Vanessa A. Ignacio Partner

New YorkNew Jersey
T 973.422.6426 | F 973.422.6427



Chair, Trademark Prosecution and Enforcement Practice

Trademark Blogs: Protecting Your U.S. Trademark Across the Border
                                   Enforcing Marks on Social Media Platforms
                                   When is Trademark Clearance Necessary?

To say that Vanessa Ignacio deals in equal parts with science and art in her practice is no exaggeration. The science is identifying and applying legal issues in advising companies on the clearance, development, maintenance and enforcement of trademarks. The art is negotiating with trademark examiners and understanding their myriad reasons for granting or refusing a mark.

Most of her clients are in technology, pharmaceuticals, life sciences, and consumer goods, and Vanessa is skilled at carefully crafting applications to avoid the issues that can lead to trademark agency refusals. Even when agencies issue refusals, she enjoys a stellar track record of overcoming them with substantive responses that address the objections and ultimately secure the marks for her clients.

Her clients trust her to manage their entire function of their trademark portfolios –from brand selection to clearance and registration, to maintenance, to licensing and enforcement for thousands of marks for hundreds of clients. Vanessa has unique experience in all aspects of enforcing brands online with an impeccable record fighting off “cyber squatters,” third parties that illegally use marks in a Web site or domain name. Adept at confronting third parties that apply for marks too similar to her clients’, she initiates opposition and cancellation proceedings before the U.S. Patent and Trademark Office and manages contested proceedings in nearly every jurisdiction around the world. She utilizes cease and desist letters in an effort to help clients avoid the expense and delays associated with litigation, but when end up as full-blown litigation, Vanessa is there to provide substantive counseling to the litigators.

Vanessa’s passion for intellectual property is a natural outgrowth of her years in the entertainment industry, including work at Capitol/EMI, the Diversified Entertainment Division of Polygram, Radioactive Records and the American Society of Composers, Authors and Publishers (ASCAP). It’s no wonder that expanding her omnivorous music collection is one of her favorite personal pursuits. Though she spends more time these days attending hockey games than she does attending concerts.


Representative Engagements

Managed the global Merck Consumer Care trademark and copyright portfolio consisting of more than 5,000 matters from April 2012 until the sale of the Consumer Care Division to Bayer AG in October 2014. Handled all aspects of trademark and copyright clearance, counseling, procurement, prosecution, and enforcement for marquee brands such as Coppertone, Claritin and Afrin. Coordinated with all applicable business functions, including marketing, packaging, regulatory, claims, medical and supply to bring products to market and meet Company objectives. Drafted licensing, social media marketing and endorsement agreements. Successfully lodged dozens of trademark oppositions, cancellations and domain name dispute cases against third party infringers.
Successfully appealed refusals by the US Patent and Trademark Office to secure federal trademark registration for the Claritin Peel Device, the animated screen used extensively to advertise and promote the Claritin brand. This trademark application presented numerous substantive challenges, including a determination by the USPTO that the Claritin Peel did not function as a trademark (a most difficult basis for refusal). Through extensive written arguments and evidence, Vanessa traversed the USPTO refusals and secured a rare “motion mark” registration, lending another layer of protection to the intellectual property relating to the marquee Claritin brand.
Current global trademark and copyright counsel for Bayer’s Consumer Care portfolio consisting of more than 5,000 matters for marquee brands such as Coppertone, Claritin, Afrin, Dr. Scholl’s, MiraLAX and Tinactin.
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Other Distinctions

  • Client Choice Awards (2017) – Exclusive Winner of the Intellectual Property – Trademarks Category - NJ for her ability to add real value to clients' businesses above and beyond the other players in the market.

  • World Trademark Review – (2012, 2013, 2014, 2015, 2016, 2017) – Recognized among leading global trademark practitioners and praised for being “bright and committed,” delivering "a consistently high level of service to her clients" and offering “forward thinking,” "on-point, business-savvy and expeditious advice."

  • YWCA’s Tribute to Women and Industry Honoree (2015) – Recognized among outstanding business women who have excelled in their fields and made significant contributions to their industries in executive, managerial and professional roles.

  • Chambers USA:  America's Leading Lawyers for Business (2013) - Recognized in the intellectual property section of the publication.  Praised by clients for delivering "everything that she promises."

  • Super Lawyers (2009) - Recognized as a "Rising Star" for her work in Intellectual Property Law.

Publications

Despite Consent Agreement, Trademarks for Craft Beer Too Similar for Registration
Trademark Prosecution and Enforcement Client Alert, September 26, 2016
Vanessa Ignacio, Matthew Hintz
Social Media Sites' Infringement Remedies Another Reason to 'Favorite' Trademark Registration
Legaltech News, August 3, 2016
Vanessa Ignacio, Matthew Hintz
Trademark Law in China to Receive a Much-Needed Upgrade
Trademark Prosecution & Enforcement Alert, September 17, 2013
Vanessa Ignacio
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Press Mentions

Vanessa Ignacio is ranked as one of the world’s leading trademark professionals for the 6th consecutive year by the World Trademark Review. , World Trademark Review , January 2017
Lowenstein Sandler represented TRANZACT in its sale to private equity fund, Clayton, Dubilier & Rice. TRANZACT, the leading provider of direct-to-consumer sales and marketing solutions for insurance carriers in the United States, is a longtime firm client. This transaction represents the fourth time Lowenstein has been involved in the sale of a stake of this company. Terms of the transaction were not disclosed. The deal team included Steven Siesser, Traci Tomaselli, Anita Chapdelaine, Jonathan Goodman, Katie Cobb, Bryan Seelig, Jim Gregory, Darren Goodman, Megan Monson, Brian Silikovitz, Lesley Adamo, Lowell Citron, Chad Pearlman, Maureen MontagueVanessa Ignacio and John Wintermute. , June 9, 2016
Vanessa Ignacio is ranked as one of the world’s leading trademark professionals for the 5th consecutive year by the World Trademark Review. , World Trademark Review , January 2016
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Related Areas

Corporate
Franchise and Distribution
Intellectual Property Litigation
Life Sciences
The Tech Group
Trademark Prosecution and Enforcement

Education


Benjamin N. Cardozo School of Law ( J.D. , 2000 ) , cum laude, Notes and Annotations Editor, Cardozo Online Journal of Dispute Resolution
Rutgers, The State University of New Jersey ( B.A. , 1995 ) , with highest honors

Bar Admissions


New York
New Jersey

Court Admissions


2000 , U.S. District Court, District of New Jersey

Affiliations


  • New Jersey Women Lawyers Association
  • International Trademark Association
    • Internet Committee, Domain Name Subcommittee
  • Trustee, Verona Foundation for Educational Excellence
  • National Association of Professional Women