Jane Shay Wald chairs the firm’s Trademark practice group. Her intellectual property practice focuses on trademark, unfair competition, false advertising and copyright. Jane counsels clients on acquiring and maintaining U.S. and foreign rights and on potential and pending infringement problems. She also provides counsel in regard to titles, names, logos and configuration and prosecutes trademark applications in the U.S. Patent and Trademark Office. She litigates before the Trademark Trial and Appeal Board and the federal courts.

Since 2013, WTR 1000 – The World’s Leading Trademark Professionals has ranked the “formidable” and “rock star” Jane among the best trademark attorneys in California for “enforcement and litigation” and “prosecution and strategy.” Her brand protection practice is described as “a potent cocktail of trademark, false advertising and unfair competition” in the 2016 guide. Previous guides recognize Jane for her “dexterous handling of a diverse range of trademark assignments, including complex licensing arrangements” and for being “a wonderful lawyer­—just incredibly smart and thoughtful.”

Together with David Nimmer, Jane was counsel on the briefs for Dastar Corp., the prevailing party, in the U.S. Supreme Court Lanham Act Case Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

Jane’s featured commentary and coverage include:

Honors & Awards

  • The annual Jane Shay Wald Service Award was created by the Century City Bar Association in her honor (2022)
  • Selected as among the WTR Global Leaders by World Trademark Review (2022)
  • Received the Lifetime Achievement Award by Century City Bar Association (2018)
  • Named the Los Angeles Copyright/Trademark Law “Lawyer of the Year” by Best Lawyers in America (2012, 2018, 2020) and has been included in the list every year since 2007
  • Recognized as one of the “Most Influential Women Lawyers” in Los Angeles by the Los Angeles Business Journal (2017)
  • Selected to the Southern California Super Lawyers list in the area of intellectual property (2005-2023)
  • Named an “Icon of IP” by Law360 (2016)
  • Named one of the “Top 50 Women Lawyers” in Southern California by Super Lawyers magazine (2005-2006, 2009-2010, 2012-2015)
  • Listed among the “Top 250 Women in IP” in Managing Intellectual Property's IP Stars (2013-2014)
  • One of the “Top 100 Women Litigators” in California according to the Daily Journal, recognizing her for being a “leader in trademark infringement suits in federal court and before the U.S. Patent and Trademark Office” (2010)
  • Named one of the “Top 100 Lawyers” in Southern California by Super Lawyers magazine (2010)
  • Received the California State Bar Intellectual Property Law Section's Vanguard Award for private practice (2009)
  • Named one of California’s “Top 10 Trademark Lawyers” by the Daily Journal (2008)
  • Named one of California’s “Top 30 Intellectual Property Lawyers” by the Daily Journal (2005)
  • Named Century City Bar Association’s “Intellectual Property Lawyer of the Year” (2003)
  • Named a “Woman of Achievement” by the Century City Chamber of Commerce and the Chambers Women's Business Council
  • Included in California's Who's Who Legal, the strategic legal partner of the ABA section of International Law

Publications

  • “Fifty Years of Trademark Law: Where We Stand and What We Saw,” AIPLA Quarterly Journal, Volume 50, Issue 4 (2023)
  • “F-Word TM Ruling Highlights Key Defect of Salacious Terms,” Law360 (August 2022)
  • “A Look at the Trademark Modernization Act – Part 2,” New Matter (Winter 2021)
  • “'FAILURE TO FUNCTION' When that Catchy Slogan You ♥ is Not a Mark At All,” New Matter (Summer 2021)
  • “A Look at the Trademark Modernization Act: Early Observations of a Bold New Law,” New Matter (Summer 2021)
  • Chapter Nine, “Settlement and Alternative Dispute Resolution,” A Legal Strategist’s Guide to Trademark Trial and Appeal Practice, ABA Section of Intellectual Property Law (4th Ed. 2020, 3rd Ed. 2016, 2nd Ed. 2012, 1st Ed. 2010)
  • “How Int'l Filing Strategy Led To Ivanka Trump's Coffin TMs,” Law360 (May 2020)
  • “Bubble, Bubble, Oil No Trouble? The significance of V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas, LLC on preemption,” New Matter (Spring 2020)
  • “Parsing A Unique Int’l Class Of Goods Via Ivanka Trump’s TMs,” Law360 (January 2020)
  • “Trademark Trial and Appeal Board (TTAB) Decisions and Developments” column, New Matter, the official publication of the Intellectual Property Law Section of California Lawyers Association, formerly California State Bar, IP Section (Quarterly, 2015-present)
  • “Trademarks, Free Speech and Cannabis,” Daily Journal (December 2017)
  • “A Slanted View of Trademark Law,” Séquence, Entertainment, Larcier Group, France (2017)
  • “Offensive Trademark Ban Going Down? It Probably Should Not,” Law360 (October 2016)
  • “Stop The Press—Trademark Coverage's Mess,” Law360 (August 2016)
  • “Preliminary Injunctions: The End of the Matter or Just the Beginning?” World Trademark Review (April/May 2016)
  • “Voices of the Bar Panel,” which features leading experts discussing timely and important developments in the field of intellectual property law, IP Law360 (June 2015)
  • “Fed. Circ. May Change Disparagement Analysis for TMs,” Law360 (April 2015)
  • “TTAB Proceedings Just Got More Complicated, More Expensive,” Law360 (March 2015)
  • “More Can Sue Under Lanham Act After 2014,” Daily Journal (December 2014)
  • “Peeking in at Private Drone Law—California and Beyond,” Century City Lawyer (November 2014)
  • “The Elusive Trademark Damages,” The Recorder (October 2012)
  • “Hair Today, Gone Tomorrow, The Tale of a Retroactively Vacated Consent Judgment,” The Intellectual Property Law Strategist, Vol. 16, No. 7 (April 2010)
  • “Trademark Licenses in Bankruptcy—Cert Denied: This Time,” Century City Lawyer, Volume 15, No. 13 (Winter 2009)
  • “Ninth Circuit to Plaintiff: Game Over! Virtual ‘Pig Pen’ Protected by First Amendment,” The Intellectual Property Strategist, Volume 15, Number 6, (March 2009)
  • “He Who Steals My Trash Pays Cash?” The Intellectual Property Strategist, Volume 14, Number 9 (June 2008)
  • “Earmarks and Trademarks Collide: Fourth Circuit Reverses District Court in The Last Best Beef, LLC v. Jonathan W. Dudas et al.,” The Intellectual Property Strategist, Volume 14, Number 4 (January 2008)
  • “A Forward Look at the Three Other Confusions: Reverse, Initial Interest, and Post-Sale,” California Business Law Practitioner, Volume 22, Number 2 (Spring 2007)
  • “Ninth Circuit Follows TTAB Policy: Questions Remain As to What Kinds of Unlawful Acts Bar Trademark Rights,” The Intellectual Property Strategist, Volume 13, Number 8 (May 2007)
  • “Overpleaded Opposition Supports DJ Motion,” The Intellectual Property Strategist, Volume 13, Number 7 (April 2007)
  • “Finding Fraud,” Los Angeles and San Francisco Daily Journal supplement (September 7, 2006)
  • “The Federal Courts’ View of the State of Dilution in the States,” Intellectual Property Law Strategist, Law Journal Newsletter (July 2004)

Speaking Engagements

  • “AM General Loses Humvee Lawsuit Against 'Call of Duty' Video Game Developer,” a remote presentation for Media Law Research Center (July 1, 2020)
  • “Top 10 Things to Know About Canada and U.S. Trademark Law,” a joint program by the Los Angeles County Bar Association, Intellectual Property and Entertainment Law Section and International Law Section, and the Bar of Montreal (June 6, 2019)
  • “Trademark Year in Review,” LAIPLA Spring Seminar, Rancho Palos Verdes, CA (April 26, 2019)
  • “Non-Conventional Trademarks in the US & Abroad,” Beverly Hills Bar Association IP Section (November 8, 2018)
  • “IP Year in Review,” LAIPLA Spring Seminar, Ojai, CA (May 4, 2018)
  • “A Year in Review: Trademark Decisions in the Courts and TTAB,” Orange County Bar Association’s Intellectual Property & Technology Law Section (August 21, 2017)
  • “Trademark in Review in Rhyme and Rap for You,” LAIPLA Spring Seminar, Del Mar, CA (May 5, 2017)
  • “Protecting and Determining Brand and Trademark Value,” USC Gould School of Law Intellectual Property Institute, Santa Monica, CA (March 2017)
  • “Highlights (and Lowlights) of the Trademark and Copyright Year in Review,” San Diego Intellectual Property Law Association, San Diego, CA (February 23, 2017)
  • “Trademark Bootcamp: An Introduction to Applying for and Enforcing a Trademark,” Orange County Bar Association, Newport Beach, CA (February 22, 2016)
  • “TTAB Best Practices: An Overview in Two Acts (Inter Partes and Ex Parte Proceedings),” Los Angeles Intellectual Property Law Association (LAIPLA) (January 2014)
  • “Fashion Law Forum,” Above the Law, Los Angeles, CA (November 2013)
  • “Trademark Bootcamp,” Los Angeles Intellectual Property Law Association (LAIPLA) (October 2013)
  • “Developments in the Trademark Trial and Appeal Board and the Federal Circuit,” Los Angeles Intellectual Property Law Association, Las Vegas, NV (June 2013)
  • “Understanding Trademark Law in the Global Marketplace,” Practising Law Institute (PLI), Chicago, IL, including course materials (June 2013)
  • “Understanding Trademark Law in the Global Marketplace,” Practising Law Institute (PLI), Chicago, IL, including course materials (June 2012)
  • “Second Annual Madrid Protocol Seminar,” State Bar of California IP Section and International Law Section, Los Angeles, CA (February 2012)
  • “A New Trademark World: Opportunities and Challenges for Trademark Owners in New Media,” State Bar of California, Beverly Hills, CA
  • “Trademark Infringement Primer,” Practising Law Institute (PLI), Chicago, IL, including course materials (June 2011)
  • “Master Women Litigators,” Women Lawyers Association of Los Angeles Litigators Forum, Los Angeles, CA (March 2011)
  • “Trademark and Clearance Issues: Protecting and Using Brands,” 7th Annual Film, TV & New Media Law Conference, Hollywood, CA (January 2011)
  • “Pre-filing Considerations in Trademark Litigation,” Los Angeles Intellectual Property Law Association, Beverly Hills, CA (October 2010)
  • “Trademarks in Film; Legal Developments,” USC Institute on Entertainment Law and Business, Los Angeles, CA (October 2010)
  • “Understanding Trademark Law” and course materials, Practising Law Institute (PLI), Chicago, IL (June 2010)
  • “Clash of the Titans: Intellectual Property Law Meets Bankruptcy,” American Bankruptcy Law Institute, Los Angeles, CA (March 2010)
  • “Trademark Infringement,” and course materials, Practising Law Institute (PLI) (June 2009)
  • “Trademark-Related Fraud on the USPTO; TTAB's New Rules of Practice; Moving from TTAB Proceedings to District Court; Ethics and Trademark Practice Before the USPTO,” American Intellectual Property Law Association (AIPLA) Mid-Year Meeting, San Diego, CA (May 2009)
  • Faculty telephone seminar/audio webcast, “Tiffany v. eBay: Roadmap for Avoiding Liability or Short Detour for Trademark Owners,” American Bar Association (ALI-ABA) (August 6, 2008)
  • Teleconference presenter, “Some Pre-Filing Considerations in U.S. Trademark Litigation: Pre-Filing Investigation and Preparation for U.S. Trademark Litigation,” Litigation Standing Committee of the Intellectual Property Law Section of the State Bar of California in conjunction with the Trademark Standing Committee (April 24, 2008)
  • “Focus on Sports Entertainment,” USC Gould School of Law Intellectual Property Institute, Trademark Law, Beverly Hills, CA (March 2008)
  • “Geographical Indications,” and materials, Symposium on International Intellectual Property: Recent Trends and Future Developments, Chapman University School of Law, Orange, CA (April 2007)
  • “Confusion about ‘Confusion’ — Reverse, Initial Interest, and Post-Sale Types,” The 16th All Ohio Annual Institute on Intellectual Property, Cleveland, OH and Cincinnati, OH (September 14-15, 2006)
  • “Reverse, Initial Interest, and Post-Sale: A Forward Look at Reverse and ‘Other’ Likelihoods of Confusion,” Los Angeles County Bar Association, Intellectual Property and Entertainment Law Section, Los Angeles, CA (May 24, 2006)
  • “2005 Year in Review; Trademark Developments,” and course materials, Century City Bar Association, Patents, Copyrights and Trademarks Section, Los Angeles, CA (March 2006)
  • Paper, “Alternatives to Use: Recent Developments by U.S. Courts in Territoriality and Extraterritoriality — The Answer? Yes, No and Maybe,” American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington DC (October 2005)
  • “Enforcing Copyrights,” and course materials, Practising Law Institute (PLI), San Francisco, CA (July 2005)
  • “Mediation of Copyright and Trademark Disputes: Cutting the Gordian Knot,” American Bar Association Section of Dispute Resolution, Los Angeles, CA (April 14, 2005)
  • “2004 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 2005)
  • “Enforcing Copyrights,” and course materials, Practising Law Institute (PLI), San Francisco, CA (July 2004)
  • “Barbies, Bulldozers and Brands in Expressive Works,” Judges of the Central District of California Seminar, Lake Arrowhead, CA (May 2004)
  • Co-Chair (LA Chair), “Handling Intellectual Property Issues in Business Transactions,” Practising Law Institute (PLI), Los Angeles, CA (March 2004)
  • “State of Dilution in the States After Victoria’s Secret,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Washington, D.C. (February 2004)
  • “2003 Year in Review: Trademark Developments,” and course materials, Century City Bar Association, Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 2004)
  • “Strategies for Creating and Maintaining an International Trademark Portfolio; European Community Update,” State Bar of California IP Law Section, Santa Monica, CA (April 2003)
  • “Trademark Licensing,” International Trademark Association (INTA) Basics of U.S. Trademark Law Forum, Beverly Hills, CA (February 2003)
  • “2002 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (January 2003)
  • “The Functionality Defense to Trade Dress Claims,” American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, D.C. (October 2002)
  • “2001 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 2002)
  • “Trademark Searches and Investigations,” and course materials, Practising Law Institute (PLI), Palo Alto, CA (September 2001)
  • “Design Protection Under the Lanham Act in View of Samara and Traffix,” American Intellectual Property Law Association (AIPLA), Trademark Law Roadshow, Los Angeles, CA (June 2001)
  • “Inside Tips and Latest News from the U.S.P.T.O. and T.T.A.B,” International Trademark Law Association (INTA), San Francisco, CA (May 2001)
  • Delegate to the World Intellectual Property Organization (WIPO), American Intellectual Property Law Association (AIPLA), Geneva, Switzerland (March 2001)
  • “Trademark Developments,” Judges of the Central District of California Seminar, Ojai, CA (February 2001)
  • “2000 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trade Dress Section, Los Angeles, CA (February 2001)
  • Trademark presentation, “False Advertising Under Section 43(a) of the Lanham Act,” All Ohio Annual Institute on Intellectual Property, Cleveland and Cincinnati, OH (September 2000)
  • “Trademarks for a New Millennium,” Association of Corporate Patent Counsel (ACPC), Palm Springs, CA (February 2000)
  • “1999 Year in Review: Trademark Developments,” and course materials, Century City Bar Association, Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 2000)
  • Delegate to the World Intellectual Property Organization (WIPO), American Intellectual Property Law Association (AIPLA), Geneva, Switzerland (November 1999)
  • “Litigating Trademark, Trade Dress, and Unfair Competition Cases: Ethical Issues,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Washington, D.C. (November 1999)
  • “Ethical Issues in Trademark Practice,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Philadelphia, PA (April 1999)
  • “1998 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 1999)
  • “Setting Up and Managing a Trademark Licensing Program,” and course materials, Los Angeles Intellectual Property Law Association, Carlsbad, CA (June 1998)
  • “Ethical Issues in Practice,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Washington, D.C. (April 1998)
  • “1997 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 1998)
  • Testimony before the Office of Legislation and International Affairs concerning proposed rulemaking to amend certain rules governing practice before the Trademark Trial and Appeal Board, pursuant to 62 F.R. 30802, U.S. Patent and Trademark Office, Washington, D.C. (December 10, 1997)
  • “Ethical Issues in Practice,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Washington, D.C. (April 1997)
  • “The Trademark as an Asset Base,” American Bar Association Section of Intellectual Property Law, Patent, Trademark and Copyright Law, Arlington, VA (April 1997)
  • “1996 Year in Review: Trademark Developments,” and course materials, Century City Bar Association Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 1997)
  • “Setting Up and Managing a Licensing Program,” and course materials, Minnesota State Bar Association, CLE, Minneapolis, MN (December 1996).
  • “The European Community Trademark,” and course materials, Los Angeles Intellectual Property Law Association, Palm Desert, CA (May 1996)
  • “Ethical Issues and Current Developments in Practice,” and course materials, American Law Institute — American Bar Association (ALI-ABA), Chicago, IL (April 1996)
  • “1995 Year in Review: Trademark Developments,” and course materials, Century City Bar Association, Patents, Copyrights and Trademarks Section, Los Angeles, CA (February 1996)
  • “The Effect of the Qualitex Decision on Trademark Registration and Infringement,” American Intellectual Property Law Association (AIPLA), 1995 Annual Meeting, Washington, D.C. (October 1995)

Professional Activities

  • Editorial board member, IP Law360 (2016-2018)
  • President, Century City Bar Association (2011)
  • Adjunct professor in trademark law, UCLA School of Law (2006-2007)
  • Adjunct professor in trademark law, Southern California Law School (2003-2005)
  • President, LA Copyright Society (2004-2005)
  • AIPLA chair, International Trademarks and Treaties (1999-2001); AIPLA delegate to WIPO, “Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications,” Geneva, Switzerland (1999, 2001)
  • Board of trustees, Copyright Society of the USA (1999)

Education

DePaul University, College of Law (J.D., 1976), cum laude

DePaul University, (B.A., Economics, 1973), magna cum laude

Admissions

  • California
  • New York
  • U.S. District Court for the Central and Northern Districts of California
  • U.S. District Court for the Eastern and Southern Districts of New York
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Supreme Court
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