and prosecution, as well as patentability and freedom-to-operate analyses.
- Conducts due diligence analyses of intellectual property portfolios.
Selected Experience
- Law clerk to the Honorable Mary L. Cooper, U.S. District Court for the District of New Jersey, 2009 - 2012
- Law clerk to the Honorable M. Hannah Lauck, U.S. District Court for the Eastern District of Virginia, 2008 - 2009
Firm Publications
News
Published In
- The Trademarks Law Review: United States, 3d and 4th editions (2019-2021)
- US State Trademark & Unfair Competition Law: Pennsylvania, INTA (2020)
- "Actavis’ Decision Not Limited to Cash Payments, But Questions Still Remain," New Jersey Law Journal, August 17, 2015
- "Refusals to Deal Still at Issue in Celgene Case," New Jersey Law Journal, May 4, 2015, at 46
- "NJ Courts at Forefront Post-Actavis," New Jersey Law Journal, January 5, 2015, at 38
- "Fox News v. TVEyes: Another Step in the Long March Toward Fair Use Free-for-All?," The IP Litigator (November/December 2014)
- "The Impending Judicial Crisis: How Politics and Indifference are Destroying Our Federal Courts," 6 Dartmouth L.J. 32 (2008) (with Capri Miller)
- "Georgia v. Randolph: Whose Castle is It, Anyway?," 41 U. Rich. L. Rev. 589 (2007)
Speaking Engagements
- “The Trademark Modernization Act of 2020: One Year Later,” Pennsylvania Bar Institute’s Technology Institute, March 2023
- “Trademark Enforcement and Foreign Infringers,” Strafford webinar, March 2023
- “Trademarks With a Twist: Wine and Trademarks,” Philadelphia Intellectual Property Law Association, February 2023
- “USPTO Trademark Practices to Take Effect Dec. 3, 2022: Everything that Brand Owners and Trademark Practitioners Should Know Now,” MyLawCLE and Federal Bar Association webinar, December 2022
- “Bad Faith in Trademark Registrations: Navigating Recent Changes in the US, EU, and China,” Strafford webinar, July 2022
- "How Gross is Your Assignment? Actions Speak Louder than Words When Transferring Goodwill," PBI Intellectual Property Institute, April 2022 (moderator)
- "Product Naming Conventions and Trademark Best Practices," June 2021
- "Fraud in Trademark Applications and Registrations: Proving or Defeating Allegations," Strafford webinar, March 2021
- "Assessing IP Risks: A Conversation Between In-House and Outside Counsel," Association of Corporate Counsel Greater Philadelphia In-House Counsel Conference, July 2020
- "A Spirited Discussion of Trademarks and Whiskey Tasting," Philadelphia Intellectual Property Law Association, February 2020
- "Trademark Damages and Injunctive Relief," Intellectual Property Owners’ Association, November 2019
- "Surviving Your First Branding Disaster," American Intellectual Property Law Association Annual Meeting, October 2019
- "Trademark and Copyright Year in Review," Philadelphia Intellectual Property Law Association Year-End Meeting, May 2019; May 2018
- "What’s Your IP? A Discussion with In-House Counsel," PBI Intellectual Property Institute, April 2019
- "Intellectual Property Overview," Schiffer Publishing Ltd., September 2018
- "Bad Faith Trademark Filings," PBI Intellectual Property Institute, April 2018
- "How to Get Rid of Infringing, Proprietary, and Just Plain Embarrassing Content on the Internet," PBI Intellectual Property Institute, April 2017; August 2017 (webinar)
- "Till Death Do We Part? Social Media and Postmortem IP Rights," PBI, February 2017
- "Trademark Trial and Appeal Board Practice," BakerHostetler Trademark Boot Camp, February 2017
- "All Clear? Trademark Searching," PBI Intellectual Property Institute, April 2016
- "Essentials of Copyright Law: DMCA Issues," PBI, November 2015
- "Software Agreement Strategies: Best Practices for Drafting," June 2015
- "Pleading and Proving Genericy and Other Scorched-Earth Trademark Defenses," PBI Intellectual Property Institute, April 2015
- "Fair Use in the Digital Age: Are Standards Changing?" PBI, November 2014
- "Making Sense of Fair Use," PBI Intellectual Property Institute, April 2014