Lisel M. Ferguson

Ms. Ferguson is co-chair of Procopio’s Action Sports and Apparel Practice Group. Her practice focuses on patent, trademark and copyright prosecution world wide, and intellectual property litigation throughout the United States. Ms. Ferguson has handled matters involving computer hardware and software, sporting goods, apparel, the internet, entertainment, medical devices, agricultural products and services and consumer goods. She is admitted to practice before all the Federal and State Courts in California, the US District Court of Colorado, the US District Court of Arizona and the US District Court of Utah, as well as Federal Circuit Court. Ms. Ferguson is also admitted to practice before the United States Patent and Trademark Office.

Ms. Ferguson is also experienced in handling intellectual property issues specifically for the Action Sports industry. As a co-chair of Procopio’s Action Sports Practice Group, she is actively involved, not only professionally, but personally, too. In her spare time, she enjoys horseback riding, competing in dressage and Three Day Eventing, water skiing, snow skiing and participating in triathlons.

Prior to practicing law, Ms. Ferguson spent over five years working full time in the professional fields of science and biology managing eco-tourism research projects and marine mammal diving physiology research. She also managed a cognitive science study on children with focal lesions for UCSD, Salk and Childrens Hospital. She worked for Scripps Institute of Oceanography, UCSD and for an International Turtle Conservation Group where she assisted with numerous professorial level and Ph.D. research projects in addition to co-authoring scientific journal articles.

Prior to joining Procopio, Ms. Ferguson handled a broad range of Intellectual Property matters for the San Diego law firm of Perkins & Miltner, where her practice also focused on business, environmental, construction, trademark, patent, copyright and equine litigation.

Representative Matters

Representative Intellectual Property Litigation Matters:

• Successfully resolved a patent infringement action involving nutritional supplements for animal feed
• Successfully defended a guitar manufacturer in trademark/trade dress case
• Successfully defended a patent infringement case brought against an ice making and distributing machine maker
• Successfully prosecuted a trademark infringement case involving a domain name dispute in Federal Court
• Successfully defended a claim of trade secret misappropriation relating to a web store selling online first aid and survival supplies
• Successfully represented a Korean manufacturer of die board bending machines in a trademark, patent and misappropriation of trade secrets case
• Successfully represented a surfboard inventor in a breach of contract case
  

Representative Intellectual Property Prosecution Matters:

• Obtained patents for such products as storm drain filtration systems, horticultural products, surfboards, skateboards, medical and veterinary devices, and various sporting goods
• Obtained foreign patents and trademarks in Australia, New Zealand, Asia, the European Union, South America, Canada and Korea
• Represented several action sports clients in filing for patents, trademarks, copyrights and negotiating licensing and royalty agreements
• Represents numerous businesses, including apparel companies, beverage companies, pet product companies, clean tech companies and sporting companies with their intellectual property portfolios

Ms. Ferguson received a Bachelor of Science degree in Biology with two minors in Psychology and Photography from the University of California, San Diego. Ms. Ferguson received her law degree from the University of San Diego School of Law, where she was president of the Environmental Law Society, member of the Intellectual Property Society and participated in Moot Court.

Ms. Ferguson is a member of the San Diego County Bar Association, the American Bar Association, Athena, and the San Diego Intellectual Property Society. She is very active in the equestrian community as well, holding memberships in the California Dressage Society, United States Dressage Federation and United States Equestrian Foundation. She is also in charge of the funding committee for the Women’s Resource Fair.

 Recent Articles/Publications

• "Protect Your Brand and Products, Avoid Knockoffs and Infringements," October 2011
• “When Staying Connected Online Crosses the Line," San Diego Daily Transcript, July 8, 2009
• “The Increasing Value of Trademarks on the Internet,” The Globe - The Newsletter of LawExchange International, Spring 2009
• “The Increasing Value of Trademarks on the Internet,” April 2009
• “Don't Be a Victim of Brand Identity Theft on the Web,” March 2009
• "Commercial Litigation Strategies for Intellectual Proper Cases in Federal District Court." Commercial Litigation Strategies: Leading Lawyers on Case Preparation, Settlement Opportunities, and Best Practices for Client Success. July 2008, Aspatore Books.

Recent Seminars and Speeches

• Moderator: “Why SDSI? Learn Firsthand from the Faces of SDSI,” San Diego, CA, November 15, 2011
• "When and How to Develop a Patent and Trademark Strategy and Portfolio,” Entrepreneur Forum: Procopio’s Winning Strategies for Start-Ups and Emerging Growth Companies, San Diego, CA, January 27, 2011
• “What Every Business Owner Should Know About Protecting Their Intellectual Property: Special Tips for the Action Sports Industry,” ASR, San Diego Convention Center, August 13, 2010
• “Create it, Brand it, and Learn to Protect it,” ASR Trade Show Seminar, San Diego Convention Center, February 3, 2010
• “Prevent Knockoffs and Protect Your Brand,” Carlsbad Chamber of Commerce, September 9, 2008
• "Prevent Knockoffs! Learn how to Protect Your Products and Your Brand", Action Sports Retailer Expo, January 25, 2008
• "Legal Issues for Small Businesses", Oceanside Chamber of Commerce's 2007 "Business Success Series", November 14, 2007
• "Marketing in the Digital Age: How Have the Legal Rules Changed", San Diego Ad Club, August 24, 2007