PRACTICE FOCUS
Alison Grabell has practiced intellectual property law since 1997. She heads the firm’s Trademark and Copyright Practice Group, concentrating on U.S. and international trademark prosecution; copyright prosecution; intellectual property licensing; enforcement and defense of intellectual property rights; major intellectual property asset sales and purchases; civil litigation; ex parte and inter partes practice before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office; and client counseling. Ms. Grabell develops and manages trademark enforcement programs, preventing third parties from using and registering trademarks confusingly similar to clients’ marks. She maintains a wide network of international counsel to assist clients with international intellectual property protection and enforcement.
Ms. Grabell counsels clients in established, growing and start-up businesses across a wide spectrum of industries. She places great importance on educating and advising clients about opportunities to develop, enhance and protect their intellectual property portfolios as valuable business assets.
In addition to an extensive transactional intellectual property practice, Ms. Grabell’s significant litigation experience positions her to advise the firm on trademark and copyright litigation. She defended a prominent international business against claims of counterfeiting and trademark infringement and obtained dismissal of the case after prevailing on discovery motions. Significantly for the client, she obtained a published apology from the plaintiff. Representing an apparel client, Ms. Grabell assisted in obtaining statutory damages after a jury trial in a copyright infringement lawsuit. She favorably settled an opposition proceeding before the Trademark Trial and Appeal Board on behalf of a well-known denim apparel brand and successfully challenged a retaliatory proceeding. She has co-defended a patent infringement lawsuit. Ms. Grabell has negotiates settlement and co-existence agreements.
Ms. Grabell previously served in the United States Foreign Service as cultural and press attaché at American Embassies in Paris and Vienna. At the United States Mission to the United Nations in Geneva, she was spokeswoman for American delegations to international conferences, including WIPO, strategic arms limitations and Law of the Sea, as well as for summit conferences. She was selected as 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.
PROFESSIONAL ASSOCIATIONS
Ms. Grabell served on the Executive Committee of the Intellectual Property Law Section of the State Bar of California for many years. She was 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, as well as the Section’s Annual Intellectual Property Institute. She was 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 and served on The Trademark Reporter committee as an editor. She is also a member of the Intellectual Property Law section of the Beverly Hills Bar Association. 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.
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:
- MAGIC, “Branding and Protecting Your Creations for Market Impact,“ February 2012
- Santa Barbara County Bar Association, “Avoiding Fraud on the Trademark Office,“ September 2009
- 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, faculty member, “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, J.D.
- Editor-in-Chief, Southwestern Journal of Law and Trade in the Americas
Selected to Moot Court - American Jurisprudence Award in Legal Research and Writing
- Outstanding Achievement Award in Museum and Art Law
- The Johns Hopkins School of Advanced International Studies, Masters in International Public Policy
- Mount Holyoke College, B.A.
ADMISSIONS
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Courts for the Central, Southern, Northern and Eastern Districts of California