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Alicia Morris Groos

Partner

Alicia Morris Groos

Austin

T:+1 512 536 3091

Alicia is a partner in the Intellectual Property Group, which was named the 2013 Trademark Law "Law Firm of the Year" in the "Best Law Firms" research conducted by U.S. News & World Report and Best Lawyers. Alicia focuses her practice on US trademark and copyright law and management of domestic and international intellectual property portfolios.

Her practice includes trademark, copyright and false advertising enforcement and litigation, domain name disputes, counseling clients on the selection and clearance of trademarks, and trademark opposition and cancellation proceedings in the United States and abroad. In addition, Alicia assists clients with trademark and copyright prosecution, counseling, and transactional matters, including licensing, assignments, coexistence agreements and consents.

Trademark:

  • Evaluation of potential marks, including availability searches and opinions
  • Applications for and registrations of trademarks
  • Enforcement of trademark rights and trademark disputes, including social media issues
  • Trademark protection and development programs – including training of client personnel
  • Development of brand manuals
  • Oppositions and cancellations
  • Sending and responding to cease and desist letters
  • Trademark licenses and other transactions involving trademarks, including acquisition of marks
  • Domain name acquisition and protection, including UDRP proceedings
  • Trademark portfolio management
  • Litigation and settlements


Copyright:

  • Registration
  • Enforcement of copyrights
  • Copyright licenses and transactions involving trademarks
  • Disputes and settlements involving copyrights
  • Sending and responding to cease and desist letters
  • Clearing rights in copyrights
  • Copyright portfolio management
  • Litigation


General IP:

  • IP evaluations and due diligence
  • Rights clearance, licensing and agreements involving issues such as copyright, trademark, right of privacy/publicity and defamation
  • Trade secret matters
  • False advertising matters
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  • Education

    JD, with honors, The University of Texas School of Law, 1999
    BA, Plan II Honors, with a concentration in Geography, The University of Texas, 1993

    While attending law school, Alicia was a member of the Texas International Law Journal. 

    Alicia also completed mediation training under the Texas Alternative Dispute Resolution statute and served as a Mediator in a variety of pro bono cases.

  • Representative experience
    • Preliminary and comprehensive trademark clearance and opinions for 100+ trademarks of major multi-national pharmaceutical company
    • US and international clearance, prosecution, and policing of trademark for FDA-approved medical device
    • Representation of major healthcare system in all aspects of trademark and copyright law, including enforcement, licensing, search and clearance, prosecution, coexistence and consent agreements, domain name and social media issues
    • Representation of a major metropolitan transportation and sightseeing service provider in federal court litigation and 7th Circuit appeal to protect the company's service mark
    • Represented a major international retailer in negotiations to acquire a key house mark domain name
    • Successfully defended an international quick service food chain against multiple attempts by a plaintiff to obtain a restraining order in a U.S. Federal Court copyright litigation
    • Successfully represented a Mexican government administrative agency in domain name proceedings before the World Intellectual Property Organization
    • Assisted in representing a major international food products company in obtaining trademark and copyright registration for packaging and a non-traditional mark
    • Assisted in successful representation of an international retailer in multinational trademark and trade dress litigation involving a foreign competitor
    • Coordinated Intellectual Property due diligence in connection with the sale of an international restaurant chain
    • Drafted licensing and employment agreements related to celebrity chef restaurant and related businesses
    • Represented professional sports team in purchase of music rights and music license agreement for stadium theme music
    • Negotiated and drafted celebrity endorsement agreements for cosmetics and consumer products
  • Admissions
    • Texas State Bar
  • Rankings and recognitions
    • World Trademark Review 1000, Texas: trademarks, Globe Business Publishing Ltd, 2015 - 2018
    • Legal 500 US, recommended lawyer, Intellectual Property: Trademarks: Non-Contentious - Full Coverage, The Legal 500, 2014 - 2018
    • The Best Lawyers in America, Best Lawyers, 2015 - 2019
    • Austin Business Journal Profiles in Power Nominee 2016 - 2017
    • Who's Who Legal, Trademarks: Lawyers, Law Business Research Ltd., 2018
  • Publications
    • Author, "Report Published on Countries That Protect Copyrights in Logos," INTA Bulletin, September 1, 2018
    • Co-Author, "Use Them or Lose Them: U.S. Trademarks Put to the Proof," Norton Rose Fulbright Brand Protection Blog, February 9, 2017
    • Co-author, with Sanjiv D. Sarwate of Dell Inc., "Protecting Trademarks and Copyrights Online: Perspectives and Strategies from In-house and Outside Counsel," The University of Texas School of Law 29th Annual Technology Law Conference, Austin, Texas, May 26-27, 2016
    • Author, "Trademark and New gTLD Year In Review," The University of Texas School of Law 27th Annual Technology Law Conference, Austin, Texas, May 22-23, 2014
    • Co-author, "Copyright Office's New Fee Schedule," Norton Rose Fulbright Legal Update, April 3, 2014
    • Co-author, "Mission control: trademark strategies for non-profit organizations," World Trademark Review, Issue 40 December/January 2013, pp. 60-64
    • Co-author, "Licensing Intellectual Property in Australia: An Overview from a U.S. Perspective," Law Seminars International Advanced Conference on Current Issues in IP Licensing, Houston, Texas, October 29-30, 2012
    • "Changes in Texas Intellectual Property Law Set to Take Effect," Austin Business Journal, August 24-30, 2012
    • Co-author with Susan Ross, "Copyright Office Proposes New Fee Schedule," Fulbright Briefing, April 3, 2012
    • Author, "Considerations When Drafting and Negotiating Coexistence Agreements From Both Sides of the Border – A United States Perspective," presented to the State Bar of Texas 25 Annual Advanced Intellectual Property Law Course, Houston, Texas, March 2012
    • New Web Domains Online," Austin Business Journal, September 30, 2011
    • Co-author with Richard J. Groos, "Learn to Spot 10 Common Trademark Misconceptions," Texas Lawyer, Vol. 26, No. 11, June 14, 2010
    • Contributor, "Legal Implications of Social Media," presented by Richard J. Groos and Robert F. Corrigan, Jr., to the Texas Hospital Association, June 2009
    • "Developments in U.S. Copyright Law 2000 - 2001: From Revising the Old South to Redefining the Digital Millennium," Texas Intellectual Property Law Journal, Vol. 10, No. 1, Fall 2001
    • "International Trade and Development: Exploring the Role of Fair Trade Organizations in the Global Economy and the Law," Texas International Law Journal, Vol. 34, No. 3, Summer 1999
  • Speaking engagements
    • Speaker, "Social Media—Evaluating Risk vs Reward in Real Time," Norton Rose Fulbright in-house counsel CLE presentation, October 16, 2017
    • Speaker, "Protecting Trademarks and Copyrights Online: Perspectives and Strategies from Inhouse and Outside Counsel," The University of Texas School of Law 29th Annual Technology Law Conference, Austin, Texas, May 26-27, 2016
    • Speaker, "Challenges in Clearing Marks in an Era of Information Overload," Corsearch panel discussion, Austin, Texas, September 17, 2015
    • Moderator, "North of the Border: Trademark Strategies for Latin American Companies Doing Business in the U.S.A.," 2015 INTA Annual Meeting, San Diego, California, May 3, 2015
    • Moderator, "Decisions you need to know: Key Trademark Cases from 2014," International Trademark Association Roundtable, Austin, Texas, January 27, 2015
    • Speaker, "Making the Most Out of Logos, Product Designs & Packaging:  Practice Tips & Trends for Non-Traditional Copyrights," 2014 The Copyright Society of the U.S.A., Texas Chapter Meeting, Austin, Texas, November 19, 2014 
    • Speaker, "Trademark and New gTLD Update 2014," The University of Texas School of Law 27th Annual Technology Law Conference, Austin, Texas, May 22-23, 2014
    • Moderator, "Practical Strategies for International Coexistence and Consent Agreements Across Borders: U.S., Canada and Mexico," 2013 INTA Annual Meeting, Dallas, Texas, May 2013
    • Speaker, "Licensing Intellectual Property in Australia: An Overview from a U.S. Perspective," Law Seminars International Advanced Conference on Current Issues in IP Licensing, Houston, Texas, October 30, 2012
    • Speaker, "Intellectual Property Litigation," presented to The University of Texas Intellectual Property Law Society, October 17, 2012
    • Panelist, "Considerations When Drafting and Negotiating Coexistence Agreements From Both Sides of the Border – A United States Perspective," presented to the State Bar of Texas 25 Annual Advanced Intellectual Property Law Course, Houston, Texas, March 2012
    • "Trademark Proper Use," Fulbright & Jaworski L.L.P. in-house counsel CLE presentation, September 14, 2011
    • Testified before the Texas Senate Business & Commerce Committee regarding HB 3141 Relating to the Registration and Protection of Trademarks, on behalf of the International Trademark Association, May 10, 2011; HB 3141 signed into law June, 2011
    • Moderator, "Handling Complex Prosecution Issues," International Trademark Association Roundtable, April 13, 2011
    • Testified before the Texas House of Representatives Business & Industry Committee regarding HB 3141 Relating to the Registration and Protection of Trademarks, on behalf of the International Trademark Association, April 4, 2011
    • "Developing an International Trademark Strategy," Austin Bar Technology Section, April 13, 2010
    • Panelist, "The IP Market in Texas," Presentation to University of Texas Law Students, March 31, 2010
    • Moderator, "Policing Trademarks on the Internet and the Web 2.0," International Trademark Association Roundtable, January 14, 2010
    • "Copyright Basics," Fulbright & Jaworski L.L.P. in-house counsel CLE presentation, November 6, 2007
    • "International Trademark Basics," Fulbright & Jaworski L.L.P. in-house presentation, July 17, 2007
  • Memberships and activities
    • International Trademark Association (INTA)- Copyright Law Committee (2016-2019), Logos Working Group Vice Chair (2018-2019)
    • Intellectual Property Owners Association(IPO), Co-Secretary of Trademark Law (U.S.) Committee  (2016-2019)
    • Intellectual Property Owners Association(IPO),  Annual Meeting Planning Committee (2018)
    • The Copyright Society of the USA, Texas Chapter- Planning Committee (2015-2016)
    • Austin Intellectual Property Law Association 
    • State Bar of Texas, Women in IP Task Force
    • Travis County Bar Association

    Alicia also serves as VP Membership of Young Men's Service League (YMSL) Northwest Hills chaper (2018).  She served on the Board of Directors of Camp Fire Central Texas from 2012-2016.  From 2009-2011, she served on the Board of Directors of Open Door Preschool.   Alicia also has participated in local organizations that provide pro bono legal services to artists, and as a diversity mentor for University of Texas School of Law students.

  • Languages
    • Spanish
  • Publications

    Supreme Court clarifies attorney's fees in copyright

    On June 16, the Supreme Court provided additional guidance regarding how courts should exercise their discretion to award attorney's fees to the prevailing party in cases brought under the Copyright Act. While no single factor controls, the Court held that the objective reasonableness of the losing party's position should be given substantial weight when determining whether to award fees. .

    June 22, 2016

  • News

    Norton Rose Fulbright advises ROFIN-SINAR on major transaction

    Global law firm Norton Rose Fulbright has advised ROFIN-SINAR Technologies, Inc. on an agreement with Coherent, Inc. under which Coherent will acquire ROFN-SINAR for $32.50 per share. The transaction is valued at approx. $942 million and is expected to close within six to nine months, subject to the approval of ROFIN-SINAR stockholders as well as regulatory approvals in the US and other countries..

    March 23, 2016