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Susan Neuberger Weller

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[email protected]

+1.202.585.3510

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Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical excellence as well as her ongoing commitment to pro bono and community service work.

Susan has managed the firm’s Trademark Practice for over 20 years. For over 30 years, her practice has involved all aspects of intellectual property and related corporate business transactions, with a particular emphasis on domestic and international trademark and copyright searching, prosecution, enforcement, counseling, and litigation. She specializes in trademark, copyright, domain name, trade dress, and related areas of internet, e-commerce, unfair competition, customs, and advertising law, as well as intellectual property administrative litigation proceedings before the US Trademark Trial and Appeal Board, Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings before ICANN, and federal civil litigation.

Her practice also encompasses intellectual property licensing, trade secrets, establishing corporate intellectual property programs, and conducting corporate audits and domestic and international due diligence investigations. She works with IP firms worldwide in protecting and enforcing her clients’ IP rights.

Susan has served as an Associate mentor and advisor for many years. Susan represents the firm as well in trademark and copyright matters.

Throughout her career, Susan has been an active writer and speaker. Susan has authored and contributed to numerous intellectual property books and publications and has served as an intellectual property commentator on Court TV, in the Wall Street Journal, the New York Times, the Washington Post, and in other national and regional publications. She frequently presents and lectures on all aspects of intellectual property.

Susan participates in many professional and community service organizations. Her commitment to pro bono work for clients has been publicly recognized and is highlighted annually in the firm’s annual Pro Bono Report. She has also been recognized by many different organizations for her professional excellence and ethics.

Susan has been active for many years in the International Trademark Association (INTA), has served on numerous INTA committees and task forces, and was an editor for The Trademark Reporter. In addition, she has participated in the intellectual property activities of the American Intellectual Property Law Association, the American Bar Association, the New York Intellectual Property Law Association, and the DC and Virginia bar associations. She has also served on several committees of the Technology Council of Maryland.

Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical excellence as well as her ongoing commitment to pro bono and community service work.

Experience

  • Represented NxStage Medical in successfully challenging the domain name filing in Chile of nxstage.cl.
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viewpoints

The iconic “Raising the Flag at Ground Zero” photo of firemen raising an American flag on September 11, 2001, which appeared on the cover of The Record newspaper and other newspapers on September 12, is at the heart of a lawsuit filed in Federal District Court in New York.
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A federal jury in New York has found Agence France-Presse and Getty Images Inc. willful in their infringement of Daniel Morel’s copyrights in eight photographs of the 2010 Haiti earthquake, and ordered them to pay damages of $1.2 million.
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For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.
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Racial and ethnic disparagement is a hot topic at the Trademark Trial and Appeal Board these days. While a decision is still pending in the latest cancellation action involving the long disputed WASHINGTON REDSKINS professional football team marks, the Board in In re Simon Shiao Tam, recently affirmed a federal trademark examiner’s refusal to register THE SLANTS as a mark for an Oregon rock band composed of Asian Americans on grounds that it was a derogatory slang phrase for people of Asian descent.
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The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.
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he Wall Street Journal ran a print article on July 18, 2013 titled “What’s Behind Those Quirky Startup Names?” in which the author Lindsey Gellman discussed the derivation behind unique startup names such as Mibblio, Kaggle, Shodogg, and Zaarly.
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When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games, Fisher-Price® baby toys, and Lego® blocks.
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Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3.
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It took eight years of negotiations, but Croatia will  finally join the  European Community effective  July 1, 2013. This is good news for those who  own or seek trademark and design protection through the European Community system since protection will now be expanded to cover  28 Member States.
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Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site.
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News & Press

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NEW YORK, SAN DIEGO, and WASHINGTON, DC - Mintz has been recognized in the 2024 edition of WTR 1000: The World’s Leading Trademark Professionals, marking the fourth consecutive year of acknowledgement by the World Trademark Review. This guide identifies the top trademark professionals and firms in over 80 jurisdictions worldwide. This year, WTR ranked Mintz in New York as a leading firm for “Enforcement and Litigation” and “Prosecution and Strategy.”

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Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.

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WASHINGTON, DC – Mintz is pleased to announce the inclusion of five Members to the 2023 Washington, D.C. Super Lawyers list.

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NEW YORK, SAN DIEGO, and WASHINGTON, D.C. – Mintz has been recognized in the 2023 edition of “WTR 1000: The World’s Leading Trademark Professionals”—a unique guide that identifies the top trademark professionals in key jurisdictions around the globe.

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Best Lawyers® recognized 108 firm attorneys in the 2023 edition of The Best Lawyers in America©. Notably, two Mintz attorneys – Poonam Patidar and Scott M. Stanton – received 2023 “Lawyer of the Year” awards, and 28 firm attorneys were included in the inaugural edition of Best Lawyers: Ones to Watch.

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Mintz Member Susan Weller was quoted in an article published by Law360 discussing the latest trend of misguided trademark applications surrounding COVID-19 and the considerations by trademark lawyers.
Susan Weller, who currently manages Mintz’s Trademark & Copyright Practice, provides commentary in this feature article looking at whether or not the U.S. Supreme Court will revive a federal ban on the registration of profane trademarks.
Mintz is pleased to announce that eight attorneys have been named Washington, D.C. Super Lawyers for 2018 and three others have been named Washington, D.C. Rising Stars. The annual publication identifies lawyers who have attained a high degree of peer recognition and professional achievement.
Law360 published an article discussing BuzzFeed’s decision to drop the “all the news” slogan after being threatened with legal action by the New York Times, thus avoiding a trademark fight. Susan Weller, Mintz Washington, DC Member, is one of the sources quoted in the article discussing the case.
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Mintz Member Susan Weller is featured in this Law360 article on the U.S. Supreme Court’s decision to rule in favor of the rock band “The Slants”. The court decided the disparagement clause of the Lanham Act was in direct violation of the First Amendment.
Susan Weller, a Member of Mintz’s Washington, DC office, is featured in an IP Watchdog article on the U.S. Supreme Court’s decision in the Matal v. Tam trademark case. The Supreme Court ruled that the disparagement clause was in violation of the First Amendment. 
Eight Mintz attorneys have been named Washington, D.C. Super Lawyers for 2017 and four have been named Washington, D.C. Rising Stars. The list will be published in a special advertising supplement in The Washington Post Magazine and in a stand-alone magazine, Washington D.C. Super Lawyers Magazine.
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This article discusses Lee v. Tam, a Supreme Court case involving the band The Slants in their attempt to trademark their name, in opposition to the Lanham Act, which denies trademark protection of any work or name that disparaged someone.
Susan Neuberger Weller is quoted in this Managing Intellectual Property article addressing Lee v. Tam, a U.S. Supreme Court case involving the band The Slants in their attempt to trademark their name and examining the arguments made and how the court may rule.
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Susan Neuberger Weller is among sources quoted in this article discussing a high-profile trademark case involving the Washington Redskins and the band The Slants.
Susan Neuberger Weller, a Member of the Intellectual Property Practice at Mintz, is speaking at the 2016 World Intellectual Property Organization Summer School presented by the U.S. Patent and Trademark Office Global Intellectual Property Academy.
Susan Neuberger Weller, Chair of the Trademark Law Practice, is featured in this Law360 article on being named to Law360’s Intellectual Property Editorial Advisory Board.
Seven Mintz attorneys have been named Washington, D.C. Super Lawyers for 2015 and five have been named Washington, D.C. Rising Stars. The list will be published in a special advertising supplement in Washington Post Magazine and in a stand-alone Washington D.C. Super Lawyers Magazine.
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Events & Speaking

Speaker
Jul
23
2015

World Intellectual Property Organization Academy Summer School

WIPO and United States Patent & Trademark Office

Alexandria, VA

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Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical excellence as well as her ongoing commitment to pro bono and community service work.

Recognition & Awards

  • Ranked in World Trademark Review: WTR 1000 as Silver tier in prosecution and strategy for D.C. Metro Region (2024)

  • Identified in Best Lawyers in America (2022-2023)

  • World Trademark Review: WTR 1000 Leading Trademark Practitioners (2022)

  • Included on the Washington DC Super Lawyers: Intellectual Property list (2007 – 2010, 2013 – 2024)

  • Best Lawyers in America: Patent Law (2022-2024)

  • Included on the Virginia Super Lawyers: Intellectual Property list (2006)

  • Legal Media Group: World’s Leading Trade Mark Practitioners

  • Legal Media Group: World’s Leading Women in Business Law

  • American Registry: America's Most Honored Professionals

  • American Registry: Top Attorneys in the Washington, DC Metro Area

  • Arrive magazine: “Top Women Lawyers in the Northeast”

  • Who’s Who Legal USA: Trademarks

  • The United Who’s Who Registry

  • Biltmore Who's Who Among Executives and Professional Women, Honors Edition

  • Guide to the World’s Leading Trade Mark Law Practitioners

  • Martindale-Hubbell AV Preeminent

  • Excellence in legal writing award, International Trademark Association

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Susan currently manages the firm’s Trademark & Copyright Practice. Her extensive experience assisting clients with securing and protecting IP assets spans the globe. She has worked with companies in a vast array of industries, ranging from pharmaceuticals, medical devices, software, and electronics to entertainment, fashion, finance, and education. Susan is a prolific writer and lecturer, is recognized as a leader in the field of IP and is frequently invited to comment on issues of trademark and copyright law. Susan is highly regarded for her professional and ethical excellence as well as her ongoing commitment to pro bono and community service work.

Involvement

  • Member, INTA
  • Member, American Intellectual Property Law Association
  • Member, New York Intellectual Property Law Association
  • Member, DC Bar Association
  • Member, Virginia Bar Association
  • Board of Directors, George Washington Law School Alumni Association
  • George Washington Law Community Art Collection Committee
  • Intellectual property mentor, GWU law students
  • Co-chair, GWU Law School 30th and 35th Class Reunions
  • Host committee, 2nd World Conference of Women’s Shelters (March 2012)
  • Volunteer, Montgomery County Humane Society in Maryland
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