Attorney

Posted on: 2006-01-04

LISA N. KAUFMAN 3408 Rebecca Jane Way Alexandria, VA 22310 (703)960-0805 [email protected] Experienced attorney with substantial background in trademark, copyright and unfair competition matters. Representative domestic and international clients encompass a broad range of industries including pharmaceutical and chemical companies, consumer products companies, food manufacturers, clothing manufacturers, cosmetic and perfume manufacturers, highly sophisticated software and technology companies. Representation has also included artists and musicians, as well as clients in the service sector including banking and financial services, telecommunications, automobile dealerships, a major internet service provider, hotels, restaurants, airlines, museums, retailers, major publishers, amusement parks, sports organizations, a major psychological testing and educational testing service and a major outplacement counseling service. Strong leadership and management skills in terms of mentoring and training junior attorneys and paralegals, establishment of docketing and filing systems, and supervision and coordination of staff and activities in connection with these functions. Trademark Expertise:  Drafting, filing and prosecuting trademark applications in the U.S. Trademark Office  Organizing and directing worldwide registration campaigns for clients  Drafting and negotiating licenses for clients for both domestic and international use  Setting up worldwide watching and policing programs for clients’ trademarks and copyrights  Preparing cease and desist demand letters and following up with settlement agreements or litigation as necessary  Conducting due diligence for clients’ intellectual property acquisitions; drafting and preparing the documents regarding these transactions  Searching and preparing clearance opinions  Handling trademark oppositions and cancellation proceedings before the Trademark Trial and Appeal Board; in almost all cases satisfactory results have been obtained for the client either through settlement or a favorable decision  Litigating in federal and state courts, including appeals, representing both plaintiffs and defendants on various claims such as trademark and trade name infringement, trade dress infringement, trade secret violations, unfair competition matters, false advertising and deceptive trade practices. Domain Name Registration & Protection:  Registering domain names and preparing and drafting cease and desist letters on behalf of clients. Have successfully persuaded infringers to cancel or transfer domain names to my clients  Drafting, filing and winning ICANN and UDRP proceedings.  I have filed and drafted a complaint under the Anti-Cybersquatting Consumer Protection Act (ACPA) in Federal Court. In that case, I filed a Motion for Summary Judgment. The case was ultimately settled on terms favorable to our client, largely because the judge had indicated he would rule in our client’s favor on the critical issues. The case, one of the first brought under the ACPA, was significant in that it clarified the statute which was somewhat ambiguous as to when and how an in rem proceeding could be brought under the ACPA. Copyright Expertise:  Counseling of clients regarding copyright protection and clearance  Filing and prosecution of copyright applications with the U.S. Copyright Office  Drafting of cease and desist letters  Litigating as first chair copyright infringement cases  Engaging in worldwide copyright protection programs  Preparing licensing agreements and other agreements relating to use of copyrights  Conducting advertising and copy review Franchising:  Drafting and negotiating franchise agreements  Drafting UFOC’s  Registering franchise agreements  Filing exemptions for franchise agreements  Litigating cases on behalf of franchisors and franchisees POSITIONS HELD Office of Lisa N. Kaufman IP Attorney Alexandria, VA 2003-present Dennison, Schultz & Dougherty Of Counsel Arlington, VA 2001-2003 Blank, Rome, Comisky & McCauley Of Counsel Washington, D.C. 1999-2001 Arter & Hadden Of Counsel Washington, D.C. 1997-1999 Heller, Ehrman, White & McAuliffe Special Intellectual Property Counsel Palo Alto, CA 1996-1997 Allen, Dyer, Doppelt, Franjola Associate Orlando, FL 1989-1996 Borden, Inc. Trademark Counsel Columbus, OH 1987-1989 Ralston Purina Company Trademark Attorney St. Louis, MO 1984-1987 U.S.Patent and Trademark Office Trademark Examining Attorney Washington, D.C. 1979-1984 ADDITIONAL EXPERIENCE Instructor of Paralegal Course on Trademark Law and Practice-Santa Clara University, Santa Clara CA-Spring Quarter 1997 PUBLICATIONS Co-Author, Chapter 7 “Trademarks, Service Marks and Other Intellectual Property Rights” of Florida Bar’s Continuing Legal Education Manual on Franchise Law and Practice EDUCATION University of Florida, College of Law, Gainesville, Florida, J.D. 1978 HONORS AND ACTIVITIES: Book Award in Insurance Law, 1977 Honors, Spring Quarters 1976, 1977, 1978 High Honors, Fall Quarter, 1977 Honors, Legal Writing I Student Chairperson and Representative to Law Library Committee Participant in Temple University’s Third Annual Summer Session, Summer 1977 In Jerusalem, Hebrew University Faculty of Law Indiana University, Bloomington, Indiana, B.A. 1975, with Distinction, Near Eastern Languages and Literature, major; Anthropology and Psychology, minors HONORS AND ACTIVITIES: Phi Beta Kappa Indiana University Merit Scholar Alpha Lambda Delta Scholastic Honorary Member Senior Class Council (Campus Relations Committee) Student Representative to Arts & Sciences Policy Committee Member Indiana University Ballet Theatre BAR ADMISSIONS Florida District of Columbia Missouri Virginia COURT ADMISSIONS Federal District Court for the Middle District of Florida Federal District Court for the District of Columbia Court of Appeals for the Federal Circuit