Susan Okin Goldsmith

Ranked in United States: New Jersey
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

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Richly resourced in the IP space, McCarter & English designs and implements total solutions for rights holders thanks to an interdisciplinary approach which sees experts in different areas of IP law collaborate to protect, enforce and monetise clients’ diverse portfolios. Strengthening brands at a global level through finely calibrated multi-jurisdictional strategies is a forte of the group, which takes its cue in this regard from Susan Okin Goldsmith, a New Jersey partner with a sage business head on her shoulders and abundant experience across the trademark lifecycle. Intricate and interesting instructions frequently land on her desk due to her “thoroughness, creativity and efficiency”; she is currently representing Multi Access at the TTAB in the US leg of a global battle over rights to the mark WONG LO KAT for a Chinese herbal tea sold in the United States for over a century. Michael Friscia is another seasoned team member who also makes regular – and winning – appearances at the TTAB. A prosecution maestro, Friscia handles the global portfolio of a top toy and collectibles company and takes care of the Graceland portfolio on behalf of Elvis Presley Enterprises. They are joined in the WTR 1000 this year by special counsel Kelly Garrone, who has done much to advance the team’s profile on all contentious and non-contentious fronts. The top trial lawyer on deck is Scott Christie, whose recent victories include a multimillion-dollar damages award plus legal costs award for a leading residential and commercial pool company.

Susan Okin Goldsmith's Profile

Susan Okin Goldsmith focuses her practice on intellectual property, including domestic and foreign trademark strategy, domestic and foreign trademark clearance and registration, trademark opposition and cancellation practice, infringement matters and IP licensing. Ms Goldsmith has extensive experience addressing cybersquatting, including numerous Uniform Domain Name Dispute Resolution Policy actions. She also handles a variety of other IP-related matters, including software and other technology licensing, e-commerce and internet use and abuse, and issues involving international trade.

Ms Goldsmith brings a deep understanding to transactions involving IP assets, thanks to her extensive experience in corporate and commercial business transactions and joint ventures. She has long represented start-ups and emerging growth companies, as well as Fortune 500 enterprises. She was co-chair of the Software Licensing Subcommittee of the Licensing Executives Society United States/Canada for a number of years and liaison from its high-tech sector to the Licensing Executives Society International (LESI). She has been active in the LESI High Technology Committee for Information Technology and Software and the LESI Trademarks, Merchandising and Design Committee.

Ms Goldsmith is a graduate of the Rutgers School of Law (Newark) and the University of Pennsylvania Wharton School of Business, where she majored in marketing. She is currently president and trustee of the alumni association, the Wharton Club of New Jersey.

Ms Goldsmith has been outside counsel to a major defence contractor regarding domestic and foreign trademark matters, including Lockheed Martin Corporation v Raytheon Company (Oppositions 91167189 and 91174512 (TTAB 27 September 2011)) (‘Paveway’ is generic for laser-guided bombs). She also served as outside counsel in the widely cited In re Dial A Mattress Operating Corp (240 F 3d 1341 (Fed Cir 2000)) (1-888-MATTRESS is not generic, can acquire secondary meaning). She has also handled numerous other TTAB actions, including In re Telco Solutions, Inc, Serial Nos 85593717 and 85593727 (TTAB 12 August 2013).

Firm Profile

McCarter & English LLP is a firm of more than 375 lawyers with offices in Boston, Hartford, Stamford, New York, Newark, East Brunswick, Philadelphia, Wilmington and Washington DC. For 175 years, McCarter’s clients have come first, with an emphasis on their business objectives and priorities. The firm understands its clients’ businesses, stays on top of their frequently changing industries and markets, and implements strategies that will lead to success.

IP overview

The IP practice at McCarter is ranked among the 100 largest IP practices in the United States, according to IP Law360. The group has more than 100 IP lawyers, technical specialists and patent agents. The IP group’s deep bench has attracted a wide range of companies throughout the world, which are diverse in both geography and industry. The firm protects everything from celebrity designer brands to sport and haute couture footwear, pharmaceuticals, food and nutrition brands, cosmetics, airlines, consumer goods and personal care products. The group has great strength in representing clients in high-profile trademark litigation and technically complex patent litigation.

Trademarks, copyright and trade secrets

Building and protecting a company’s brand and image are essential to business success. The IP group strategically implements domestic and international programmes to advance clients’ brand identity and reputation. The trademark attorneys not only handle global brand portfolios from the inception of a client’s intellectual property, but they also help clients to build and strengthen their valuable market position. The firm is experienced in protecting famous brands from infringers regardless of where they reside and litigating IP matters in courts in the United States and throughout the world, including obtaining injunctive relief, asset restraints and other remedies for its clients. As a result of representing both national and international clients, the IP group has extensive experience addressing infringement and related matters (eg, distribution, licensing and manufacturing) that cross international borders, including effectuating multi-jurisdictional litigation and enforcement. The firm is a leader in trademark protection, anti-counterfeiting, technology-related transactions, patents and litigation.

McCarter is attuned to the special trademark issues faced by pharmaceutical and biotechnology companies and is experienced in guiding them through the process. As new technologies continue to stretch the boundaries of traditional copyright law, the IP team provides expert counsel to clients on employing copyright to protect their valuable assets (eg, intangible data) and represents clients in licensing transactions. The team advises clients on the requirements for an effective trade secret protection programme and on protection against unfair competition by former employees or business partners, as well as by competitors. Our experience in litigating trade secret and unfair competition cases gives clients an advantage when disputes arise.

Global brand strategists

McCarter’s partners are known in more than 70 countries for developing and executing unique global brand strategies. Over the past 30 years, team members have developed an extraordinary network of attorneys, government officials, customs officers and law enforcement personnel who help get things done for the firm’s clients. Partners have decades of experience establishing worldwide programmes to protect valuable IP rights, including trademarks, trade dress and product designs, trade secrets and copyright. The group has specialised capabilities for dealing with issues relating to the Internet, including dealing with cybersquatters and internet counterfeiters on a cost-efficient basis; working with domestic and foreign companies to deal with foreign-based websites and public auction and social media platforms; conducting successful lawsuits and UDRP actions against domestic and foreign website owners; and developing proprietary forensic tools for tracking both the success of takedown programmes and offending URLs, including when they resurface. The firm is known as the ‘go to’ firm in dealing with these types of IP issues around the world.

Patent prosecution and IP litigation

McCarter’s patent attorneys and professionals have industry experience and graduate degrees in relevant science and engineering fields. McCarter’s IP group is active in all facets of the high-tech and life sciences sectors, including biotechnology, pharmacology, chemistry, nanotechnology, optoelectronics, robotics, medical devices, telecoms, advanced control systems, green technologies, biometrics, software, consumer products and a range of defence, aerospace and energy technologies. McCarter’s technical expertise extends across all disciplines, providing a depth and breadth of experience that ensures effective and efficient IP counselling.

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