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

Jackie Lesser has represented trademark and copyright clients for more than 25 years, protecting and defending clients in the U.S. and internationally. Her clients include a wide array of companies in the consumer products, apparel, food and beverage, entertainment, pharmaceutical, media, and technical industries. Bridging litigation and transactional practices, Jackie supports technology and media clients on protection of their brands and creative content. She also works with clients on acquisition and commercialization of technologies, and on enforcement and defense of rights in federal court and administrative forums. As a trusted counselor and advisor, Jackie partners with her clients to achieve favorable results.

Select Experience

Litigation and Contentious Proceedings
  • 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.
Counseling and Procurement
  • Responsible for worldwide portfolio management for major apparel retailer.
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Experience

Litigation and Contentious Proceedings
  • 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. Representation lead to withdrawal of preliminary injunction motion and voluntary withdrawal of suit.
  • Represented a longtime client in a trademark dispute in the U.S. District Court for the Western District of Tennessee. Based on the defense and negotiations, the action was dismissed before an answer was filed.
  • Represented longstanding client in multi-country litigation and administrative proceedings against trademark pirate, leading to successful transfer of trademarks to client.
  • Successful defense of well-known media company in defense of their right to their channel name and brand in the Southern District of New York.
  • Represented foreign manufacturer of farm equipment in trade secret action in the Northern District of New York
  • Represented major retailer in trademark infringement suit brought by international jewelry company in the Southern District of New York.
  • Represented major retailer in cosmetics patent infringement suit in the Southern District of New York.
  • Represented a sporting goods and lifestyle brand in opposition and cancellation proceedings before the TTAB of the United States Patent and Trademark Office. Favorable settlement reached after full trial.
  • Represented a major sporting goods manufacturer of volleyballs in cross-border proceedings, throughout Asia. Obtained 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.
  • Defended a longtime client in a patent suit in the Western District of Kentucky. Based on aggressive pre-trial defense, the case against the client was withdrawn.
  • Represented a longtime client in the defense of a preliminary injunction in the U.S. District Court for the Eastern District of Pennsylvania. After aggressive defense, the case against the client was withdrawn.
  • Successfully defended a client against a copyright infringement suit concerning a video streaming service on preliminary motion practice Attorney’s fees awarded to the client.
  • Represented a major international electronic security company in a trademark dispute in the TTAB. Successfully opposed third party, after substantial motion practice.
  • 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
  • Responsible for worldwide portfolio management for major apparel retailer.
  • Responsible for copyright and trademark matters for pharmaceutical companies. Responsible for the protection and procurement of the worldwide trademark portfolio of an international security device manufacturer.
  • Responsible for the U.S. and international trademark portfolio for a global eCommerce retailer, including new branding.
  • Responsible for the worldwide portfolio of an international gaming company.
  • Responsible for the worldwide portfolio of an international multimedia company.
  • Responsible for worldwide portfolio management of the trademark portfolio for a major international watch manufacturer.
  • Represent a U.S. confectionary manufacturer in trademark and copyright matters.

Recognitions and Memberships

Recognitions

  • 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

  • Handle pro bono litigation matters for the A.C.L.U.
  • Represent individuals applying for asylum.

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. Supreme Court
  • 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
  • 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
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
A Snap Shot on Inadvertent Licensing Through Social Media
By Jacqueline M. Lesser
April 17, 2020
On April 13, 2020, Judge Kimba Wood, of the U.S. District Court for the Southern District of New York, clarified what we knew to be true: Makers and creators should read social media sites’ Terms of Use and other posted conditions before...
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IP Intelligence: Insight on Intellectual Property
Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?
By Jacqueline M. Lesser
December 31, 2019
Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of...
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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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