Susan A. Smith

• Steven Madden, Ltd. v. sitiowebnetcy.com, et al. (S.D.N.Y). Obtained TRO against various fraudulent websites purporting to sell Steve Madden products, shutting down websites and obtaining transfer of domain names.
• Bausch & Lomb v. PRN Physician Recommended Pharmaceuticals (D.NJ). Represented PRN in trademark infringement action related to the NutriTears trademark.
• UDRP action re playinginthesand.com (WIPO). Successfully acquired domain name through WIPO action.
  
• Spark Therapeutics v. Bluebird Bio (D. Del.). Represented gene therapy company in trademark infringement suit, including arguing motion for preliminary injunction before Judge William Bryson of the Federal Circuit sitting by designation.
• Deckers v. Steven Madden (C.D. Cal.). Defended Steve Madden in trademark and design patent infringement suit brought by the owner of UGGs brand.
• U.S. Olympic Committee v. Tempting Brands LLC (TTAB). Opposed registration of the name of the founder of the modern Olympics, Pierre de Coubertin, by a company unaffiliated with the Olympics.
• American Fidelity Insurance Company v. Accident Fund Holdings, Inc. (TTAB). Defended insurance company registration and applications for AF marks in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
• Bentley Motors Inc. v. Bio Hazard Inc. (TTAB). Successfully opposed registration of BENT B marks by a manufacturer and seller of drug paraphernalia.
• AirWair International Ltd. v. Steven Madden, Ltd. (N.D. Cal.). Secured favorable settlement and dismissal of all claims for Steve Madden in trade dress infringement action brought by owner of Doc Martens.
• ServPro Industries v. Zerorez of Phoenix (Ninth Circuit). Took over representation of ServPro in a trademark case on appeal after loss in district court on summary judgment and obtained vacateur of underlying judgment.
• American Honda v. Lifan Industries (C.D. Cal.). Won summary judgment for engine manufacturer against trade dress infringement claims brought by Honda.
• Allbirds, Inc. v. Steven Madden, Ltd. (N.D. Cal.). Secured favorable settlement and dismissal of all claims for Steve Madden in trade dress infringement action brought by Allbirds.
• HSK LLC v. United States Olympic Committee (D.Minn.). Defended the U.S. Olympic Committee and obtained dismissal of declaratory judgment action 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 counterclaims against defendant in a trademark infringement action, which was upheld on appeal to Tenth Circuit and included an award of attorneys’ fees.
• Fishman Transducers v. Home Shopping Network (D. Mass.). Defended Home Shopping Network at trial and on appeal against trademark infringement and false advertising claims.
• The Great Atlantic & Pacific Tea Company v. Walmart Stores (TTAB). Secured a dismissal with prejudice on behalf of Walmart in a trademark opposition brought by A&P grocery stores regarding Walmart’s slogan "Save Money. Live Better."
• Time Warner, Inc. v. DISH Network, LLC (TTAB). 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.). Secured temporary restraining orders in three jurisdictions which stopped 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 defended Mattel/Fisher-Price in a trademark infringement action over the Magna Doodle toy.
• Constellation Brands v. Arbor Hill Associates (W.D.N.Y.). Represented wine importer in a trademark infringement case and TTAB proceeding regarding the Arbor Mist brand.

Non-Litigation Trademark Experience Highlights

• Volkswagen: handling U.S. trademark clearances, registration, and enforcement of VW Group brands including Scout Motors, Moia, Audi, Bentley, and Lamborghini.
• Carvana: registered the trade dress of Carvana's buildings and hauler with the U.S. Patent and Trademark Office.
• Steve Madden: managing the worldwide trademark portfolios of Steve Madden family of brands, including Dolce Vita and Betsey Johnson.
• Omnicom/TBWA: managing U.S. and international trademark portfolios for one of the big four advertising agency conglomerates.
• Care Bears: handling worldwide trademark portfolio.
• Walmart: trade dress and trademark clearances for Walmart, including the rebranding of Walmart's Great Value and Equate lines.
• Olympics: managed the trademark portfolio of the U.S. Olympic Committee, including prosecution, enforcement of trademark rights and opposition proceedings.
• Extended Stay Hotels: handled major re-branding efforts.
• AIG: managed worldwide trademark clearance for the name change of AIG to Chartis, which involved a trademark clearance and application filing campaign in 180 countries.
• Saks Fifth Avenue: represented Saks Fifth Avenue in licensing transaction with Authentic Brands regarding BARNEY'S trademarks.
• Apple: handled U.S. and foreign trademark clearance and registration matters.

Patent Litigation

• Bausch & Lomb v. PRN Physician Recommended Pharmaceuticals (D. NJ). Defended maker of Numaqula in patent litigation brought by B+L.
• Beacon Navigation GmbH v. Volkswagen AG, Audi AG (ITC, D. Del., E. D. Mich.) Successfully defended VW and Audi in ITC action, achieving dismissal of all claims; currently handling the litigation in the district court, including obtaining a transfer from D. Del to E.D. Michigan.
• Service Reminder LLC v. Volkswagen Group of America, Inc. (D. NJ, E.D. Mich.) Transferred the case from the District of New Jersey and argued early dispositive motion of claim construction and invalidity to Judge Hood of the Eastern District of Michigan. Secured a grant of summary judgment and dismissal of case.
• Norman IP Holdings, LLC v. Lexmark International, Inc. (E.D. Tex.) In the Eastern District of Texas, argued claim construction to Judge Love, obtaining favorable constructions on several key terms.
• MHL Tek v. Nissan Motor Co. (E.D. Tex., Fed. Cir.) 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.
• Affinity Labs of Texas, LLC v. BMW North America, LLC (E.D. Tex., Fed. Cir.) Obtained a favorable settlement for Volkswagen after representing the company at trial in the Eastern District of Texas and drafting associated appellate briefs.
• International Flora Technologies, Ltd. v. Clarins U.S.A., Inc. (D. Ariz.) Secured summary judgment of non-infringement for an international cosmetics company.
• Institut Pasteur v. Simon (E.D. Pa.) Obtained summary judgment regarding ownership of a patent portfolio related to DNA molecular combing technology.
• Sicom Systems v. Agilent Technologies (D. Del., Fed. Cir.) Obtained dismissal, with prejudice, on behalf of Agilent Technologies, which was affirmed by the Federal Circuit in a seminal decision on standing in patent cases.
• Dole Fresh Vegetables, Inc. v. Elioco Produce, Inc. (Sup. Ct. Cal. Monterey.) Represented Dole in a patent dispute with competitor Fresh Express regarding lettuce coring technology.