Susan M. Schlesinger

Overview

Susan Schlesinger is a Partner at MSS in the Intellectual Property Group and advises on intellectual property litigation, transactions and prosecution with a focus on trademarks, trade dress and copyrights. Her experience over the past two decades covers a wide range of industries including apparel, footwear and related accessories, cosmetics, jewelry, consumer products, food, hospitality, e-commerce, sports, entertainment, alcoholic beverages and cannabis. Just as her experience covers many industries, she works with many clients having diverse interests and goals, from individuals and start-up companies to non-profit organizations and international companies.

Providing practical guidance, she counsels clients on worldwide brand strategies, trademark protection and enforcement tactics. Her practice covers all facets of trademark work – trademark searches and clearance, filing and prosecution of applications, registration maintenance and renewals, global trademark portfolio management, implementing and advising on watch notices, Madrid Protocol filings and international trademark protection. Equally, she advises clients on protection and enforcement of copyrights – filing and prosecuting copyright applications for works including scripts and treatments, musical compositions and recordings, artworks and sculptural works, jewelry, product packaging, websites and computer software. She also records various documents pertaining to copyrights and investigates chain of title involving copyrights.

Ms. Schlesinger litigates disputes involving trademark infringements, copyright infringements, patent infringements, unfair competition, misappropriation, unfair trade practices, trade secrets and other federal and related state law claims. She frequently represents clients in Opposition and Cancellation Proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office and in other adversarial matters, such as filing Letters of Protest and Expungement Proceedings, filing Uniform Domain Name Dispute Resolution Proceedings and drafting and responding to all manner of trademark, trade dress, and copyright cease and desist demands, take down notices and complaints through various online platforms.

Her transactional work includes drafting and negotiating various intellectual property agreements including license agreements, settlement agreements, co-existence agreements, releases, assignments, collaboration agreements, manufacturing and distribution agreements, production agreements, and conducting due diligence on intellectual property assets in business transactions and acquisitions.

Prior Experience

Before joining MSS in 2012, Ms. Schlesinger was in the intellectual property group at McCarter & English, LLP and was with the intellectual property boutique firm, Grimes & Battersby, LLP. Prior to entering the practice of law, Ms. Schlesinger worked in the entertainment industry at Actors’ Equity Association.

Representative Matters

Selected Trademark Trial and Appeal Board Proceedings:

Represented a generic pharmaceutical company in an opposition proceeding filed against four of the company’s trademark applications. The proceeding went through trial resulting in dismissal of the opposition as to all four applications.
Represented a member of an LLC against another member of the LLC in an opposition proceeding involving the company’s trademark. The proceeding went through trial resulting in the opposition being sustained and the application refused registration.
Represented a retail services company in an opposition proceeding brought by Instagram, LLC against the company’s trademark application (ongoing).
Represented a cigar manufacturer in a cancellation proceeding which was granted favorably on summary judgment and the trademark registration was cancelled.

Selected Uniform Domain Name Dispute Resolution Proceedings:

Represented celebrity’s Estate against a third party who had obtained a domain name on the celebrity’s name. The proceeding was granted in favor of the Estate, and the domain name was transferred to the Estate.
Represented a mobile application and communications company against multiple parties who obtained domain names incorporating variants of the company’s trademark. All proceedings were granted in favor of the company resulting in transfer of the domain names to the company.
Represented production company against a third party with a domain name including the company’s trademark for a television show which was successfully transferred to the production company.

Represented multiple clients in copyright disputes involving alleged infringements of photographs which were all favorably resolved.

Represented a production company in a breach of contract matter involving many animation assets resulting in return of the assets to the company.

Represented a licensor in a dispute with a licensing agent over the scope of the relationship resulting in favorable settlement and return of the IP assets.

Represented multiple professional athletes on prosecuting trademarks for various goods and services including apparel, charitable services, sports camps and entertainment services.

Publications

The Law of Merchandise and Character Licensing, 2007 – 2010 (annual contributions)

Multimedia and Technology Licensing Agreements, 2008 – 2009 (annual contributions)