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Advanced Trademark Law 2017: Current Issues


Speaker(s): Elyssa LeFevre Chayo, Hon. Cynthia C. Lynch, Hon. David M. Mermelstein, Jennifer Sheaffer, Jennifer Debrow, Jessie Roberts, Joel Karni Schmidt, Leslie J. Lott, Tsan Abrahamson
Recorded on: May. 11, 2017
PLI Program #: 186437

 Jessie N. Roberts is the lead attorney at Delos, LLC. She is a leading authority on the interpretation of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. Until retiring in 2011, she served as the Administrator for Trademark Identification, Classification, and Practice in the Office of the Assistant Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO).

Ms. Roberts joined the USPTO as an Examining Attorney in 1981 and, in 1984, was promoted to the position of Senior Attorney. In 1987, Ms. Roberts became the Petitions and Classification Attorney in the Office of the Director of the Trademark Examining Groups. In that capacity, she represented the United States in meetings of the Preparatory Working Group and the Committee of Experts for the Nice Agreement that were held at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. She took a two-year leave from the USPTO from 1992 to 1994, during which time she worked for WIPO as the Classification Officer in the International Trademark and Industrial Design Classification Section. Upon her return to the USPTO, she returned to her former job with the new title of Administrator for Trademark Classification, Identification and Practice.

Ms. Roberts received a Bachelor of Arts from Brandeis University in 1972; a Master of Fine Arts from Brandeis in 1974; and a Juris Doctor from Vermont Law School in 1980. She is currently with the law firm of Delos, LLC, and provides consultation in the fields of trademark classification and identification and issues related to prosecution of trademarks in the USPTO.


Jennifer Debrow chairs the firm’s Intellectual Property, Technology & Privacy practice group, focusing her practice on the business and transactional aspects of intellectual property protection. Jennifer has extensive experience counseling clients on domestic and international trademark registration, enforcement and licensing. She regularly assists clients with brand development and provides strategic advice in selecting and protecting trademarks domestically and internationally, including developing global filing strategies to maximize brand protection in an efficient and cost-effective manner. Jennifer advises clients on a wide range of issues related to intellectual property, including software licensing, emerging technologies, internet-related issues, copyright, trade secrets, advertising and promotions, and technology licensing. Jennifer also serves on the firm's Board of Directors.

Jennifer works with clients of all sizes, from entrepreneurial start-ups to Fortune 500 companies, with particular expertise in the trademark selection and brand protection for food and agribusiness companies, including protection of product configuration and trade dress.  Jennifer also maintains strong relationships with foreign counsel all around the world, allowing her to assist clients in global expansion and protection of intellectual property in key jurisdictions.

Bar Admissions

  • Minnesota

Honors and Distinctions

  • Chambers USA: America’s Leading Lawyers for Business, Intellectual Property, 2015-2016
  • “Leading Trademark Lawyer,” World Trademark Review, 2012, 2014-2017
  • “The Top Women Attorneys in Minnesota,” Thomson Reuters, 2016
  • “Minnesota Super Lawyer®,” Thomson Reuters, 2015-2016
  • The International Who’s Who of Trademark Lawyers, 2015
  • “Legal Eagle,” Franchise Times, 2013-2016
  • “Minnesota Rising Star,” Thomson Reuters, 2001-2002, 2005, 2007-2012

Practice Areas

Intellectual Property & Technology

Advertising & Promotions

Franchise & Distribution

Professional Activities

International Trademark Association (INTA)

MARQUES

Education

University of Wisconsin Law School, J.D. and M.A., cum laude, 1997
Wisconsin Law Review, senior note and comment editor

University of Wisconsin, B.A., with distinction, 1992


Jennifer Sheaffer is Vice President, Associate General Counsel for J. Crew Group, Inc., where she focuses primarily on intellectual property, privacy and consumer protection matters.  Jennifer and her team support numerous business groups, including design, brand creative, marketing, public relations, production, store operations and merchandising.

Prior to joining J. Crew nine years ago, Jennifer was in-house IP Counsel for The Donna Karan Company, where she managed enforcement and anti-counterfeit matters for the company.  In her previous life, she worked in arts administration at The Kennedy Center for the Performing Arts in Washington, DC.

Jennifer received her JD from the University of Baltimore School of Law, and her BA from Penn State University.


Leslie J. Lott is a founding partner of Lott & Fischer, an intellectual property law firm, with offices in Coral Gables, Florida.   Ms. Lott is a past member of the Florida Bar Board of Governors.  She has served on the Trademark Public Advisory Committee of the United States Patent and Trademark Office.  She was actively involved with the International Trademark Association for many years, having served two terms on the Board of Directors, and was named to the Panel of Distinguished Neutrals for the Resolution of Trademark Disputes. 

Ms. Lott was named “Lawyer of the Year” in Trademark Law for the Miami area for the 2018 edition of The Best Lawyers in America®, and was named “Lawyer of the Year” in Patent Litigation for the Miami area for the 2017 edition. In 2016, she received the Dade County Bar Association’s Legal Luminary Award.

She was named one of Florida’s Top 50 Female Florida Super Lawyers, and has repeatedly appeared in Florida Super Lawyers magazine in the intellectual property category. She was among the first in the country to be certified as a specialist in intellectual property law, and is past chair of the Intellectual Property Committee of the Florida Bar.  


Elyssa holds a BSBA in International Business from Old Dominion University in Norfolk, Virginia and completed a Trademark Practices Seminar at Birch, Stewart, Kolasch & Birch, LLP in 2007. She has extensive experience managing large, global IP portfolios, having begun her career in IP with TRT Holdings in Las Colinas, Texas, where she managed the trademark portfolios for Gold’s Gym International and Omni Hotels. Elyssa later managed the international trademark portfolio at Collective Brands, Inc. in Topeka, Kansas, parent at the time to such brands as Payless ShoeSource, Stride Rite, Saucony, Keds and others. Elyssa has been involved with the International Trademark Association since 2008 and currently serves on its Building Bridges Committee. She relocated to Brazil in 2011 and took a position with Di Blasi, Parente & Associados managing international business development. Upon returning to the United States in 2014, she opened Firm Forward, LLC and consults independently to foreign IP law firms in the areas of law firm management and efficiency, and business growth.

Languages:

Elyssa is a native speaker of American English and has professional proficiency in Spanish and Portuguese.

Relevant speaking engagements:

November 2016 – AIPLA Webinar Panelist for a program on Cost Effective Trademark Practices

May 2016 – Panelist during the AIPLA Spring Meeting for the program on Cost Effective Trademark Practices

May 2015 – Led a Table Topic at the INTA Annual Meeting in San Diego - Meeting Needs and Managing Expectations for Expanding Trademark Protection in Developing Countries

January, 2015 – Panelist for AIPF program on client engagement (webinar)

July, 2014 – Panelist for GIPC in Washington, DC at their program during The World Cup, addressing anti-counterfeiting measures in Brazil

February, 2014 – Moderated a program at an INTA pre-annual meeting reception in Rio de Janeiro

Relevant publication:

“Law Firm Marketing and Business Development Now.” The Trademark Lawyer. Issue 3 2015.     Pages 29-31. Print.


Joel is a partner at Cowan, Liebowitz & Latman, P.C. and a member of the firm’s Executive Committee.  His practice focuses primarily on intellectual property counseling, protection, and enforcement.  He regularly assists clients with trademark, copyright, domain name, Internet, social media, right of publicity and licensing matters.  He has extensive experience resolving complex problems and disputes, and managing worldwide trademark and copyright programs and proceedings.  Joel also advises clients on anti-counterfeiting and litigation.

Joel has successfully represented an array of lifestyle and fashion companies, hi-tech companies, hotels and restaurants, media companies, wine and food companies, and prominent artists, designers, and entertainers, such as, J. Crew, Warby Parker, Thompson Hotels & Resorts, Wolfgang’s Steakhouse, CME Media Enterprises, Cannonball Wine & Spirits, Fragomen Worldwide, the Israeli Red Cross and the World Wildlife Fund International.

Joel has been mentioned and cited in the Legal 500, the WTR 1000, and other publications.  He is an active member of the International Trademark Association’s Internet Committee and the New York Intellectual Property Law Association’s Trademark Law Committee, and he often speaks, writes, and organizes programs on emerging issues.

Prior to law school, Joel served in the Liason to Lebanon Unit of the Israel Defense Forces.  During law school, he interned at the U.S. Attorneys Office for the Eastern District of New York, and after law school Joel clerked at the Supreme Court of Israel where he worked on landmark cases involving matters of first impression.

Joel is committed to community service.  At his past firm, he successfully represented, pro bono, a Tibetan woman and her three children in their application for asylum.  He currently handles matters on a pro bono basis for several non-profits and participates in Fordham Law School’s Fashion Institute pop-up clinics.

In his free time, Joel enjoys hiking, sking, scuba diving, biking, and spending as much time as he can with his wife as well as his four children who have helped him refine his negotiation skills and inspire him each and every day.


Tsan Abrahamson’s practice focuses on strategic counseling in the areas of social media, sweepstakes, intellectual property, advertising, trademark clearance, trademark and copyright prosecution, licensing, and other business transactions.  She also manages the adverse proceedings practice at the U.S. Patent and Trademark Office Trademark Trial and Appeal Board.  Tsan has an extensive practice in the area of marketing promotions, including social media promotions, gift card and gift certificate marketing, print and online sweepstakes, contests, give-aways, warranties, rebates, and coupon promotions.  Tsan completed her undergraduate work at Dartmouth College, and received both her JD and MBA from the UCLA School of Law and The Anderson Graduate School of Management.


Cynthia C. Lynch currently serves as a judge on the USPTO’s Trademark Trial and Appeal Board. Her other experience at the USPTO includes a stint as the Administrator for Trademark Policy and Procedure and as an Associate Solicitor, and she previously worked at the International Trade Commission as an Attorney Advisor on I.P.-based unfair import investigations and prior to that, as a litigator in private practice.


David Mermelstein is an administrative trademark judge with the United States Patent and Trademark Office, Trademark Trial and Appeal Board. Prior to his appointment as a judge, he served as the TTAB’s managing interlocutory attorney, as an interlocutory attorney, and as a trademark examining attorney. Before joining the USPTO he practiced law in a small general-practice firm. Judge Mermelstein received his B.A. from New College, Hofstra University and his J.D. from the Washington College of Law, American University.