Susan A. Smith

Partner

smiths@ballardspahr.com
Tel 202.661.2247
Fax 202.661.2299
Washington, DC

Susan A. Smith is an experienced intellectual property counselor and litigator who advises some of the world’s leading brands on all phases of trademark representation.

Susan has served as trademark counsel to household-name brands such as Apple, Walmart, Steve Madden, Volkswagen, Audi, Dish Networks, and the U.S. Olympic Committee. She advises clients on trademark clearance and opinions, applications, and registration, as well as rebranding, management of foreign trademark portfolios, enforcement matters, and brand protection/anti-counterfeiting. She litigates trademark matters in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board and the International Trade Commission (ITC).

Susan also handles patent litigation in federal courts and before the ITC. She is experienced in motions practice, discovery, claim construction, trial, and appeal. Susan has successfully litigated against non-practicing entities, winning dismissal of complaints and summary judgments, orders of transfer to the client's jurisdiction, favorable claim construction rulings, and stays of litigation.

World Trademark Review 1000 has honored Susan as a leading lawyer in the areas of “enforcement & litigation” and “prosecution & strategy” (2015, 2017-2020). Susan has also been recognized by The US Legal 500 in the areas of “Intellectual Property – Trademarks: litigation” (2013, 2016-2020), “Intellectual Property – Trademarks: non-contentious” (2014-2020) and Patent Litigation: Full Coverage (2018). Susan was named one of D.C.’s “Patent Stars” and “Trademark Stars” (2016-2020) and one of the “Top 250 Women in IP” by Managing Intellectual Property.

Representative Matters

Trademark Experience

  • Managing worldwide trademark portfolio of Steve Madden and Betsey Johnson brands
  • Handling US trademark clearances and trademark prosecution for Volkswagen and Audi brands
  • Managing the trademark portfolio of the US Olympic Committee, including enforcement of trademark rights and opposition proceedings
  • Deckers v. Steve Madden (C.D. Cal.). Defending Steve Madden in trademark and design patent infringement suit brought by the owner of the UGGs brand regarding fuzzy platform slippers.
  • Onyx Enterprises v. Volkswagen (D. NJ). Defending Volkswagen (VW) in high-profile lawsuit seeking to enjoin VW's first ever all-electric vehicle, the ID.4, on trademark infringement grounds
  • U.S. Olympic Committee v. Tempting Brands LLC (TTAB). Opposing registration of the name of the founder of the modern Olympics, Pierre de Coubertin, by a licensing company unaffiliated with the Olympics
  • American Fidelity Insurance Company v. Accident Fund Holdings, Inc. (TTAB). Defending 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 several 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 trademark infringement claims brought by Honda
  • Allbirds, Inc. v. Steven Madden, Ltd. (N.D. Cal.). Secured a 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 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 Home Shopping Network at trial against trademark infringement and false advertising claims, resulting in a finding of no damages. The ruling was upheld on appeal to the First Circuit Court of Appeals.
  • 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 highly valued 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 the world’s largest wine importer in a trademark infringement case and TTAB proceeding regarding the Arbor Mist brand.
  • 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.
  • 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 U.S. and foreign trademark clearance and prosecution matters.

Patent Litigation Experience

  • 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.
  • Beacon Navigation GmbH v. Audi AG (ITC, D. Del., E. D. Mich.) Successfully defended Audi AG in an ITC action brought by a non-practicing entity, achieving dismissal of all claims; also handling litigation in the district court, obtaining a transfer from D. Del and a stay pending reexamination.
  • 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 over lettuce coring technology.

Recognition & Accomplishments

Named a Patent Star and Trademark Star (2016-2020) in District of Columbia in the IP Stars Handbook published by Managing Intellectual Property

Named one of the “Top 250 Women in IP” by Managing Intellectual Property (2019-2020)

Recognized as a Leading Trademark Professional in Enforcement & Litigation and in Prosecution & Strategy, Washington D.C., World Trademark Review 1000 (2015, 2017-2020)

Recognized for Trademarks: Litigation (2013, 2016-2020), Trademarks: Non-contentious (2014-2020) and Patent Litigation: Full Coverage (2018), Legal 500 United States

Publications

Co-author, Chapter 32, United States, International Pharmaceutical Law and Practice, Madelein Kleyn and Louis van Wyk eds., 2020

Washington University in St. Louis School of Law (J.D.)

Brown University (B.A.)

District of Columbia

Maryland

California

U.S. District Court, Central District of California

U.S. District Court, Northern District of California

U.S. District Court, Southern District of California

U.S. District Court, Eastern District of Michigan

U.S. Court of Appeals, First Circuit

U.S. Court of Appeals, Third Circuit

U.S. Court of Appeals, Ninth Circuit

U.S. Court of Appeals, Tenth Circuit

U.S. Court of Appeals, Federal Circuit