Susan Smith

Hunton Andrews Kurth LLP

$ $$$

Pennsylvania Avenue Northwest 2200
Washington 20052 DC US

Susan A. Smith handles all phases of trademark representation, as well as patent litigation in federal courts and the ITC. Susan handles all phases of trademark representation, including trademark clearance and opinions, re-branding, applications, registration, management of foreign trademark portfolios, enforcement matters, proceedings before the US Patent and Trademark Office’s Trademark Trial and Appeal Board, brand protection/anti-counterfeiting, and litigation in federal courts and the ITC.

In the patent area, Susan handles patent litigation in federal courts and the ITC as well as, including motions practice, discovery, claim construction, trial, and appeal.

She has had particular experience against non-practicing entities, achieving dismissal of complaints, orders of transfer to the client’s jurisdiction, favorable claim construction rulings, stays of litigation pending reexamination, and early summary judgment.

Experience:

  • AirWair International Ltd. v. Steven Madden, Ltd. (N.D. Cal.). Defended Steve Madden in trade dress infringement action brought by owner of Doc Martens, securing favorable settlement and dismissal of all claims.
  • ServPro Industries v. Zerorez of Phoenix (9th Circuit). Took over representation of ServPro in Ninth Circuit appeal after loss in district court on summary judgment in a trademark case and obtained vacateur of underlying judgment.
  • American Honda v. Lifan Industries (C.D. Cal.). Obtained summary judgment for engine manufacturer against trademark infringement claims brought by Honda in the Central District of California.
  • Allbirds, Inc. v. Steven Madden, Ltd. (N.D. Cal.). Defended Steve Madden in trade dress infringement action brought by Allbirds, securing favorable settlement and dismissal of all claims.
  • HSK LLC v. United States Olympic Committee (D.Minn.). Obtained dismissal of declaratory judgment action against the U.S. Olympic Committee regarding trademarks, social media, and First Amendment issues.
  • Digital Satellite Connections v. Dish Network (D.Colo./Tenth Circuit). For Dish Networks, obtained summary judgment of non-infringement on plaintiff’s claims and obtained summary judgment on Dish’s counterclaims in a trademark infringement action, which was upheld on appeal to Tenth Circuit.
  • Fishman Transducers v. Home Shopping Network (D. Mass.). Defended HSN at trial in the District of Massachusetts against trademark infringement and false advertising claims, resulting in a finding of no damages, which was upheld on appeal to the First Circuit Court of Appeals.
  • The Great Atlantic & Pacific Tea Company v. Walmart Stores (T.T.A.B.). Defended Walmart in a trademark opposition brought by A&P grocery stores regarding Walmart’s highly-valued slogan “Save Money. Live Better.” Secured a dismissal with prejudice.
  • Time Warner, Inc. v. DISH Network, LLC (T.T.A.B.). Represented DISH Network in trademark opposition proceedings before the Trademark Trial and Appeal Board against DirecTV, Cox, Comcast, Hulu and Time Warner.
  • Allied Domecq Spirits & Wine USA, Inc. v. Beira Intl. (D. Nev., S.D. Fla., C.D. Cal., D. Mass.). Obtained temporary restraining orders in three jurisdictions to stop the importation of counterfeit Stolichnaya vodka; assisted federal authorities with the criminal prosecution and conviction of the importer.
  • Robert Bosch LLC v. Illinois Tool Works, Inc. (N.D. Ill.). Represented plaintiff Bosch in trademark litigation against Illinois Tool Works over the FUSION brand.
  • Pilot Corp. v. Fisher-Price (D. Conn.). Successfully represented Mattel/Fisher-Price in a trademark infringement action over the Magna Doodle toy.
  • Constellation Brands v. Arbor Hill Associates (W.D.N.Y.). Represented the World’s largest wine importer in a trademark infringement action and TTAB proceeding concerning the Arbor Mist brand.
  • Handling US trademark clearances and trademark prosecution for Volkswagen and Audi brands.
  • Managing worldwide trademark portfolio of Steve Madden and Betsey Johnson brands.
    Handled major re-branding efforts, including the name change of CitiFinancial to OneMain Financial, the rebranding of Extended Stay Hotels, and the name change of AIG to Chartis, which involved a trademark clearance and application filing campaign in 180 countries.
  • Managing the trademark portfolio of the US Olympic Committee, including enforcement of trademark rights and opposition proceedings.
  • Conducted trade dress and trademark clearances for Walmart, including Walmart’s repackaging of its Great Value and Equate lines.
  • Secunded to Apple, Inc. to serve as in-house trademark counsel, working on US and foreign trademark clearance and prosecution matters.
  • After transferring the case from the District of New Jersey, argued early dispositive motion of claim construction and invalidity to Judge Hood of the Eastern District of Michigan, resulting in a grant of summary judgment and dismissal of case. Service Reminder LLC v. Volkswagen Group of America, Inc. (D. NJ, E.D. Mich.).
  • Argued claim construction to Judge Love in the Eastern District of Texas, obtaining favorable constructions on several key terms. Norman IP Holdings, LLC v. Lexmark International, Inc. (E.D. Tex.).
  • Obtained dismissal of two patents and a grant of summary judgment of non-infringement on the third in the Eastern District of Texas; drafted successful appellate briefs to the Federal Circuit. MHL Tek v. Nissan Motor Co. (E.D. Tex., Fed. Cir.).
  • Represented Volkswagen at trial in the Eastern District of Texas and drafted associated appellate briefs, leading to favorable settlement. Affinity Labs of Texas, LLC v. BMW North America, LLC (E.D. Tex., Fed. Cir.).
  • Defended Audi AG in an ITC action brought by a non-practicing entity, achieving dismissal of all claims; also handling the district court litigation, obtaining a transfer from D. Del and a stay pending reexamination. Beacon Navigation GmbH v. Audi AG (ITC, D. Del., E. D. Mich.).
  • Obtained summary judgment of non-infringement for international cosmetics company. International Flora Technologies, Ltd. v. Clarins U.S.A., Inc. (D. Ariz.).
  • Obtained summary judgment regarding ownership of a patent portfolio related to DNA molecular combing technology. Institut Pasteur v. Simon(E.D. Pa.).

EDUCATION:

  • JD, Washington University School of Law
  • BA, International Relations, Brown University

BAR ADMISSIONS:

  • District of Columbia
  • Maryland

COURT ADMISSIONS:

  • US District Court, Central District of California
  • US District Court, Northern District of California
  • US District Court, Southern District of California
  • US District Court, Eastern District of Michigan
  • US Court of Appeals, First Circuit
  • US Court of Appeals, Third Circuit
  • US Court of Appeals, Ninth Circuit
  • US Court of Appeals, Tenth Circuit
  • US Court of Appeals, Federal Circuit

Memberships:

  • State Bar of California
  • Bar Association of the District of Columbia
  • Maryland State Bar Association
  • American Intellectual Property Law Association

Cost

Rate : $$$$

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Pennsylvania Avenue Northwest 2200
Washington 20052 DC US
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Broadway 42
New York 10006 NY US
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