Lisa Greenwald-Swire is a Trademark and Copyright Principal in the Silicon Valley office of Fish & Richardson. Her practice focuses on global trademark counseling and prosecution including brand strategy, strategic portfolio development, licensing, and trademark rights on the Internet. Ms. Greenwald-Swire also has extensive experience handling global enforcement programs and opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). She has managed numerous trademark and copyright infringement matters in federal district court and has successfully resolved domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Lisa has worked on numerous Trademark Trial and Appeal Board cases with a 100 percent success rate. All of the matters she has been involved with have either successfully negotiated settlement agreements or resulted in abandonment of the adverse mark. In addition, Ms. Greenwald-Swire advises clients on issues related to advertising claim substantiation, false advertising, social media strategy, and licensing agreements.
Ms. Greenwald-Swire was named one of the Top 250 Women in IP and an IP Star by Managing Intellectual Property and a Top 20 Under 40 Attorney by the Daily Journal (2013). She has also been recognized in the World Trademark Review 1000 for California Trademark Prosecution and Strategy since its inaugural issue in 2011.
Previously she clerked for The Honorable David O. Carter in the United States District Court for the Central District of California (1999-2000). Ms. Greenwald-Swire also clerked for Judge John E. Munter of the City & County of San Francisco Superior Court (1997), was a Legal Assistant at the Office of the Corporation Counsel in the Civil Division (1993, 1995-1996), and was a Reader and Assistant to Judge David Tatel of the U.S. District Court of Appeals, D.C. Circuit (1995).
Lisa writes extensively on current trademark issues including recent pieces regarding Donald Trump and Prince. Ms. Greenwald-Swire teaches a course on trademark strategy and trends at the University of California, Santa Barbara.
Federal District Court
Sheex Inc. v. BedGear LLC – 1:14-cv-01380-LPS – Represented Sheex, Inc. a company that specializes in bedding and nightwear made from “performance” fabrics. She assisted Sheex in the counterclaim complaint by its competitor Bedgear for infringement of their trademarks. In Bedgears answer, Defendant Bedgear denied infringement of Sheex Patents and brought Counterclaims against Sheex for trademark infringement of Bedgear’s PERFORMANCE-formative marks, among others. Through patience and a lot of hard-fought negotiation, a settlement was reached.
Car-Freshner Corporation et al. v. TD Auto Finance LLC – Represented TD Auto Finance, LLC in trademark infringement case brought by Car-Freshner Corporation regarding distributed advertisements in the shape of trees. Obtained favorable settlement for the client.
K2 Intelligence, L.L.C. et al. v. K2 Advisors, L.L.C. et al. – Represented K2 Advisors in a declaratory judgment action related to K2 Intelligence’s use of K2 INTELLIGENCE for its business services. Obtained favorable settlement for the client.
Josh Agle Inc. v. American Greetings Corporation – Represented defendant American Greetings in a copyright infringement suit filed in the Central District of California. Obtained a favorable settlement for the client.
Aliphcom v. Bose Corporation – Represented defendant Bose in a declaratory judgment suit filed in the Northern District of California, involving trademark infringement relating to use of Bose’s WAVE® mark. Obtained a favorable settlement for the client.
San Francisco Technology, Inc. v. Solgar, Inc. – Represented defendants NBTY, Inc. and Solgar, Inc. in this false marking patent case filed in the Northern District of California. Obtained a favorable settlement for the client.
Reason Foundation v. The Reason Project – Represented The Reason Foundation, a well-known non-profit organization promoting libertarian principles, in a trademark infringement and unfair competition action relating to the use of the REASON mark by The Reason Project, a non-profit organization promoting secular values. Obtained a favorable settlement for the client.
Gilead Sciences, Inc. vs. Intarcia Therapeutics, Inc. – Enforced trademark rights regarding Gilead’s TRUVADA mark adverse to Intarcia’s ZAVADA mark. Resulting in a favorable settlement agreement for Gilead, and abandonment of the ZAVADA trademark application.
Franklin Resources, Inc. v. AF Holdings, L.P. – Represent Franklin Resources, Inc. in opposition to application to register FRANKLIN SQUARE CAPITAL PARTNERS – case pending
eHarmony, Inc. v. InqHire Corporation – Represented eHarmony, Inc. in opposition to application to register JOBHARMONY. Case resolved on summary judgment for eHarmony, Inc., opposition was sustained, and JOBHARMONY application was rejected.
Computer Geeks, Inc. v. COMPGEEKS.COM – Represent COMPGEEKS.COM in opposition to application to register COMPUTER GEEKS – case pending
eHarmony Inc v. Brett Donovan – Represented eHarmony, Inc. in domain name dispute involving the domain name. Obtained favorable panel decision transferring domain to eHarmony, Inc.
eHarmony Inc. v. Errol Scarlett – Represented eHarmony, Inc. in domain name dispute involving the domain. Obtained favorable panel decision transferring domain to client.
Fish Trademark & Copyright Thoughts Blog
June 7, 2017
World Trademark Review: WTR Industry Awards 2017
Authors: Kristen McCallion, Cynthia Johnson Walden, Lisa Greenwald-Swire, R. David Hosp
June 14th, 2017 | 11:15 am PDT
Equal Rights Advocates 2017 Gala Luncheon
May 23rd, 2017 | 6:00 pm EDT
World Trademark Review: WTR Industry Awards 2017
March 9th, 2017 | 8:15 am PST
Consero 2017 Brand Protection & Anti-Counterfeiting Roundtable
January 25, 2017
Fish & Richardson Named Top Trademark Law Firm for Seventh Straight Year by World Trademark Review
October 6th, 2016 | 2:15 pm PDT
Brand Monetisation: The Legal and Licensing Perspective
October 28th, 2015 | 8:00 am PDT
27th Annual All Hands Meeting
July 24th, 2015
Consero 2015 Brand Protection & Anti-Counterfeiting Executive Roundtable
November 12th, 2013
2013 International Trademark Association (INTA) Leadership Meeting
June 4th, 2014
IP by Design: Protecting Unique Products Using Trade Dress, Patent, and Copyright Law
July 25th, 2014
Consero 2014 Brand Protection & Anti-Counterfeiting Executive Roundtable
June 15th, 2011
What Your Business Needs to Know About Copyright: Navigating the DMCA Safe Harbor and Notice and Takedown Provisions