Overview

Lisa Greenwald-Swire helps companies of all sizes to develop, protect, and maintain their trademark portfolios, both within the U.S. and around the world. Her practice focuses on prosecution and counseling, including brand strategy, strategic portfolio development, and licensing. Throughout her career, she has overseen the diligence on billion-dollar acquisitions, represented trademark holders in hundreds of Trademark Trial and Appeal Board matters, managed thousands of global trademarks, and helped innovative start-ups develop their portfolio strategies. A leader within the firm, Lisa serves as the head of the Silicon Valley office trademark and copyright practice group and an elected member of the firm’s management committee.  

Lisa has extensive experience handling global enforcement programs and opposition and cancellation proceedings before the TTAB. She has managed numerous trademark and copyright infringement matters in U.S. district courts, including against large, well-known opponents such as Nintendo of America, Turner Entertainment, and Monster Energy.

Lisa has also worked on over 300 TTAB cases with an impressive record of success, and she has successfully resolved numerous domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy. In addition, Lisa advises clients on issues related to advertising claim substantiation, false advertising, social media strategy, rebranding, and licensing agreements.

Lisa has served as an experienced counselor in numerous major transactions, including her oversight of the diligence behind the 2021 acquisition of a $10 billion semiconductor company. She also manages thousands of trademarks globally for companies ranging from start-up ventures to multi-billion-dollar multinationals.

Lisa 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 of the U.S. District Court for the Central District of California (1999-2000). She also clerked for Judge John E. Munter of the city and 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. Court of Appeals for the District of Columbia Circuit (1995).

Lisa writes extensively on current trademark issues. She also teaches a course on trademark strategy and trends at the University of California, Santa Barbara.

Experience

Manages over 1,000 trademark filings for digital entertainment company Playtika, and defends the company in numerous trademark oppositions, including in disputes with Nintendo of America, Monster Energy, and Turner Entertainment.

Served as counsel for Marvell Semiconductor Inc. in support of two high-profile, billion-dollar acquisitions of innovative companies in the semiconductor industry. Fish performed the trademark and copyright diligence behind Marvell’s $10 billion acquisition of Inphi Corporation as well as the $1.1 billion acquisition of Innovium, Inc., both of which were completed in 2021. Fish continues to manage over 2,000 trademarks globally on behalf of Marvell.

Playtika v. Playtronica Oue – Successful negotiation of agreement and limitation of other side’s PLAYTRONICA application

Marvell v. MixMarvel – USPTO acceptance of our letter of protest and successful negotiation of a co-existence agreement and limitation of the opposing side’s filings.

On behalf of semiconductor manufacturer Marvell, conducted a successful negotiation of a co-existence agreement and limitation of the opposing side’s filings.

Marvell, Inc. v. LEYFA Measurement SAS – Successful negotiation and limitation of other side’s filing and letter of undertaking.

U.S. District Court cases

Pro Shore LLC v. Dayton Superior Corp. – Represented Dayton Superior Corp. in a trademark infringement suit filed in the Northern District of California. Obtained Dismissal with Prejudice for the client.

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.

TTAB cases

Playtika v. Lotum One GmbH – Successful opposition against WORDBLITZ application

Blisslights, LLC v. Shanzhen Nanxin Technology – TTAB order granting judgment by default in BlissLights’ favor against Shenzhen Nanxin Technology Limited.  Accordingly, Nanxin’s application for registration of the STAR PROJECTOR mark was refused.

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. 

US TTAB Opposition v. Armada USA – Enforced trademark rights for Marvell Technology Group, Inc. and settled a US TTAB Opposition v. Armada USA, regarding Marvell’s registered ARMADA mark adverse to Armada’s A ARMADA & Design trademark application. Resulting in a favorable settlement agreement for Marvell, and abandonment of the Armada USA’s mark for A ARMADA & Design.

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

UDRP cases

Successful UDRP on behalf of semiconductor manufacturer Marvell in regards to the MARVELL.INFO domain name.

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.

Testimonials

"Lisa is a fantastic lawyer who understands the commercial impact of her work." — Client Testimonial, 2022 Chambers and Partners USA

"Timeliness and professionalism are her distinguishing characteristics, and I feel lucky to have her as a partner – she does a wonderful job." — Client Commentary

Professional associations

  • American Law Institute CLE, Intellectual Property Advisory Panel
  • International Trademark Association (INTA), Emerging Issues Committee (2022-2023), Internet Committee, Online Trademark Use Subcommittee (2014-present), Famous & Well-Known Marks Committee, North America Subcommittee (2010-2013), Internet Committee (Fall 2006-2009), Alternative Dispute Resolution Committee (Spring 2002-Fall 2006)
  • Anti-Defamation League, Board of Directors and Civil Rights Committee (Spring 2002-present)
  • American Bar Association
  • Association of Trial Lawyers of America
  • National Association of Women Business Owners (NAWBO)