Jacqueline M. Lesser

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 represents a wide array of clients in the consumer products, food and beverages, entertainment, pharmaceutical and technical industries in trademark and copyright matters. She procures, manages and enforces clients’ trademarks and copyrights throughout the world, in Trademark Offices, federal court and administrative forums. Adapting to the needs of her clients' industries, and Jackie combines her ability to adapt to the needs of her clients’ industries with her in-house and in-firm practice experience to provide her clients with personalized and practical counsel.

Select Experience

Counseling and Procurement
  • 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.

Litigation and Contentious Proceedings
  • Represented a lifestyle brand in opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Reached favorable settlement.

  • 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.

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Experience

Counseling and Procurement
  • 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 the protection and procurement of the U.S. and international trademark portfolio for a major media company.

  • Responsible for worldwide portfolio management of the trademark portfolio for a major watch manufacturer.

  • Provides U.S. and international trademark counseling and international trademark management for pharmaceutical clients.

Litigation and Contentious Proceedings
  • Represented a lifestyle brand in opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Reached favorable settlement.

  • 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. 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.

  • Represented a longtime client in trade dress litigation involving playground equipment in U.S. District Court for the Western District of Wisconsin. Defeated two motions to dismiss that ultimately led to a settlement in favor of the client.

  • Represented a 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 extensive discovery and trial briefing.

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
  • Philadelphia Intellectual Property Lawyers Association (PIPLA)
  • Philadelphia Bar Association
    • IP Committee
    • Women in IP Subcommittee: Co-Chair  (2012 to 2014)
  • University of Pennsylvania
    • Detkin Intellectual Property and Technology Legal Clinic, Committee Member (2012 to present)

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
The Federal Circuit Deals Another Blow to Diagnostic Method Patents
April 11, 2019
In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation...
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IP Intelligence: Insight on Intellectual Property
Is it ‘anything goes?’ – The US expansive view of trademarks supports a wide variety of ‘nontraditional trademarks.’
April 4, 2019
“Trademark” is broadly defined in Section 45 of the Lanham Act, 15 U.S.C. §1127, as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. The same definitional breadth...
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IP Intelligence: Insight on Intellectual Property
Protected or Unprotected: The Supreme Court Hears Iancu v. Brunetti
By Jacqueline M. Lesser
March 19, 2019
On April 15, 2019, the Supreme Court will hear arguments on whether dirty words and vulgar terms may be registrable as trademarks – and if so, what is the test? Section 2(a) of the Trademark Act currently provides that the Trademark Office...
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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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