Susan Okin Goldsmith

Partner at McCarter & English LLP

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 from 2012 to 2014 and liaison from its high-tech sector to the Licensing Executives Society International (LESI). She sits on 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 president-elect 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).

Professional associations

  • INTA
  • LES
  • Wharton Business School Alumni Club of New Jersey

Firm details

McCarter & English LLP
Two Tower Centre Boulevard
24th Floor
East Brunswick NJ 08816
United States

Contact details

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