Nadine Jacobson

Practice Areas

International

Trademark

Transactions

Design

Copyright

Litigation

Career

Few U.S.-based lawyers know more about global trademark strategies and managing global trademark conflicts than Nadine Jacobson, who has searched, cleared for use, and prosecuted for registration thousands of trademarks of all types globally. Nadine has also litigated and defended hundreds of international Opposition and Cancellation proceedings as well as infringement actions around the world. She registers and defends design patents and industrial designs in various countries, including those protected by the Hague Treaty, as well as those filed nationally. Nadine has also advised on dozens of acquisitions and divestitures in which the trademark and copyright assets were either the primary or crucial aspect of the overall transaction.

When the U.S. joined the Madrid Protocol in 2003, Nadine not only chaired the PLI seminar on this significant development but also spoke at numerous seminars arranged by legal trade associations such as the AIPLA and INTA, explaining to U.S. practitioners how the Madrid Protocol works. Nadine's knowledge of the Paris Convention, the TRIPS Agreement, and the Berne Convention is equally comprehensive, and she is frequently asked to speak and advise on various aspects of these IP treaties.

Nadine's in-depth understanding of IP treaties, national trademark laws, and the related enforcement procedures of dozens of foreign jurisdictions informs her strategic advice to trademark owners from both the U.S. and other countries, including the EU, Japan, China, and many others. In addition to her clearance, prosecution, and enforcement work, Nadine conducts IP portfolio audits, investigations, and due diligence. She also provides additional transactional support by negotiating and drafting IP-related agreements, including licenses, assignments, global consent and coexistence agreements, and the IP-related provisions of Asset and Stock Purchase agreements.

Nadine represents both startups and established companies across a broad range of industries, including pharmaceuticals, apparel, jewelry, cosmetics, watches, consumer health products, medical devices, food and beverage, industrial systems, and home security products, as well as restaurant, hotel, retail, entertainment, and financial services.

Professional Memberships

International Trademark Association (INTA) (Member, Emerging Issues Committee, 2016-present; EU/OHIM Office Practices Committee, 2014-2015; Classification Committee 2011-2013; Chair, Madrid Systems Subcommittee, 2008-2010; Madrid Systems Subcommittee, 2006-2007; Chair, INTA/OHIM Conference on EU Law, 2007; EU CTM Practices Subcommittee, 2001-2005; Meetings Committee, 1999-2001)

Association of the Bar of the City of New York (Member, Trademarks and Unfair Competition Committee, 1997-2000, 2001-2004, 2006-2009, 2014-present)

International Association for the Protection of Intellectual Property (AIPPI)

American Bar Association

Publications

Madrid Protocol – Recent Developments and Practice Tips, World Trademark Review, July 2021

Work Highlights

Negotiated client’s acquisition of French company’s trademarks in the EU; 30-year French business changed its name as part of the transaction enabling client to expand its well-known mark to Europe.

Negotiated multinational coexistence agreement enabling client to enter Asian market for its core services.

Served as an independent expert witness in an international arbitration brought against a Central American country challenging decision of its Supreme Court in a trademark conflict.

Advised a multinational pharmaceutical company as it divested various business units to competitors and entered joint venture with another competitor; advised in sorting out and assigning trademark assets to various corporate entities as part of overall transaction.

Developed extensive evidence of bad faith without the ability to conduct discovery in order to cancel trademark pirates’ registrations of clients’ well-known mark on grounds of bad faith in the EUIPO Tribunals and Chile Supreme Court.

Languages Spoken

Hebrew

Spanish

Education