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Lisa M. Martens

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Office: Southern California
Phone: 858 678-4729
Email: martens@fr.com



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Practice areas
Intellectual Property Litigation
New Media and Entertainment
Copyrights
Copyright Litigation
Trademarks
Trademark Litigation
Appellate
 
Technology areas
Life Sciences
Internet
Semiconductors
Telecommunications
Sporting Goods
 
Education
Cornell College B.A. Politics and Philosophy 1990 magna cum laude
DePaul University College of Law J.D. 1994 Order of the Coif

Professional experience
Lisa Martens is a Principal in the Southern California office of Fish & Richardson P.C. Her practice emphasizes trademark prosecution and litigation for the food service, health care, biotechnology, computer, Internet, and retail clothing industries. Ms. Martens has significant experience in managing U.S. and foreign trademark portfolios for large international companies. Her internet work includes handling domain name disputes and securing domain names in the U.S. and worldwide, as well as providing advice on legal requirements for conducting online sweepstakes and promotions. Ms. Martens' practice also includes licensing intellectual property and litigation relating to trademarks, copyrights, trade secrets, and false comparative advertising.

Litigation examples
BBU, Inc. et al v. Sara Lee Corporation, et al. (2009) Successfully represented BBU in a trademark infringement and unfair competition action relating to its SANDWICH THINS trademark. Obtained a preliminary injunction enjoining Sara Lee's sale of a competing bread product under the THINS mark. Decision affirmed on appeal by the 9th Circuit Court of Appeals.

Buzztime Entertainment, Inc. v. Sony Computer Entertainment America, Inc. (2008) Currently representing Buzztime Entertainment in a trademark infringement and unfair competition action relating to its BUZZTIME trademark.

Cricket Communications, Inc. v. HipCricket, Inc. (2007) Lead counsel for Cricket Communications in a trademark infringement, dilution, unfair competition, and cybersquatting action relating to its CRICKET trademark. Obtained a favorable settlement through mediation shortly before trial.

Apple, Inc. v. Podfitness, Inc. (2006) Represented Apple in a trademark infringement and dilution action relating to its IPOD trademark. Obtained a consent judgment and permanent injunction on behalf of Apple.

NeilMed Products, Inc. v. Med-Systems, Inc. (2006) Lead counsel for Neilmed in a trademark declaratory judgment action relating to nasal irrigation products. Negotiated a favorable settlement for the client after formal mediation and limited discovery.

Scantron Corporation v. Lincolnshire Printing, Inc. (2006) Lead counsel for Scantron in a patent, trademark, trade dress and copyright action relating to its scannable test forms. Negotiated a favorable settlement for the client.

Phil Mickelson v. Graphite Design, Inc. (2005) Local counsel for Phil Mickelson in right of publicity case relating to the unauthorized use of Mr. Mickelson's identity. The case was successfully resolved for the client.

U Inc. v. CompUSA et al. (2005) Lead counsel for U. Inc. in a trademark infringement action. Negotiated a favorable settlement for the client.

Callaway Golf Co. v. Akribis Golf Company (2005) Represented Callaway Golf in trademark declaratory judgment case against Akribis involving the name of a golf putter. Akribis’ claims were voluntarily dismissed with prejudice.

Who's Ya Daddy, Inc. v. Who's Your Daddy, Inc. (2005) Lead counsel for Who’s Your Daddy, Inc. in a trademark infringement case involving use of the trademark WHO'S YOUR DADDY on clothing and other items. Negotiated a settlement all claims.

Beme International, LLC v. Kaminstein Imports, Inc. (2005) Lead counsel for Beme International in a trademark declaratory judgment case brought by Beme in California and in defending a separate trademark infringement case brought by Kaminstein in New York, both involving the CASABELLA trademark for home décor items. Negotiated an early settlement and all claims were dismissed with prejudice.

Penn Fishing Tackle Manufacturing Company, Inc., v. Prographics Screenprinting, Inc. (2005) Lead counsel for Penn Fishing in a trademark infringement case regarding the use of Penn's trademarks and logos on clothing and on a competing website. Negotiated a favorable settlement for the client.

TIBCO v. Apple (2003) Represented TIBCO Software, Inc. in litigation over the RENDEZVOUS trademark used in connection with computer software products. Case was successfully resolved.

Red Bull GMBH v. Vancol Industries, et al (2003) Lead counsel for Vancol Industries and five other defendants against Red Bull in a trademark infringement case involving energy drinks. Negotiated a favorable settlement for all clients.

Selected publications
"Shapes, Sounds and Smells," with Alexander Garcia, Trademark World, (November 2009).

"A New Standard for Fraud," with Alexander Garcia, Trademark World, (November 2009).

"Trademark Registration and Fraud: Avoiding the Consequences of Committing Fraud on the United States Patent and Trademark Office," with Alexander Garcia, Trademark World, (September 2009).

"Is a video game entitled to First Amendment protection?," with Alexander Garcia, Sports Business Journal, (October 26, 2009).

"Initial Interest Confusion After Brookfield - Can courts protect trademark owners without going overboard?," Daily Journal, July 9, 2007

"Chasing Pirates - Developing an anti-counterfeiting strategy," Daily Journal, January 2, 2007

"Another Type of Identity Theft," San Diego Daily Transcript (May 14, 2005).

"From Health Care to Hot Tubs to Halters: Fish & Richardson's Trademark Practice Hit the Mark," San Diego Daily Transcript (August 5, 2004).

"Selecting Strong Trademarks," Sports Edge Magazine (April 2004).

"Cases of Counterfeits and Copyrights," San Diego Metropolitan (November 2003).

"Debunking Common Myths about Trademarks and Copyrights," San Diego Daily Transcript (August 7, 2003).

"FDA and the Pharmaceutical Name Game," with Keith A. Barritt, San Diego Daily Transcript (May 1, 2003).

Bar admissions
Admitted to the bar in California, and the United States District Courts for the Northern, Eastern, Central and Southern Districts of California.

Additional information
Member: International Trademark Association, American Bar Association, California Bar Association, San Diego Intellectual Property Law Association.
Listed in Who's Who for Trademark Attorneys 2009 and 2007. Named a San Diego Super Lawyer, June 2009. Listed in "The Legal 500 US IP" of top law firms and lawyers in the area of Trademark. Named by San Diego Metropolitan Magazine as one of "San Diego’s 40 Young Leaders Under 40," September 2007. Named by San Diego Daily Transcript as one of "San Diego's Top Attorneys, " July 2009. Finalist, San Diego Business Journal's 16th Annual Women Who Mean Business Awards, 2009.