Alison Grabell Once Again Recognized in LADJ’s “Top Portfolio Managers/Patent Prosecutors”

BG Law Partner Alison Grabell was, once again, recognized in Los Angeles Daily Journal’s “Top Portfolio Managers/Patent Prosecutors.”

The full write-up on Top Portfolio Manager Alison Grabell can be found below:

Grabell had another busy year counseling a diverse clientele doing business here and abroad.

She manages the 350-matter trademark portfolio of Ergo Baby Carrier Inc., helping the company expand its trademark protection strategy globally.

For another client, Jerry Leigh of California Inc., Grabell has developed a worldwide registration program for a group of new core trademarks as it embarked on a technology licensing and distribution initiative.

She also supervised outside patent and foreign counsel to enforce Jerry Leigh’s rights, successfully ending certain infringing activity in the European Union.

Whenever possible, Grabell said she tries to avoid litigation by using creative solutions.

In a dispute involving her client, What If Holdings Ltd., a United Kingdom company that develops innovation and marketing-related services, Grabell learned that an Arkansas company was not only using her client’s long-established trademark for the same or related services but had tried unsuccessfully to register the mark.

“We sent a cease and desist letter, but the company on the other side was stubborn,” she said. “Rather than negotiate or settle, they went to court and filed a declaratory judgment complaint, asking the court to rule on who has the trademark.”

The infringer, Grabell said, had “thrown down the gauntlet.”

“Now we had to spend money to defend the mark,” she added. But her client didn’t want to engage in protracted litigation where they had no presence. So they proposed what Grabell called a co-existence and license agreement, allowing the other party to continue to use the mark, but only in a limited geographic area in Arkansas.

“The client was pleased with the result, because it avoided expensive litigation and gave the client control and put money in the client’s pocket,” Grabell said.

Source: Pat Broderick, Los Angeles Daily Journal