In the News

Purvi Patel - Letter to INTA Annual Meeting Attendees

Haynes and Boone is proud to have welcomed the 2013 INTA Annual Meeting to Dallas! We hope you had a great time enjoying our city, and that you had one of the most productive INTA Annual Meetings of your career. >>



Lisa Garono

Of Counsel

Silicon Valley


2033 Gateway Place
Suite 300
San Jose, California 95110
T +1 408.660.4164
F +1 408.660.4264

Areas of Practice

Education

  • J.D., Ohio State University, 1987, with honors; Order of the Coif
  • B.S., Biology, John Carroll University, 1983, Minor in Foreign Affairs

Bar Admissions

  • California
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. District Court for the Northern District of California
Lisa Garono

Lisa Garono is of counsel in the Intellectual Property Practice Group in Haynes and Boone's Silicon Valley office. Her practice focuses on all aspects of soft IP. Lisa has extensive experience in worldwide trademark clearance, portfolio protection, enforcement, anti-counterfeiting, electronic asset protection, Internet marketing law, IP transactional matters, and IP asset acquisitions/divestitures. Lisa has worked with many different client groups including marketing professionals for brand clearance, sales teams for brand leverage and enforcement, and Q&A and security professionals for counterfeiting issues. Having worked in both legal and business environments, she brings a business perspective to legal issues. She can work with clients to craft cost-effective solutions that often utilize business as well as legal components. Lisa has worked with Fortune 500 companies with extensive in-house legal departments and with "shoe-string" start-ups. She served as the Director of IP for Commerce One, Inc. and as Trademark Counsel for Agilent Technologies, Inc. before joining Haynes and Boone.

Recent Publications

  • Comments of the Internet Subcommittee of the INTA on the ICANN UDRP Lock Working Group Survey, September 2012. 
  • "The Big Reveal: ICANN Announces gTLD Applicants and Domains," Client Alert, June 2012. 
  • Comments of the Internet Subcommittee of the INTA on the ICANN Whois Policy Review Team Draft Report, March 2012. 
  • "Why Clearing Trademarks is Important," January 2012. 
  • "Five Rules for Making an Effective Dilution Claim (for EU Lawyers)," Intellectual Property Magazine, October 2011. 
  • "IP and Social Media Issues for Marketing Professionals," Summer 2011. 
  • "Five Hints for Making an Effective Dilution Claim," IP Beacon, April 2011. 
  • "Laying the Foundations for Budget Constrained Brand Protection," BrightTalk Seminar, January 2010.
  • "Tips for Exceptional Customer Service," February 2010. 
  • "Use and Proof of Use of Trademarks at the USPTO," September 2010.
  • "United States Patent and Trademark Office Rules on Deposing Non-U.S. Resident Executives in Trademark Proceedings," Lexology, April 14, 2010.
  • "Dilution after Starbucks Corporation, et al v. Wolfe's Borough Coffee, Inc.," January 2010.

Selected Representative Experience


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.

Memberships

  • ICAAN Working Group for Locking of a Domain Name subject to UDRP process (2012-present)
  • ICAAN Working Group for Proposed Charter for Locking of a Domain Name subject to a UDRP Proceeding PDP Working Group (2012)
  • Whois Subcommittee of Internet Committee, INTA (2008-2009, 2011-present)
  • Association of Corporate Counsel (2003-2009)
  • Trademark Committee, California State Bar (2003-present)
  • Intellectual Property Owners Association (2006-present)
  • Trademark Clearance Subcommittee of Emerging Issues Committee, INTA (2006-2007)

Online Publications

06/14/2012 - The Big Reveal: ICANN Announces New gTLDs and Their Applicants
After several delays, ICANN has published the list of generic top level domain (“gTLD” or “string”) applicants and the gTLDs they have applied for.

01/11/2012 - New gTLD Application Window Opens January 12: What Do Brand Owners Need to Know to Protect Their Brands?
Starting tomorrow, organizations may start submitting applications for new gTLDs (generic Top Level Domains). The application window will close on April 12, 2012.

05/09/2011 - The IP Beacon, May 2011
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

05/09/2011 - Top Five Hints for Making an Effective Dilution Claim

12/17/2010 - FLASH - Supreme Court Does Not Answer Copyright Exhaustion Question in Costco
Earlier this week, the U.S. Supreme Court issued a split decision and failed to resolve whether copyrighted materials legally made abroad can be imported into the U.S. and sold without the express permission of the copyright owner.

10/04/2010 - Hot Branding News, Fall 2010

04/02/2010 - United States Patent and Trademark Office Rules on Deposing Non-U.S. Resident Executives in Trademark Proceedings
A recent ruling should provide some comfort for non-U.S. companies involved in U.S. trademark oppositions or cancellations. The United States Patent and Trademark Office (USPTO) has clarified that companies with no U.S. operations cannot easily be forced to travel to the U.S. for oral depositions.

03/25/2010 - Google AdWords Decision Issued by the European Court of Justice
The European Court of Justice ruled this week that Google did not infringe trademark rights by letting advertisers purchase keywords corresponding to their competitors’ trademarks in Google’s AdWords program.

02/02/2010 - Another Detour? Steer Internet Traffic to Your Sites by Registering .CO Domains
In what may be a new opportunity for cybersquatters, the Colombian .CO registry will soon allow for registration of domain names ending in simply .CO. Such domain names may be a prime platform for social networking sites and brand owners. As the registry explains, the acronym .CO can be associated with terms that include company, corporation, commerce, communities, content, connect, communication, collaborate, and consumers.