Jacqueline M. Lesser

She | Her | Ms.

Counsel

Philadelphia
T +1.215.564.2155
F +1.215.568.3439
New York
T +1.212.589.4250
F +1.212.589.4201

Overview

Jacqueline Lesser has more than 30 years of experience as a trademark and copyright litigator and counselor. An experienced litigator in federal courts and before administrative tribunals, she has provided practical, strategic counsel to a wide range of clients in copyright and trademark matters in the U.S. and internationally. Her areas of concentration include enforcement and defense of IP, strategic branding strategies, trademark clearance and portfolio development, IP due diligence and cobranding and licensing of trademarks and copyrights.

Select Experience

Litigation and Contentious Proceedings
  • Lead counsel for trademark litigation on behalf of leading financial family office in the U.S. District Court for the Southern District of New York.
  • Lead counsel for software company to enforce trademark rights in action in the U.S. District Court for the Eastern District of Pennsylvania and proceedings before the TTAB (Trademark Trial and Appeal Board).
Counseling and Procurement
  • Serve as IP counsel for national confectionery company.
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Experience

Litigation and Contentious Proceedings
  • Lead counsel for trademark litigation on behalf of leading financial family office in the U.S. District Court for the Southern District of New York.
  • Lead counsel for software company to enforce trademark rights in action in the U.S. District Court for the Eastern District of Pennsylvania and proceedings before the TTAB (Trademark Trial and Appeal Board).
  • Represented an international consumer products company in a defense of a declaratory judgment action in the Western District of Wisconsin, leading to a successful dismissal of suit.
  • Defended fashion retailer client in an infringement suit brought by a multinational licensing company in the U.S. District Court in the Central District of California, leading to a dismissal of suit on preliminary motion practice.
  • Represented a foreign film distribution company in defense of a copyright infringement suit in the Central District of California, leading to dismissal of action on preliminary motion practice and grant of attorney’s fees for client.
  • Represented long time legal services client in defense of a trademark infringement suit on preliminary injunction in the Eastern District of Pennsylvania, leading to withdrawal of suit and successful opposition of opponent’s trademark registration.
  • Represented longstanding client in multi-country litigation and administrative proceedings against trademark pirate, leading to successful transfer of trademarks to client.
  • Represented major retailer in trademark infringement suit brought by international jewelry company in the Southern District of New York.
  • Represented outdoor adventure sporting goods and lifestyle brand in opposition and cancellation proceedings before the TTAB. Favorable settlement reached after full trial.
  • Represented a major sporting goods manufacturer of volleyballs in cross-border proceedings, through China and Japan, and achieved a favorable settlement on behalf of the client, after arbitration, permitting the continued source and delivery of the client’s product.
  • Represented a major medical device manufacturer in a trademark opposition proceeding before the TTAB. Opposition granted after full trial.
  • Represented a leading international software consortium in U.S. trademark dispute in the TTAB. Cancellation granted after full trial.
  • Represented a U.S. cable company in a trademark opposition proceeding before the TTAB. Achieved a successful, precedential decision in favor of client’s right to register.
  • Represented a major consumer products manufacturer in an opposition before the TTAB, defending the client’s right to register its well-known mark on related products. Achieved a favorable result, after precedential decision in defense of summary judgment motion.
  • Settlement of significant trademark dispute on behalf of the State of Washington in capacity as special assistant attorney general for the State of Washington.
Counseling and Procurement
  • Serve as IP counsel for national confectionery company.
  • Serve as trademark counsel for major international outdoors sporting goods company.
  • Serve as U.S. trademark counsel for major international social media company.
  • Serve as trademark and copyright counsel for U.S.-based software company.
  • Serve as copyright and trademark counsel pharmaceutical companies.
  • Responsible for the protection and procurement of the worldwide trademark portfolio of an international security device manufacturer.
  • Serve as IP counsel for Michelin-starred restaurant in U.S. and international cobranding and sponsorship negotiations.
  • Represent national property management company in IP matters in in the U.S. and Canada /li>

Recognitions and Memberships

Recognitions

  • WTR 1000 – The World's Leading Trademark Professionals (2022)
    • Top Attorney in Pennsylvania for Enforcement and Litigation - Silver
  • Who's Who Legal: Trademarks (2016, 2017)

Memberships

  • Copyright Society of the U.S.A.
  • International Trademark Association
  • New York Intellectual Property Lawyers Association
  • New York State Bar Association
  • European Community Trademark Association
  • Pharmaceutical Trademark Group
  • Philadelphia Intellectual Property Lawyers Association (PIPLA)
  • University of Pennsylvania
    • Detkin Intellectual Property and Technology Legal Clinic, Committee Member (2012 to present)
  • Drexel University School of Law: Adjunct Professor

Pro Bono

  • Serves as pro bono coordinator for the Philadelphia office.
  • Represent clients through name change process through the Transgender Legal Defense and Education Fund.

Prior Positions

  • Woodcock Washburn LLP
    • Women’s Initiatives Co-Chair
  • QVC, Inc.: Associate General Counsel, Intellectual Property
  • Clerk to the Honorable Manuel L. Real of the United States District Court for the Central District of California

Admissions

  • U.S. Court of Appeals, Third Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. District Court, District of Colorado
  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Western District of New York
  • U.S. Supreme Court
  • New York
  • Pennsylvania

Education

  • J.D., Brooklyn Law School, 1991
  • B.A., University of Massachusetts, 1984, cum laude

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The Federal Circuit Provides Insight on Experimental Use and On-Sale Bar
By John S. Hilten
May 9, 2022
On April 29, 2022, the Court of Appeals for the Federal Circuit issued an opinion for Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., U.S. Oil Co., Inc. (2022 WL 1275697).This case touched on a number of issues, including...
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IP Intelligence: Insight on Intellectual Property
Supreme Court Calls for Views of Solicitor General on Petition Involving International Reach of U.S. Trademark Law
By Andrew E. Samuels
May 2, 2022
This morning, the Supreme Court called for the views of the Solicitor General on the pending petition for writ of certiorari in Abitron Austria GmbH v. Hetronic International, Inc. In Abitron, the Court of Appeals for the Tenth Circuit...
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IP Intelligence: Insight on Intellectual Property
A Pattern of Deceit? SCOTUS to Consider Whether Section 411(b) of the Copyright Act Imposes a Mental State Requirement Akin to Fraud
By Jacqueline M. Lesser
June 3, 2021
On June 1, 2021, the Supreme Court granted certiorari on the question of whether Section 411(b) of the Copyright Act is intended to be a “fraud” statute that requires scienter for cancellation of a copyright registration. See Unicolors...
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IP Intelligence: Insight on Intellectual Property
TTAB Retreats From Precedential Houndstooth Mafia Decision
By Jacqueline M. Lesser
March 16, 2016
Trademark proceedings are contentious proceedings, but the battle for registration of the HOUNDSTOOTH MAFIA trademark has been largely overshadowed by the now-ended dispute between the Trademark Trial and Appeal Board (TTAB) and the...
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IP Intelligence: Insight on Intellectual Property
Transforming Works: The Second Circuit Rules That the Google Library Project Digitization Is a Transformative Fair Use in Authors Guild, v. Google Inc.
By Jacqueline M. Lesser
October 20, 2015
On October 16, 2015, the Second Circuit affirmed the district court’s ruling in Authors Guild, Inc. v. Google Inc., 954 F. Supp. 2d 282 (S.D.N.Y. 2013), previously reported here, that Google’s digitization of complete copyrighted works...
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