Attorneys


Professional Summary

Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law.  She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the Netherlands and the United Kingdom.

Lisel is admitted to practice before all the Federal and State Courts in California, the U.S. Court of Appeals, the United States District Court of Colorado, the U.S. District Court of Arizona and the U.S. District Court of Utah, as well as Federal Circuit Court.

Prior to practicing law, Lisel 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 Children’s 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.

Representative Matters

Intellectual Property Litigation

  • Resolved a patent infringement action involving nutritional supplements for animal feed.
  • Defended a guitar manufacturer in trademark/trade dress case.
  • Defended a patent infringement case brought against an ice making and distributing machine maker.
  • Prosecuted a trademark infringement case involving a domain name dispute in Federal Court.
  • Defended a claim of trade secret misappropriation relating to a web store selling online first aid and survival supplies.
  • Represented a Korean manufacturer of die board bending machines in multiple trademark, patent and misappropriation of trade secrets cases.
  • Represented a surfboard inventor in a breach of contract case.
  • Obtained a judgment against an overseas company through service via the Hague Convention.
  • Prosecuted a trademark and copyright infringement case for a beer manufacturer and obtained a very favorable result.

Intellectual Property Prosecution

  • Obtained patents for such products as storm drain filtration systems, horticultural products, surfboards, skateboards, ski equipment, medical and veterinary devices, research equipment and various sporting goods.
  • Obtained foreign patents and trademarks in Australia, New Zealand, the European Union, South America, Canada, Korea, China, Africa, Japan, and Hong Kong.
  • Represents 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.
  • Obtains customs recordals and conducts customs training sessions to protect clients' products worldwide.

Recognitions

  • Martindale-Hubbell® AV Preeminent Rating 
  • "Top Lawyers," San Diego Magazine, 2014-2016
  • San Diego Super Lawyers®, 2014-2015 (Intellectual Property)
  • “Super Lawyers/Southern California 2014: The Top Women,” Los Angeles Magazine, September 2014
  • “Southern California Super Lawyers,” Super Lawyers Magazine, Southern California, 2014

Community

  • American Bar Association
  • California Dressage Society
  • San Diego County Bar Association
  • The San Diego Intellectual Property Law Association
  • United States Dressage Federation
  • United States Equestrian Foundation

Education

  • JD, University of San Diego School of Law
  • BS (Biology, minors Psychology and Photography), University of California, San Diego

News Coverage

  • Evans, Jeremy. “Time Out: How we Represent and Play in the Big Leagues,” San Diego Lawyer, July 1, 2013.

Seminars

  • Co-presenter. "Developing an International Intellectual Property Portfolio, Procopio International Business Summit, San Diego, Ca, March 17, 2016.
  • Co-presenter. "Avoid a BIFF; Protect Your IP! The Basics You'll Need from A to Z," SIA Snow Show, Denver, CO, January 27, 2016.
  • Co-presenter. “Why, When and How to Develop an IP Strategy Appropriate for Your Business,” SIA Snow Show, Denver, CO, January 31, 2015.
  • “Protecting Your Intellectual Property in the US and Overseas,” UCSD Rady School of Management Global Business Strategy, San Diego, CA, August 2013-2015.
  • “Licensing and Bankruptcy,” LES San Diego, La Jolla, CA, May 21, 2014.
  • “The Benefits of Mistakes,” SDSI Chalk Talk, Carlsbad, CA, April 22, 2014.
  • “Licensing Executives Society: Increase the Value of your IP through Licensing,” LES San Diego, La Jolla, CA, March 11, 2014.
  • “Protect Your Profits: What You Need to Know to Protect Against IP Piracy,” CONNECT and SDSI Public Policy Forum, Carlsbad, CA, June 26, 2013.
  • “IP & Employment Matters - Common, Costly Mistakes for Start-up Entrepreneurs to Avoid,” Procopio and SV Forum, Palo Alto, CA, May 22, 2012.