Lesley M. Grossberg

Associate

Philadelphia
T +1.215.564.3007
F +1.215.568.3439

Overview

Lesley McCall Grossberg focuses her practice on all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, as well as trademark prosecution and enforcement. Her experience extends to the e-commerce, financial services, social media, software, consulting, telecommunications and food services industries. She represents clients in federal district and appellate court litigation, as well as in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). She also represents clients in commercial litigation matters, including breach of contract, fraud and other general business cases, before state and federal courts and administrative agencies. Her interest in procedure works to her clients' benefit, ensuring that creative solutions are explored, considered and utilized.

Lesley served for three years as a law clerk to the Honorable Mary L. Cooper of the U.S. District Court for the District of New Jersey, where she gained extensive experience in patent and trademark litigation, as well as in a wide array of civil litigation including antitrust, securities, products liability, employment, education, maritime and consumer fraud cases

Select Experience

  • Manages a global trademark portfolio for a tennis star’s confectionery brand, including foreign and domestic trademark procurement, enforcement and maintenance, as well as domain name issues and Trademark Clearinghouse registry.

  • Manages foreign and domestic certification mark portfolio for association of plumbing and drainage product manufacturers.

  • 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.

  • Advised lifestyle apparel company on intellectual property issues throughout merger negotiations, providing due diligence analysis of global trademark portfolio.

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Experience

  • Manages a global trademark portfolio for a tennis star’s confectionery brand, including foreign and domestic trademark procurement, enforcement and maintenance, as well as domain name issues and Trademark Clearinghouse registry.

  • Manages foreign and domestic certification mark portfolio for association of plumbing and drainage product manufacturers.

  • 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.

  • Advised lifestyle apparel company on intellectual property issues throughout merger negotiations, providing due diligence analysis of global trademark portfolio.

  • Represents manufacturer of energy drinks in a trademark infringement action against a vodka producer using an identical mark. The Limu Company, LLC v. Quality Craft Spirits Ltd. (E.D. Pa. 2017).

  • Represents manufacturer of custom sports mouthguards against lacrosse equipment company in a trademark infringement action. Sport Guard Inc. v. Gladiator Lacrosse Inc. (E.D. Pa. 2017).

  • Represents a fish seller and distributor in a trademark opposition proceeding concerning the client’s right to register its marks. 13th Ave Fish Market Inc v. Oakhurst Industries, Opp’n No. 91218523 (TTAB 2014-present). Counsels client regarding trademark licensing and trademark clearance.

  • 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. Sweet Street Desserts, Inc. v. Chudleigh’s Ltd. (E.D. Pa. 2012-2015; 3d Cir. 2015-2016).

  • Represents 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. Red Lobster Hospitality, LLC v. Po’boys Cajun Seafood, Opp’n No. 91218549 (TTAB 2014-2016).

  • Successfully defended trademark applicant’s right to register NOT SO SIMPLE SYRUP for prepared syrups over opposer’s mark for KEEP IT SIMPLE SYRUP for prepared syrups. Heidi Webb Inc. v. Chef Sous LLC, Opposition No. 91215638 (TTAB 2014-2016).

  • Represents an international tire sales and services company in TTAB proceedings and trademark enforcement matters.

  • Represents a construction machinery and equipment company in a complex products liability suit involving electric power generator sets. Companhia Energetica Potiguar v. Caterpillar Inc. (S.D. Fla. 2015-present).

  • Represented a copyright claimant in an action for declaratory judgment of joint authorship and an accounting. Robitaille v. Zima (D.N.J. 2016-2017).

  • Represented a defendant/counterclaim plaintiff in an eight-patent litigation related to heavy construction and earth-moving vehicles. ESCO Corp. v. Caterpillar Inc., et al. (D. Nev. 2014-2017).

  • Defended a client in a patent litigation against a nonpracticing entity, obtaining a rapid settlement prior to commencement of discovery. Autoloxer LLC v. Caterpillar Inc. (E.D. Tex. 2015-2016).

  • 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 patent at issue was affirmed by the Federal Circuit. Power Survey LLC v. L3 Communications (D.N.J. 2013-2017).

  • Represented a manufacturer of sports nutrition and supplement products in a patent infringement matter. Thermolife International v. Prosource Performance Products et al. (D.N.J. 2015-2016).

  • Represented a global restaurateur and provider of travel dining services in employment matters in Pennsylvania and New Jersey.

  • Defends an insurance provider in a series of putative class action cases involving allegations of fraud and RICO violations pertaining to lender-placed insurance policies.

  • Obtained judgment of noninfringement in favor of a defendant sewer services company in a trademark infringement matter, as well as an attorneys’ fees award for discovery motion practice. Precision Sewer Services, LLC v. A to U Services, Inc. (E.D. Pa. 2013-2014).

  • 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. T.R. v. Delaware County (E.D. Pa. 2013-2014, 3d Cir. 2014-2015).

  • Defended a financial services company in an action for declaratory judgment of noninfringement brought by a former employee, asserting counterclaims for breach of contract, misappropriation of trade secrets, trademark infringement and unfair competition. Wealth Building Cornerstones LLC v. Leap Systems, Inc. (W.D. Wis. 2013-2014).

  • Represented a wind energy company in an admiralty action seeking indemnification for settlement monies paid in earlier arbitration. Operadora Maritima de Graneles, S.A. v. Gamesa Wind U.S., LLC (E.D. Pa. 2012-2014).

  • Represented a consulting company in defending claims of copyright infringement and trade secret misappropriation through discovery and motions practice. ZS Associates, Inc. v. Synygy, Inc. (E.D. Pa. 2012-2013).

  • Brought federal action against a domain-name infringer, causing the infringer to change its branding before it could appear at a major financial services conference. Leap Systems LLC v. Fat Donkey, Inc. (D.N.J. 2013).

Recognitions and Memberships

Recognitions

  • The Legal Intelligencer: Lawyer on the Fast Track (2015)

Memberships

  • American Bar Association
    • IP Litigation Committee: Subcommittee Chair
  • Philadelphia Intellectual Property Law Association
    • Treasurer (2017 to 2019)
  • Copyright Society
  • International Trademark Association
    • Trademark Reporter Committee (2016 to 2018)

Community

  • Philadelphia Volunteer Lawyers for the Arts
  • Young Friends of the Philadelphia History Museum
  • Barnes Foundation: Founding Member
  • Art Institute of Philadelphia: Guest Lecturer

Pro Bono

  • Philadelphia Volunteer Lawyers for the Arts: Legal Volunteer
  • American Civil Liberties Union: Cooperating Attorney
  • Veterans' Consortium Pro Bono Program

Prior Positions

  • Law Clerk for the Honorable Mary L. Cooper, U.S. District Court for the District of New Jersey
  • Law Clerk for the Honorable M. Hannah Lauck, U.S. District Court for the Eastern District of Virginia

Admissions

  • U.S. Court of Appeals, Federal Circuit, 2014
  • U.S. Court of Appeals, Third Circuit, 2014
  • U.S. Court of Appeals, Fourth Circuit, 2009
  • U.S. District Court, District of New Jersey, 2012
  • U.S. District Court, Eastern District of Pennsylvania, 2012
  • U.S. District Court, Eastern District of Texas, 2015
  • Pennsylvania, 2009
  • New Jersey, 2009

Education

  • J.D., University of Richmond School of Law, 2008, magna cum laude
  • B.A., Political Science and History, Tulane University, 2004, cum laude

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Court Finds Infringement of THE KRUSTY KRAB Mark
By Lesley M. Grossberg
May 12, 2017
In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the...
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Copyright, Content, and Platforms
A Circuit Split at Last: Ninth Circuit Recognizes De Minimis Exception to Copyright Infringement of Sound Recordings
By Lesley M. Grossberg
June 21, 2016
For the past 10 years, the Sixth Circuit Court of Appeals has stood alone in having addressed the issue of whether a de minimis amount of copying used in a song sample constitutes infringement of a copyrighted sound recording. While the...
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IP Intelligence: Insight on Intellectual Property
New Changes to European Trademark Prosecution
By Lesley M. Grossberg
May 31, 2016
As of March 23, 2016, the “Community Trade Mark” (CTM) is going by a new name: the “European Union Trade Mark” (EUTM), reflecting the evolution of the European Community into the European Union. By force of Regulation No. 2015/2424, the...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Holds Trademark Infringement Must Be Willful to Warrant Award of Infringer’s Profits, Highlighting Continuing Circuit Split
By Lesley M. Grossberg
April 20, 2016
The Federal Circuit, applying Second Circuit trademark law, has weighed in on the issue of whether an infringer’s profits are recoverable absent a finding of willful infringement. In Romag Fasteners, Inc. v. Fossil, Inc. (Fed. Cir. Mar...
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IP Intelligence: Insight on Intellectual Property
Another Step in the Long March from Campbell v. Acuff-Rose toward Fair Use Free-for-All?
By Lesley M. Grossberg
October 21, 2014
Fox News Network, LLC v. TVEyes, Inc., 2014 WL 4444043 (S.D.N.Y. Sept. 9, 2014) TVEyes is a media-monitoring subscription service that “records the entire content of television and radio broadcasts and creates a searchable database of that...
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