Lisa A. Ferrari

Member

: New York
277 Park Avenue
New York, New York 10172
P: (212) 297-2699
TF: (888) 864-3013
F: (646) 588-1459

Lisa A. Ferrari

Lisa is a member of the firm’s Intellectual Property Group, practicing out of the firm’s New York office. Lisa joined Cozen O'Connor in 2011 after previously practicing intellectual property law at Cohen, Pontani, Lieberman & Pavane LLP in New York.

Lisa litigates trademark, copyright, and patent infringement actions in U.S. federal courts. In addition to her litigation practice, Lisa maintains an active trademark protection and enforcement practice, advising clients in a variety of fields including apparel, food and beverage products, jewelry and accessories, dental products, housewares, and electronics and computer products. Lisa also prosecutes trademark applications and represents clients in trademark cancellation and opposition proceedings in the U.S. Patent and Trademark Office.

Lisa has experience drafting agreements and negotiating settlements in areas involving licensing, royalties, assignments, liens, trademark co-existence, comparative advertising, and the seizure of counterfeit goods. She has also advised clients on matters such as breach of contract, covenants not to compete, and confidentiality obligations. Lisa also handles matters relating to copyright registration and practice.

Lisa obtained a B.A. from Brown University in 1986 and a J.D. from New York University School of Law in 1990.

Experience

Served as lead counsel to well-known retailer of women's clothing in bringing cybersquatting claim under Lanham Act. Obtained summary judgment in client's favor, resulting in award of statutory damages, attorney fees, costs, sanctions and transfer of infringing domain name. Subsequently argued appeal in Fourth Circuit, obtaining affirmance on all grounds.

Served as lead counsel to vacuum tube manufacturer in opposition proceeding in Trademark Trial and Appeal Board. Obtained summary judgment in client's favor on issue of priority of use, resulting in dismissal of opposition and global settlement assigning worldwide marks to client.

Advises well-known restaurant and hospitality group on issues relating to trademark portfolio, including prosecution of trademark applications, assessment of infringement issues, and development of trademark strategy.

Obtained an Order from U.S. Immigration Court withholding removal from the U.S. of pro bono client from Zimbabwe who had been kidnapped and beaten as the result of his membership in a political group opposing dictator Robert Mugabe.

Won a judgment of non-infringement of multiple patents directed toward vehicular tilt control apparatuses on behalf of a German auto parts maker. These judgments were affirmed by the U.S. Court of Appeals for the Federal Circuit, which agreed with our arguments that intrinsic evidence and the prosecution history supported the district court's constructions of the claim terms at issue and finding of non-infringement based thereon.

Prevailed in an arbitration in which we represented a manufacturer of fire door systems that terminated an agreement under which it assisted a U.K. company in entering the U.S. market and became the exclusive licensee in the U.S for that company's products. The client terminated the agreement when the company was sold and the buyer engaged in conduct detrimental to the client, in breach of the agreement, including sharing its confidential information with a competitor. We overcame the claimant's demand for a declaration that it was not in breach of the agreement, and succeeded on a counterclaim for a declaration that the claimant was in breach and for damages.

Successfully moved to dismiss a declaratory judgment action filed against our California-based client in federal court in New York by a New York company with which the client had entered into a licensing agreement. The plaintiff filed the action after our client raised concerns that the plaintiff had breached the agreement, pursuant to which the plaintiff was to market her knitting and weaving hand loom tools in craft stores in exchange for royalty payments. We successfully moved to dismiss for lack of personal jurisdiction and improper venue, overcoming the plaintiff's arguments that a New York choice of law provision and a license for the sale of the client's products nationwide established the requisite minimum contacts.

Publications

Events & Seminars

Trademark Infringement: Crafting Your Best Defense	Webinar	08/22/2018
CITMA Webinar - USPTO: an update on US trade mark applications and TTAB proceedings	Webinar	04/11/2018