Claudia A Smith

Counsel at White & Case LLP
Ranked in United States: New York
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Silver - Individuals: prosecution and strategy

White & Case debuts in the New York rankings this year and, as testament to its quality and well-roundedness, features on both the prosecution and litigation tables. Its copyright and trade secrets team add tremendous value through perspicacious global brand development and protection for companies such as leading pharmaceutical entities, retailers and messaging services. Claudia Smith and Stefan Mentzer link up to handle all of Pfizer’s trademark clearances in the United States and assist it with copyright and right of publicity issues in connection with its development and marketing of pharmaceutical products. Smith puts the focus on prosecution and counselling, and “provides practical and actionable advice founded on an understanding of clients’ needs”. “She works extremely hard and is a real asset, with her steady hand and calmness under pressure.” A litigator first and foremost, Mentzer provides invaluable counsel on IP risks.

Claudia A Smith's Profile

Claudia A Smith focuses her practice in the areas of trademark prosecution and counselling. She has extensive experience with US and international trademark counselling and prosecution in industries that range from large corporations to small business owners. She concentrates on analysing searches to determine trademark availability, as well as US and international trademark prosecution, negotiation of consents and coexistence agreements, and managing the recording of assignments and name changes for global trademark portfolios.

Ms Smith also assists clients with due diligence during portfolio acquisitions and divestitures. Her industry experience includes pharmaceuticals, marketing, financial and insurance, clothing, luxury goods and non-profits.

Ms Smith has been recognised for trademark prosecution, clearance and strategy (Silver band) by the World Trademark Review’s annual listing of the world’s leading trademark professionals in 2015, 2016, 2017, 2018 and 2019.

Ms Smith is based in the New York office of White & Case and is a member of the firm’s global IP practice. She is admitted to the New York State Bar. She received her law degree from Fordham University School of Law and her BA from Brooklyn College, City University of New York, graduating cum laude.

“An incredible attorney relied on by many big pharmaceutical companies to clear important products, Claudia Smith of White & Case is top notch.”

Firm Profile

We guide our clients through difficult issues, bringing our insight and judgement to each situation. Our innovative approaches create original solutions to our clients’ most complex domestic and multi-jurisdictional deals and disputes.

By thinking on behalf of our clients every day, we anticipate what they want, provide what they need and build lasting relationships. We do what it takes to help our clients achieve their ambitions.

White & Case is a global law firm with longstanding offices in the markets that matter today. Our on-the-ground experience, our cross-border integration and our depth of local, US and English-qualified lawyers help our clients work with confidence in any one market or across many.

Global IP practice 

Companies around the world – leading pharmaceutical innovators, fast-growing internet and other technology companies, established multinational corporations and early development companies – turn to us for their most important IP needs.

Worldwide, we offer a full range of legal services for the acquisition, commercialisation and enforcement of IP and technology assets in the areas of patents, trademarks and unfair competition, copyrights, trade secrets, sourcing and technology transactions, and data privacy.

From bet-the-company litigation to groundbreaking, cross-border transactions, the IP lawyers in our firm’s global network deliver decades of experience combined with a broad scope of technical expertise. This knowledge base, together with our cross-practice strength and worldwide presence, enables us to advise clients on domestic matters as well as issues spanning multiple jurisdictions.

Our litigators win significant IP cases regardless of the technology involved, as shown by our track record of more than 30 years. We try to resolve cases early and implement various litigation strategies to benefit our clients. If necessary, we try cases before judges and juries.

Our clients rely on us for the deep knowledge more commonly associated with boutique IP firms, combined with the global reach and vast depth of our international practice. We represent some of the world’s leading enterprises, such as Samsung, Google, Amazon, Walmart, Novartis, UCB, Facebook and Pfizer, in a wide variety of IP matters. Top companies in the technology and life sciences space seek out our advice. Our accomplished lawyers have the academic and professional backgrounds to serve our clients’ most complex needs. The IP practice is supported by lawyers with broad technical expertise.

Our team members have technical backgrounds and many have advanced degrees or industry expertise in their fields. We also routinely work on litigation matters, which provides highly relevant and practice experience for shaping client patent portfolios and in developing global licensing and freedom-to-operate clearance strategies.

Key to our team, several of our lawyers are dual-qualified to practise in the United States and in Europe, and represent clients in strategic global portfolio development, enforcement campaigns and licensing transactions in both jurisdictions. We routinely file and prosecute patent applications at the EPO and USPTO, and advise on contested proceedings in both venues.

Trademarks and copyright

We litigate trademark, copyright, unfair competition and false advertising disputes in courts around the world. We represent clients before national trademark offices in trademark opposition and cancellation proceedings. We are also well known for our experience litigating trademark disputes in federal courts around the United States and across the world, with the effective use of survey evidence as a key focus. We represent clients in Trademark, Trial and Appeal Board proceedings, and before the US International Trade Commission in matters involving infringement of US IP rights.

White & Case also provides copyright counsel and litigation services for leading companies and organisations. On behalf of our clients, we advise on strategies for managing copyright-related risks and opportunities. We are involved in the cutting-edge copyright issues of the day. Our firm successfully defended a global financial institution against copyright infringement claims in a Second Circuit case that established a leading precedent on fair use.

Get unlimited access to all WTR content