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Lowenstein Sandler LLP

Vanessa A. Ignacio

Vanessa A. Ignacio

Partner
Chair, Trademarks, Copyrights & Trade Secrets

Lowenstein Sandler LLP
New Jersey, U.S.A.

tel: 973.422.6426
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Local Time: Fri. 09:01

Profile

Vanessa's practice blends science and art to prosecute and enforce trademarks for a diverse group of clients. While her advice to companies on the clearance, development, maintenance, and enforcement of trademarks is scientifically precise, she has proven herself an effective and artful negotiator with trademark examiners.

Clients from industries such as technology, pharmaceuticals, life sciences, and consumer goods benefit from Vanessa's extensive experience in crafting successful trademark applications. Should an application be rejected, Vanessa has a stellar track record of overcoming agency objections with substantive responses that ultimately secure her clients' marks.

Vanessa routinely manages trademark portfolios–from brand selection to clearance and registration to licensing, maintenance, and enforcement–and thousands of marks for hundreds of clients. Highly experienced in all aspects of enforcing brands online, she has an impeccable record of success in fighting off cybersquatters–third parties that illegally use marks on a website or in a domain name.

When it comes to confronting third parties that apply for marks that resemble her clients', Vanessa has been equally successful in handling opposition and cancellation proceedings before the United States Patent and Trademark Office (USPTO) and in managing contested proceedings in jurisdictions around the world.

While Vanessa's proactive approach often helps clients avoid the delays and disruption of a court case, she also provides strategic counsel if litigation becomes necessary.

Bar Admissions

    New York
    New Jersey

Education

Benjamin N. Cardozo School of Law (J.D. 2000), cum laude; Notes and Annotations Editor, Cardozo Online Journal of Dispute Resolution
Rutgers, The State University of New Jersey (B.A. 1995), with highest honors
Areas of Practice
Professional Career

Significant Accomplishments

Managed the global Merck Consumer Care trademark and copyright portfolio consisting of more than 5,000 matters from April 2012 until the sale of the Consumer Care Division to Bayer AG in October 2014. Handled all aspects of trademark and copyright clearance, counseling, procurement, prosecution, and enforcement for marquee brands such as Coppertone, Claritin, and Afrin. Coordinated with all applicable business functions, including marketing, packaging, regulatory, claims, medical, and supply to bring products to market and meet company objectives. Drafted licensing, social media marketing, and endorsement agreements. Successfully lodged dozens of trademark oppositions, cancellations, and domain name dispute cases against third-party infringers.

Successfully appealed refusals by the United States Patent and Trademark Office to secure federal trademark registration for the Claritin Peel Device, the animated screen used extensively to advertise and promote the Claritin brand. This trademark application presented numerous substantive challenges, including a determination by the USPTO that the Claritin Peel did not function as a trademark (a most difficult basis for refusal). Traversed the USPTO refusals and secured a rare "motion mark" registration through extensive written arguments and evidence, lending another layer of protection to the intellectual property relating to the marquee Claritin brand.

Current global trademark and copyright counsel for Bayer's Consumer Care portfolio consisting of more than 5,000 matters for marquee brands such as Coppertone, Claritin, Afrin, Dr. Scholl's, MiraLAX, and Tinactin.

Conducted extensive trademark diligence and provided logistical support in the sale of the Merck Consumer Care Division and its coveted portfolio of well-known brands during a seven-month bidding and transaction closing process.

Resolved oppositions lodged in multiple jurisdictions against a global drug delivery and development client's newly launched brand used for a key in-licensed bioscience technology. Employed an aggressive defense, resulting in a favorably negotiated settlement that avoided protracted litigation proceedings, preserving all rights in the client's brand name.

Represent PSE&G in the creation and implementation of a successful domain name enforcement strategy to combat rampant cybersquatting.

Devised multi-pronged strategy to overcome trademark registration and use obstacles, defeating squatters to clear a path to registration for urgent consumer product launch in China and Hong Kong. Efforts included trademark agency appeals, cancellation actions lodged against infringers, domain name acquisitions, and administrative raids of warehouses containing counterfeit goods.

Represented multinational pharmaceutical company in dozens of contested trademark proceedings in territories around the world, successfully preventing registration of infringing third-party trademarks.

Successfully lodged dozens of domain name dispute complaints for Merck to protect against infringement and deceptive uses of signature company brands.

Represented CBS in a trademark opposition proceeding before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office against A&E Networks in connection with the landmark CSI television series' trademarks.

Represented Target Brands in connection with extensive program to clear use of an improperly registered descriptive term, preventing competitors from obtaining trademark registrations that could impede a key branding scheme for high-revenue apparel line.

Speaking Engagements

Continuing our support for women in the law, we are proud to be a Diamond Sponsor of the 2017 Women, Influence & Power in Law Conference (WIPL). WIPL's objective is to accelerate the empowerment of women in law departments and law firms while bringing together female power players within the legal industry. Three Lowenstein partners will be leading panels at this year's conference. On October 11, Vanessa Ignacio will moderate the panel "Trademark Audits: Protecting Value & Innovation for Your Brands." On October 12, Lynda Bennett will moderate the headline panel "How Leading GC's are Managing Risk, Engaging Stakeholders and Expanding Influence," and Cathy Serafin will moderate "Developing a Healthy Appetite for Risk." To learn more about the WIPL conference, click here.



Professional Associations

International Trademark Association
  • Emerging Issues Committee, 2014 – present
  • Internet Committee, Internet Governance Sub-Committee, Domain Name Sub-committee, 2010 – 2014
  • Contributing Author, 2000 – present
Pharmaceuticals Trademark GroupNew Jersey Women Lawyers AssociationPast Member, Board of Trustees, Verona Foundation for Educational ExcellenceMember, Impact 100 Garden State


Professional Activities and Experience

Accolades
  • World Trademark Review - (2012-2019) - Vanessa Ignacio
  • Expert Guides – Trade Marks (2017-2018) - Vanessa Ignacio
  • Client Choice Awards 2017 - Ignacio
  • Tribute to Women and Industry (TWIN) Award Honoree - YWCA Union County - 2015
  • Chambers USA - Ignacio
  • Rising Star - Super Lawyers - 2009

Blogs

Capital Markets Litigation
Lowenstein Sandler LLP 

Litigation News for the Global Financial Community

Articles

    Despite Consent Agreement, Trademarks for Craft Beer Too Similar for Registration, September 26, 2016
    Entertainment Industry Recognizing Benefits of Mediation, Winter 2000
    Federal Circuit Relaxes Fraud Standard for Trademark Owners, January 4, 2010
    If Your Business Has a Web Site, It Needs a Privacy Policy, May 2001
    Intellectual Property Alert: Get Ready for the Age of Dot.Anything on the Internet, June 2011
    Intellectual Property Alert: How to Protect Your Brand in the .XXX Domain Name Extension, June 2011
    Louboutin Wins Its Trademark Validity Battle but Loses Its Trademark Infringement War, September 10, 2012
    Louboutin's Challenge: Can One Fashion Designer ‘Sole-ly’ Trademark a Color for Well-Heeled Shoes?, March 2012
    Napster’s Swan Song?, February 5, 2001
    Social Media Sites' Infringement Remedies Another Reason to 'Favorite' Trademark Registration, August 3, 2016
    The Anticybersquatting Consumer Protection Act: A Necessary Evil or an Evil Blow Against Internet Culture?, May 2000
    To Sue or Be Sued for Statements Made via the Internet, October 11, 2002
    Trademark Law in China to Receive a Much-Needed Upgrade, September 17, 2013

WSG's members are independent firms and are not affiliated in the joint practice of professional services. Each member exercises its own individual judgments on all client matters.

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