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.
Selected Publications and Speaking Engagements
Speaker, “Protecting brands on Social Media,” Fish Trademark and Copyright Webinar, (June 19, 2019).
Moderator, “Getting A Win On E-Commerce Platforms: Successes, Failures & Lessons Learned,” Consero’s Brand Protection & Anti-Counterfeiting Executive Roundtable (March 14, 2019).
Co-author, “Embedding Content is Safe, Right? A Recent Case Says No, Creating Serious Concerns for Websites with Unlicensed Third-party Content,” Fish & Richardson Trademark & Copyright Thoughts Blog (March 22, 2018).
Moderator and Round-table Co-chair, “Brand Infringement On Social Media: Navigating Enforcement Options & Best Practices,” Consero: Brand Protection & Anti-Counterfeiting Executive Roundtable (March 15, 2018)
Presenter, “Empowering Men and Women to Build an Infrastructure that Helps Women Thrive” (December 7, 2017.)
Co-author, “Two Recent Trademark Decisions Provide Ammunition for Trademark Owners Who Receive Improper Specimen Refusals for Service Marks,” Fish & Richardson Trademark & Copyright Thoughts Blog (March 16, 2018).
Co-author, “Drumpf or Trump: The Name Confirmed,” Fish & Richardson Trademark & Copyright Thoughts Blog (June 10, 2016).
Co-author, “Prince in Perpetuity: Preserving a Legacy through Trademarks,” Fish & Richardson Trademark & Copyright Thoughts Blog (April 28, 2016).
Co-author, “Drumpf or Trump: The Name or The Brand?,” Fish & Richardson Trademark & Copyright Thoughts Blog (March 29, 2016).
Presenter, “TTAB Year in Review,” All Hands Meeting (October 29, 2015).
Moderator, “Into the Breach: Identifying and Prioritizing Online Threats,” Consero Brand Protection & Anti-Counterfeiting Executive Roundtable (July 24, 2015).
Moderator, “Investigation and Enforcement Strategies to Counter Evolving Threats to Your Brand and Product,” Consero Brand Protection & Anti-Counterfeiting Executive Roundtable (July 25, 2014).
Moderator, “IP by Design: Protecting Unique Products Using Trade Dress, Patent, and Copyright Law,” Fish webinar (June 4, 2014).
Speaker, “Successfully Positioning Medical Devices for Protection and Approval,” BIOMEDevice Wireless Medical Devices WEST (December 4, 2013).
“Drug Ads and Social Media: A Toxic or Lifesaving Combination?” Pharmaceutical Compliance Monitor, October 4, 2013.
Guest Speaker, “Trademarks Introduction,” University of Santa Barbara (February 11, 2013).
Contributor, World Trademark Review Roundtable, “Protecting your brand in the social media environment,” Issue 39 (October/November 2012).
Speaker, “What Your Business Needs to Know About Copyright – Navigating the DMCA Safe Harbor and Notice and Takedown Provisions,” Fish & Richardson Web Seminar (June 2011).
Speaker, “What Israeli Companies Really Need to Know About IP in the US,” Israel (January 2011).
Speaker, “IP, the New Commodity: Monetizing Your Copyrights and Trademarks,” Corporate Counsel’s IP Trademark, Copyright & Licensing Forum, New York (September 2010).
Author, “Cost-Effective Enforcement Strategies for a Challenging Economy,” The Computer and Internet Lawyer, 27, 6, (June 2010).
Presenter, “Product Life Cycle Management,” Bay Area Pharma and Life Sciences IP Summit (February 2010).
Speaker, PLI’s 15th Annual Institute on Intellectual Property Law, “Cost-Effective Brand Enforcement Strategies for a Challenging Economy,” San Francisco, CA (October 2009).
Speaker, Fish & Richardson and Field Fisher Waterhouse “Hot Topics in New Media,” Silicon Valley and London (2008).
Author, “Moral Ethics,” The Georgetown Journal of Legal Ethics, 12, 3 (Spring 1999).
Federal District Court
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.
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.
Listed in World Trademark Review 1000 for trademark prosecution and strategy in California (2011-2019), and for enforcement and litigation in 2018. WTR 1000 notes that Lisa has a “diverse practice” and “a 100% success rate at the Trademark Trial and Appeal Board (TTAB).” Of her work, one happy client comments: “Timeliness and professionalism are her distinguishing characteristics, and I feel lucky to have her as a partner – she does a wonderful job.”
“IP Star” by Managing Intellectual Property (2013, 2014, 2016, 2017, 2018, 2019, 2020).
California Super Lawyers (2013-2019).
Named a “Women Worth Watching” by Profiles in Diversity Journal (2018, 2020).
The Legal Media Group “Guide to the World’s Leading Trade Mark Law Practitioners” (2018).
Recognized as an “IP Star” by Managing Intellectual Property’s Top 250 Women in IP (2013, 2015).
Recognized as a California Super Lawyer, Top Woman of Law (2013-2015).
Named a “Top 20 Under 40” Attorney by the Daily Journal (2013).
Named one of California’s Top Intellectual Property Lawyers by the Daily Journal (2012).
World Trademark Review 1000 notes that Lisa has a “diverse practice” and “a 100% success rate at the Trademark Trial and Appeal Board (TTAB).” Of her work, one happy client comments: “Timeliness and professionalism are her distinguishing characteristics, and I feel lucky to have her as a partner – she does a wonderful job.”
- IP Licensing, Transactions, and Agreements
- Advertising and Marketing
- Domain Names and Internet
- Trademark Counseling and Prosecution
- TTAB Oppositions and Cancellations
- Digital Millennium Copyright Act
- Transactions and Agreements
- Trademark, Copyright, and Media Litigation
J.D. cum laude, Georgetown University Law Center (1999) Editor-in-Chief, The Georgetown Journal of Legal Ethics
B.A. with honors, Phi Beta Kappa, Phi Kappa Phi, Sigma Iota Rho, Pi Sigma Alpha , Political Science, English, University of Michigan
- California 2001
U.S. District Court for the Central District of California, The Honorable David O. Carter, 1999 - 2000
Intellectual Property Advisory Panel, American Law Institute CLE
Member, International Trademark Association (INTA); 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)
Member of the Board of Directors and Civil Rights Committee, Anti-Defamation League (Spring 2002-current)
American Bar Association
Association of Trial Lawyers of America.
National Association of Women Business Owners (NAWBO)
August 10, 2020
Four Fish & Richardson Principals Named 2020 “Women Worth Watching in STEM” by Profiles in Diversity Journal
August 4, 2020
32 Fish & Richardson Attorneys Named 2020 “IP Stars” by Managing Intellectual Property Magazine
April 10, 2020
Federal Circuit Rules Color Trademarks Can Be Inherently Distinctive, Vacating TTAB
Authors: Jon Jekel, Lisa Greenwald-Swire
March 3, 2020
Fish & Richardson Named Top Trademark Law Firm for 10th Straight Year by World Trademark Review
October 10, 2019
Protecting Brands on Social Media
Author: Lisa Greenwald-Swire
September 10th, 2019 | 7:30 am PDT
MedtechWomen: MedtechVision 2019
June 24, 2019
Deadline for Existing Registrants to Claim .uk Domain Extension Approaches
May 22, 2019
Fish & Richardson Announces 32 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine
June 19th, 2019 | 1:00 pm EDT
Trademark & Copyright Webinar: Protecting Brands on Social Media
June 13th, 2019 | 6:00 pm PDT
OneJustice: Opening Doors to Justice
March 14th, 2019 | 8:30 am PDT
Consero: Brand Protection & Anti-Counterfeiting Executive Roundtable
February 21, 2019
Fish Named Top Trademark Law Firm for Ninth Straight Year by World Trademark Review