Practice Focus
Alison Grabell practices intellectual property law. She concentrates her practice on U.S. and international trademark prosecution; copyright prosecution; enforcement of intellectual property rights, including domain names; related civil litigation and inter partes practice before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office; and client counseling. She maintains a wide network of international counsel to assist clients with international intellectual property protection and enforcement.
Ms. Grabell has counseled clients in both established and growing businesses to create, protect and enforce intellectual property rights. She represents clients in the toy, apparel, transportation, high technology, jewelry, food and beverage, hospitality and entertainment industries.
Before practicing trademark and copyright law, Ms. Grabell served in the United States Foreign Service as cultural and press attaché at American Embassies in Paris and Vienna, and at the United States Mission to the United Nations in Geneva. She was spokeswoman for the American delegation to the Conference on Security and Cooperation in Europe in Belgrade, Yugoslavia. Following her overseas duty, she served as Executive Assistant to the Director of the Voice of America in Washington, D.C. After moving to Los Angeles, she volunteered with the Los Angeles Olympics Organizing Committee and was a government affairs and protocol officer at the UCLA Olympic Village. Ms. Grabell is fluent in French.
Prior to joining the firm as a partner, Ms. Grabell was of counsel at Venable LLP and an associate at intellectual property firms Small Larkin LLP and Birch Stewart Kolasch & Birch, LLP, all in Los Angeles.
Professional Associations
Ms. Grabell is a member of the Executive Committee of the Intellectual Property Law Section of the State bar of California. She has served as co-chair of and advisor to the Trademark Standing Committee and has co-chaired the bi-annual “Trademark Office Comes to California” and “Copyright Office Comes to California” conferences. Additionally, she has co-chaired the Section’s Annual Intellectual Property Institute and is the Section’s delegate to the State Bar’s Conference of Delegates, which drafts and proposes resolutions to introduce legislation in the California legislature.
Ms. Grabell is active in the International Trademark Association, serving on The Trademark Reporter committee as an editor. She is a member of the Intellectual Property Law sections of the Los Angeles County and Beverly Hills Bar Associations. She was a member of the Beverly Hills Bar Association’s first delegation to Havana, Cuba in 2004 as part of a groundbreaking exchange on comparative legal practice.
Representative Matters
- Defended a prominent international business in co-pending lawsuits for counterfeiting and trademark infringement and assisted in obtaining dismissal of the cases after prevailing on discovery motions. Significantly for the client, obtained a published apology from the plaintiff.
- Developed and managed trademark enforcement programs for a leading entertainment company, preventing third parties from using and registering trademarks confusingly similar to the client’s well-known mark.
- Obtained statutory damages after a jury trial in a lawsuit for infringement of copyrighted fabric designs.
- Favorably settled an opposition proceeding before the Trademark Trial and Appeal Board on behalf of a well-known apparel brand and successfully challenged a retaliatory proceeding.
- Recorded and managed a comprehensive trademark and copyright assignment portfolio on behalf of an entertainment company.
Publications/Presentations
Publications:
- “Comments on the Trademark Dilution Revision Act of 2006,” Practising Law Institute and PLI Coursebook on TTAB Practice, February 2007.
- “A Flawed Balancing Act: Rights of Free Speech and Publicity,” World Trademark Law Report, March 2004.
- “New Northern Neighbor? An Independent Quebec, the United States and the NAFTA,” 2 Southwestern Journal of Law and Trade in the Americas, Spring 1995 (excerpted in Folsom, NAFTA (West 2004)).
Presentations:
- Ventura County Bar Association, “Avoiding Fraud on the Trademark Office,” September 2008.
- California State Bar Annual Intellectual Property Institute, “Trademark Litigation Nuts and Bolts,” November 2007.
- Practising Law Institute, New York, “Dilution Under the New Rules,” February 2007.
- State Bar of California Annual Meeting, “Issues in International Trademark Practice,” September 2006.
Education
- Southwestern University School of Law, Los Angeles, CA, J.D. 1996
Editor-in-Chief, Southwestern Journal of Law and Trade in the Americas, 1995-96
Selected to Moot Court, 1995
American Jurisprudence Award in Legal Research and Writing
Outstanding Achievement Award in Museum and Art Law
- The Johns Hopkins School of Advanced International Studies, Washington, D.C., Masters in International Public Policy, 1981
- Mount Holyoke College, South Hadley, MA, B.A. 1970
Admissions
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Courts for the Central, Southern , Northern and Eastern Districts of California