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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

A recent TTAB case addresses the issue of functionality and protection of design. In the case In re Navy Exchange Service Command, (“NEXCOM”), the TTAB issued a non-precedential decision on September 29, 2012 in which it reversed the Examining Attorney's refusal to register four irregular block-shaped, multi-colored pixilated pattern design marks that the US Navy used on clothing and fabric.
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As you may recall, we asked the question in a recent blog post “Are You Willing to Pay $22,500 to Download A Song? " Well, we now ask "Are you willing to pay $9250 to download a song?" 
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A few weeks ago, the Second Circuit's ruling in the Louboutin decision made clear that color as a trademark can be protected in the fashion industry.  Recently, Lululemon has sued Calvin Klein for design patent infringement over the design of yoga pants.
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In our August 14th blog, we explained why just because you can copy something from the Internet, doesn’t mean you should copy from the Internet. A case on this very issue that has been around for several years involved the well-known “Hope” poster of President Obama’s face made during the 2008 campaign.
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In its recent decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., the Second Circuit held there was no "per se rule that would deny protection for use of a single color as a trademark in a particular industrial context."
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It appears that Newt Gingrich and Frankie Sullivan, a member of the rock band Survivor, and his company Rude Music , have reached a tentative settlement in the latter’s copyright infringement suits against Gingrich for use of the song "Eye of the Tiger" during Gingrich’s presidential campaign bid.
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The August 23, 2012 decision in Song BMG Music Entertainment v. Tenenbaum, the most recent in this extended litigation, leaves no doubt that individuals who download music and distribute it without proper authorization through peer-to-peer file sharing sites are subject to liability for copyright infringement and payment of substantial statutory damages for doing so.
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In a number of recent cases, individual photographers have successfully sued third parties for unauthorized reproduction and use of photographs, particularly those from stock photography sources.
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On Friday, August 10, 2012, Google announced that it was changing its search algorithms so that websites with high numbers of valid copyright infringement removal notices would appear much lower in the search results.
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On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack" in, at least, Las Vegas and Manhattan.
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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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