Lisa Rosaya

Practice Areas

Lisa Rosaya is a partner in Baker McKenzie's Intellectual Property Practice located in New York. In their 2021 rankings, Chambers comments that Lisa “is highly regarded for her trademark expertise and routinely advises clients on portfolio development and management, including due diligence counsel in relation to transactions. She is also noted in Chambers 2019 rankings for her skill in disputes before the TTAB” with a client commenting that they’ve found her to be “excellent; quick to grasp the issues at hand, providing timely advice and counsel, and helpful in finding solutions for the business."

Prior to joining the Firm in October 2005, she was an associate with a New York-based law firm and a trademark examining attorney at the US Patent and Trademark Office. She has authored numerous articles and spoken at various industry events on trademark, copyright, advertising, Internet and domain name issues.

Lisa focuses on global trademark portfolios and brand management services, including trademark selection and branding, trademark prosecution, opposition and cancellation proceedings, copyright and trademark licensing, enforcement and infringement matters, domain name issues and disputes and labeling and advertising issues. She also assists in addressing IP issues in the context of corporate and financing transactions, including drafting and analyzing IP-related provisions and agreements, due diligence and perfection of security interests domestically and internationally. Her clients include companies from the consumer, food and beverage, telecommunications, media and entertainment, fashion and luxury goods, financial services, social media, and computer hardware and software industries.

Professional Memberships

INTA – Commercialization of Brands Committee (2022-2023)

INTA - Chair of the Right of Publicity Committee (2020-2021)

INTA - Vice Chair of the Right of Publicity Committee (2018-2019)

International Trademark Association (INTA) - Rights of Publicity Committee (and former subcommittee) (2014-2021)

INTA - Presidential Task Force (2016)

New York State Bar Association - Treasurer, Intellectual Property Law Section (2013-2014); co-chair, Trademark Committee (2008-2013)

ICANN - GNSO-chartered Registration Abuse Policies Implementation Drafting Team, Fall 2010

INTA - Internet Committee - Domain Disputes and WHOIS Subcommittee (2010-2013)

INTA - Dilution and Well-Known Marks Committee - North America Subcommittee (2006-2009)

Publications

Author, "Luxury Fashion & The Importance of Intellectual Property," Luxury Society, 18 April 2016

Co-author, client alert relating to U.S. Federal Appellate Court Striking Down Ban on Disparaging Trademarks as Unconstitutional, January 2016

Chapter author, "Identifying, Registering, Enforcing and Monetizing Your Intellectual Property Assets" Baker McKenzie Luxury and Fashion Handbook, 2015

Work Highlights

• Represents Unilever and its affiliates in US trademark clearance, prosecution and disputes before the US Patent & Trademark Office's Trademark Trial and Appeal Board

• Advises Unilever and its affiliates in US IP due diligence and licensing matters relating to M&A and IP/commercial transactions

• Represented Brooks Brothers Group, Inc. in its global trademark, copyright, advertising and rights of publicity matters and disputes

• Provided strategic advice to large non-profit organization on trademark, keyword and domain name issues in lawsuit involving infringement and other related claims

• Counseled well-known global fashion company on trademark issues and licensing arrangements as part of post-acquisition integration of a well-known shoe and accessories company

• Represented apparel company in defending and settling copyright infringement claim relating to piecework used in part of certain garments

• Represented global fashion company in defending and settling copyright infringement claim relating to fabric pattern

• Successfully represented numerous clients in recovering infringing domain names through the Uniform Domain-Name Resolution Policy and advised clients on proceedings under the Uniform Rapid Suspension System for new gTLDs

Expert in these Jurisdictions

USA

Languages Spoken

English, French, German

Industry Sector Expertise

Brand Management

Brand Enforcement

Consumer Goods & Retail

Copyright

Intellectual Property

IP Disputes

IP Transactions

Education