Susan A. Smith

• Spark Therapeutics, Inc. v. Bluebird Bio, Inc. (D. Del.). Represented leading gene therapy company in trademark infringement suit, including arguing motion for preliminary injunction before Judge William Bryson of the Federal Circuit sitting by designation.
• Represented Saks Fifth Avenue in licensing transaction with Authentic Brands regarding BARNEY’S trademarks.
• 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.
• Deckers v. Steven Madden, Ltd. (C.D. Cal.). Defended Steve Madden in trademark and design patent infringement suit brought by the owner of the UGGs brand regarding fuzzy platform slippers.
• Represented Extended Stay Hotels in major re-branding program.
• 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 licensing 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 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 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 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.
• Managed the trademark portfolio of the US Olympic Committee, including prosecution, enforcement of trademark rights and opposition proceedings.
• 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

• 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 over lettuce coring technology.