Nadine H. Jacobson

Few U.S.-based lawyers know more about global trademark strategies and managing global trademark conflicts than Nadine Jacobson, who has searched, cleared for use, and prosecuted for registration thousands of trademarks of all types globally. Nadine has also litigated and defended hundreds of international Opposition and Cancellation proceedings as well as infringement actions around the world. She registers and defends design patents and industrial designs in various countries, including those protected by the Hague Treaty, as well as those filed nationally. Nadine has also advised on dozens of acquisitions and divestitures in which the trademark and copyright assets were either the primary or crucial aspect of the overall transaction.

When the U.S. joined the Madrid Protocol in 2003, Nadine not only chaired the PLI seminar on this important development, but also spoke at numerous seminars arranged by legal trade associations such as the AIPLA and INTA, explaining to U.S. practitioners how the Madrid Protocol works. Most recently, she has been advising Canadian practitioners in advance of their impending accession to the Madrid System. She chaired the INTA Subcommittee on the Madrid Protocol and continues to work closely with both practitioners and WIPO personnel to enhance the Madrid Protocol and encourage its wider use.

Nadine’s knowledge of the Paris Convention, the TRIPS Agreement, and the Berne Convention is equally comprehensive, and she is frequently asked to speak and advise on various aspects of these IP treaties. Indeed, early in her career, WIPO invited Nadine to speak at its 1997 Asian regional conference to advise government officials in developing countries as to how they must amend their national laws to comply with the TRIPS Agreement, including enhanced protection for Well-Known Marks and for Geographic Indications. Most recently, Nadine has been hired by a U.S. multinational law firm to serve as an expert witness on various aspects of trademark law in an international arbitration.

Nadine’s in-depth understanding of IP treaties, national trademark laws, and the related enforcement procedures of dozens of foreign jurisdictions informs her strategic advice to trademark owners from both the U.S. and other countries, including the EU, Japan, China and many others. In addition to her clearance, prosecution, and enforcement work, Nadine conducts IP portfolio audits, investigations, and due diligence. She also provides additional transactional support by negotiating and drafting IP-related agreements, including licenses, assignments and global consent and coexistence agreements as well as the IP-related provisions of Asset and Stock Purchase agreements.

Nadine represents both startups and established companies across a broad range of industries including pharmaceuticals, apparel, jewelry, cosmetics, watches, consumer health products, medical devices, food and beverage, industrial systems, and home security products as well as restaurant, hotel, retail, entertainment and financial services.