Lisa Congleton is an associate in the Intellectual Property, Trademark, and Social Media Practice Groups. She focuses her practice in the area of intellectual property law, where she concentrates on all aspects of trademark and copyright law.
Lisa’s experience counseling Fortune 100 companies as well as emerging businesses informs her flexible and creative approach to brand management, tailored to meet each client’s unique business objectives. She conducts international trademark clearance searches and trade dress review prior to a product’s launch, both to assess infringement risks and to develop a trademark protection and registration strategy, and manages the prosecution and maintenance of clients’ portfolios of intellectual property assets.
Mindful that enforcing her clients’ rights in those assets against infringement is essential to brand management, Lisa utilizes sensible enforcement strategies, ranging from urging business-minded resolutions to litigating her clients’ rights in federal court and the U.S. Trademark Trial and Appeal Board.
Lisa’s keen understanding of the creative process is essential to how she approaches copyright counseling and enforcement. She recognizes that counseling clients on copyright issues requires that authors’ personal connections to their creative works be taken into account. This means crafting agreements to avoid ownership conflicts at the outset, developing practical solutions when conflicts do arise, and, if necessary, litigating ownership and infringement matters to protect her clients’ rights.
Her experience extends not only to traditional trademark and copyright concepts, but also to emerging branding and content-sharing issues – especially with respect to domain names, mobile device apps, and social media – which play a role in virtually all aspects of trademark and copyright law, whether it be counseling clients regarding securing their brands’ rights in the latest social media outlet or leveraging administrative “notice and takedown” and domain name recapture procedures to tackle infringement from all angles.
- Developed, implemented, and manages a comprehensive enforcement program addressing all aspects of online infringement, including domain names, social media websites, smart phone apps, blogs, and keyword advertising for a leading global brand
- Managing international trademark portfolios for leading, global brands
- Negotiating and drafting intellectual property acquisition and licensing agreements, as well as entertainment law contracts
- Represented a recording artist in the negotiation of management and recording agreements and in disputes relating to ownership of the artist’s creative works
- Trademark and copyright clearance, prosecution, and enforcement for established and emerging companies
- Maintaining and enforcing clients' trademark rights through opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board
- Protecting clients' trademark rights through Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings
- Representing plaintiffs and defendants in copyright and trademark infringement lawsuits
- Worked with a leading trademark survey expert on the design and implementation of a consumer survey designed to measure the likelihood of confusion between two trademarks for use in a trademark infringement lawsuit.
- Crafted a trademark coexistence agreement affecting the parties' rights to use and register trademarks throughout the world in connection with retail consumer goods in order to settle a trademark infringement lawsuit.
- Represented a leading pharmaceutical company in a trademark cancellation proceeding and obtained summary judgment defeating the plaintiff's trademark abandonment claim.
Selected Publications and Speeches
- "Business Issues for Artists!" panelist, Texas Accountants and Lawyers for the Arts, Dallas, TX, May 15, 2012.
- "When 'Domain Name Disputes' Are Just Bogus Solicitations," co-author with Jeffrey M. Becker, The IP Beacon, May 2011.
- "Brand Owners Weigh In on Google AdWords Appeal," co-author with Jeffrey M. Becker, TechLaw, February 2011.
Selected Representative Experience
Sköld v. Galderma Laboratories, Inc. (U.S. Trademark Trial and Appeal Board)
Represented Galderma Laboratories in a trademark cancellation proceeding. Obtained summary judgment defeating the plaintiff's trademark abandonment claim.
Global Trademark Coexistence Agreement
Crafted a trademark coexistence agreement affecting the parties' rights to use and register trademarks throughout the world in connection with retail consumer goods in order to settle a trademark infringement lawsuit.
Trademark Expert Survey Evidence
Worked with a leading trademark survey expert on the design and implementation of a consumer survey designed to measure the likelihood of confusion between two trademarks for use in a trademark infringement lawsuit.