Nancy Rubner Frandsen

Partner

Philadelphia
T +1.215.564.1223
F +1.215.568.3439

“Nancy has mastered the art of trademark protection and inspires confidence with her 32 years of experience.”

— WTR 1000 - The World's Leading Trademark Professionals (2019)

Overview

For more than 30 years, Nancy has guided clients not only through the core areas of trademark and copyright strategic counseling and portfolio management, but also through the more complex areas of the practice, including enforcement before the federal courts and the Trademark Trial and Appeal Board (TTAB). Nancy’s in-depth knowledge of her clients’ businesses, from individual entrepreneurs to major corporations, enables her to support and advance their unique objectives and goals and has made her their go-to trademark lawyer. This has led Nancy to be ranked since 2006 by Chambers USA as a “Leading Lawyer” in Intellectual Property Law with a “highly respected trademark and copyright practice” (Chambers USA 2019), where she has been described as “‘tough, experienced leader” (Chambers USA 2015).

Nancy served three years as the National Team Leader of BakerHostetler's Trademark team and is also an adjunct professor at Villanova University Charles Widger School of Law and Temple University Beasley School of Law, where she teaches trademark practice. She is the co-author of What the General Practitioner Should Know About Trademarks and Copyrights (6th ed.), published by ALI-ABA. Nancy is the course planner of the Pennsylvania Bar Institute’s annual IP Institute, a two-day seminar on the hottest topics in IP law, which she has planned and co-chaired since its inception in 2007. Nancy is a Philadelphia Chapter Founder and Leader of ChIPs, a national organization advancing women in tech, law and policy.

Select Experience

  • Member of the trial team that successfully defended a long-time firm client in a trademark infringement case. After a bench trial in federal court, the court found that the plaintiff did not demonstrate a likelihood of confusion and entered judgment in favor of client.
  • Defended family restaurant business against a trademark infringement claim from other family members. Successfully negotiated settlement between the parties.
  • Represented a client in trademark litigation involving energy drinks against a vodka manufacture. Defeated a motion to dismiss which ultimately led to a favorable settlement for the client.
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Experience

  • Member of the trial team that successfully defended a long-time firm client in a trademark infringement case. After a bench trial in federal court, the court found that the plaintiff did not demonstrate a likelihood of confusion and entered judgment in favor of client.
  • Defended family restaurant business against a trademark infringement claim from other family members. Successfully negotiated settlement between the parties.
  • Represented a client in trademark litigation involving energy drinks against a vodka manufacture. Defeated a motion to dismiss which ultimately led to a favorable settlement for the client.
  • Represented a client in trademark litigation involving sports accessories, which ended in a successful settlement for the client. Prior to settlement, successfully moved to dismiss a declaratory judgment action filed by the infringing party, giving client the opportunity to litigate in the client’s choice of forum.
  • Defended a longtime client in trade dress litigation involving the shape of a food product. Successfully prevailed on a declaratory judgment action, affirmed on appeal to the Third Circuit Court of Appeals, which led to the cancellation of an incontestable trademark registration of the opposing party.
  • Represented a longtime client in trade dress litigation involving playground equipment. Defeated two motions to dismiss, which ultimately led to a settlement in favor of the client.
  • Represented a well-known retailer in defense of copyright infringement. After our client prevailed on a motion for partial summary judgment on damages and costs, and succeeded in requiring plaintiff to post a bond, the case was dismissed by the district court and all fees and costs were awarded to our client. The decision was later affirmed by the Second Circuit Court of Appeals.
  • Represented a publisher in a copyright infringement claim. After our client prevailed at trial on all liability issues, the district court awarded statutory damages and attorney's fees to the client.
  • Manages worldwide trademark portfolios for multiple clients, with attendant counseling related thereto.
  • Responsible for international enforcement of client trademarks through use of cease and desist letters, domain name disputes, mediation and litigation.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Pennsylvania (2006 to 2019)
    • Band 2 (2016 to 2019), Band 3 (2013 to 2015)
  • WTR 1000 – The World's Leading Trademark Professionals (2011 to 2019)
    • Top Attorney in Pennsylvania for Enforcement and Litigation - Gold
    • Top Attorney in Pennsylvania for Prosecution and Strategy - Gold
  • Who's Who Legal: Trademarks (2016 to 2019)
  • The Best Lawyers in America© (2012 to Present)
    • Pennsylvania: Copyright Law
      • Best Lawyers© "Lawyer of the Year" (2018)
    • Pennsylvania: Litigation - Intellectual Property
      • Best Lawyers© "Lawyer of the Year" (2020)
    • Pennsylvania: Trademark Law
  • Managing Intellectual Property "Top 250 Women in IP"
  • Managing Intellectual Property "IP Stars" in Pennsylvania
  • Arrive Magazine "Top Women Lawyers in the Northeast"
  • Martindale-Hubbell: AV Preeminent
  • Pennsylvania "Super Lawyer" (2010 to 2019)
    • Top 50 Women Lawyers in Pennsylvania (2016 to 2019)
  • Arthur H. Seidel Distinguished Service Award (2016)
  • World Intellectual Property Review: Leader (2017)

Memberships

  • American Bar Association
    • Intellectual Property Section
    • Litigation Section
  • International Trademark Association
    • Unreal Committee
  • Philadelphia Intellectual Property Law Association
  • Pennsylvania Bar Institute: Intellectual Property Advisory Committee
  • IP Law Institute
    • Co-Chair (2010 to present)
    • Course Planner (2007 to present)
  • ChIPS
    • Philadelphia Chapter: Founder and Leader

Community

  • Philadelphia Volunteer Lawyers for the Arts
  • Singing City (a non-profit organization founded in 1948, whose mission is to be an artistic, social and spiritual force, bringing people together through music)
  • Breastcancer.org

Pro Bono

  • Represented a pro bono client in a trademark infringement case against the client's former volunteer, who tried to claim trademark rights in a fundraiser. Case settled after a preliminary injunction was issued in favor of our client.
  • Routinely provides trademark and copyright counsel to artists and cultural organizations for Philadelphia Volunteer Lawyers for the Arts.
  • Serves as trademark counsel to breastcancer.org, the world's leading online resource for breast health and breast cancer information.
  • Serves as trademark counsel to Surrey Services for Seniors, a nonprofit organization offering comprehensive resources, services and activities for older adults.

Prior Positions

  • Copyright Society of the U.S.A.
    • Philadelphia Chapter: Chair (2001 to 2003)
  • Woodcock Washburn LLP
    • Trademark and Copyright Group: Chair
    • Women's Initiative: Co-Chair

Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Third Circuit
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. Court of Appeals, Fifth Circuit
  • Pennsylvania

Education

  • J.D., Temple University Beasley School of Law, 1986, cum laude
  • B.A., Ohio University, 1975

Blog

In The Blogs

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Copyright, Content, and Platforms
Copyright Office Eliminates Three-Month Filing Requirement for Newspapers
By Nancy Rubner Frandsen
February 18, 2019
Co-authored by: Savannah Merceus On Feb. 13, 2019, the U.S. Copyright Office amended its rule governing group registration of newspapers by eliminating the requirement that claims be submitted within three months after publication of the...
Read More ->