Susan Smith has successfully represented firm clients in intellectual property matters involving core technologies, innovations and brands. As counsel to Walmart, Apple Inc., Mercedes-Benz USA, Volkswagen Group, Audi AG, Home Shopping Network, and the Tampa Bay Rays, Ms. Smith regularly advises some of the world’s leading Fortune 500 companies on matters relating to intellectual property litigation and trademark prosecution. Her litigation practice focuses primarily on patent and trademark actions in federal courts. She also counsels clients in the availability and protection of trademarks, as well as the enforcement of trademark rights before the U.S. Trademark Trial and Appeal Board. Additionally, she manages clients’ worldwide trademark portfolios, working with foreign counsel to protect and enforce trademark rights abroad.  Ms. Smith has been recognized as a leading lawyer by World Trademark Review 1000 in the areas of “enforcement & litigation” and “prosecution & strategy” (2014). She has also received recognition from The Legal 500 United States in the area of “Intellectual Property – Trademarks: litigation” (2013) and was named an “IP Star” for the District of Columbia by Managing Intellectual Property (2014). 

Recently, Ms. Smith has implemented large-scale rebranding efforts on an expedited basis. High-profile projects that she has handled include the name change of AIG to Chartis Insurance, which involved a trademark filing campaign of clearance in 180 countries, and the name change of CitiFinancial, the largest consumer loan company in the United States, to OneMain Financial.

Representative Experience

  • Volkswagen AG, Audi AG, and Volkswagen Group of America in a patent infringement action concerning three patents for tire-pressure monitoring systems. Achieved favorable rulings on behalf of clients, including a motion to dismiss on two patents, and a non-infringement ruling on the third patent. MHL Tek v. Nissan Motor Co. (E.D. Tex.)

  • Walmart Played in a trademark opposition challenge brought by A&P grocery stores regarding Walmart’s highly valued slogan “Save Money. Live Better.” Secured a dismissal with prejudice in this action. The Great Atlantic & Pacific Tea Company v. Walmart Stores

  • Institut Pasteur and the Centre National de la Recherche Scientifique in a favorable summary judgment ruling on behalf of clients regarding ownership of a portfolio of 13 patents related to DNA “molecular combing” technology. The ruling confirmed that the world-renowned French research institutions are the rightful owners of the entire portfolio of patents. Institut Pasteur v. Simon (E.D. Pa.)

  • Agilent Technologies in a patent infringement action related to eye pattern mask testing with digital communications analyzers, logic analyzers, and oscilloscopes. Obtained dismissal with prejudice on behalf of client. Upon appeal of this matter, the Federal Circuit affirmed the district court's decision to dismiss with prejudice holding that Sicom did not have standing to maintain the action because it did not have “all substantial rights” in the patent. Sicom Systems v. Agilent Technologies (D. Del., Fed. Cir.)
Practices
Industries
Representative Matters
  • Walmart Played in a trademark opposition challenge brought by A&P grocery stores regarding Walmart’s highly valued slogan “Save Money. Live Better.” Secured a dismissal with prejudice in this action. The Great Atlantic & Pacific Tea Company v. Walmart Stores
Bar and Court Admissions
  • District of Columbia
  • Maryland
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Federal Circuit
Professional Organizations
  • American Intellectual Property Law Association
  • Bar Association of the District of Columbia 
  • Maryland State Bar Association