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 15 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 as its affiliated entities 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 participates 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.
Education
- George Washington University (JD)
- University of Miami (BA, English, Economics, Psychology, cum laude)
Experience
- Represented NxStage Medical in successfully challenging the domain name filing in Chile of nxstage.cl.
Recognition & Awards
- Included on the Washington DC Super Lawyers: Intellectual Property list (2007 – 2010, 2013 – 2019)
- 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
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
Recent Insights
Viewpoints
Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark
March 26, 2020|Blog
2nd Circuit Affirms 5Pointz Whitewashing Violated Visual Artists Rights Act
March 25, 2020|Blog
The Masters’ Green Jacket is Now a Registered Trademark
March 10, 2020|Blog
News & Press
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.
Viewpoints
Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark
March 26, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness.
Read more
2nd Circuit Affirms 5Pointz Whitewashing Violated Visual Artists Rights Act
March 25, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw
The Second Circuit recently affirmed that a developer’s whitewashing of street art painted at the “5Pointz” warehouse complex in Long Island City was a violation of the Visual Artists Rights Act (“VARA,” codified at 17 U.S.C. § 106A).
Read more
The Masters’ Green Jacket is Now a Registered Trademark
March 10, 2020 | Blog | By Susan Neuberger Weller
Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships.
Read more
Congress Considers Creation of a “Copyright Claims Board” as an Alternative to Handle Small Copyright Claims
January 8, 2020 | Blog | By Susan Neuberger Weller, Lei Xu, PhD
On Tuesday, October 22, 2019, the US House of Representative approved, by 410-to-6, the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019, introduced under H.R.2426 by Representative Hakeem Jeffries (D-NY). This bill aims to “establish an alternative dispute resolution program for copyright small claims,” and creates the Copyright Claims Board, a body within the U.S. Copyright Office, to decide copyright disputes.
Read more
Whose Game is On? Carrie Underwood and NBC Sued Over SNF Song
July 9, 2019 | Blog | By Susan Neuberger Weller
As any football fan knows, Carrie Underwood has performed the introductory song for Sunday Night Football since 2013. “Waitin’ All Day For Sunday Night” was the introductory song for the 2013 and 2014 seasons, and “Oh Sunday Night” was the song performed in 2015, 2016, and 2017. On September 6, 2018, Sunday Night Football opened with Ms. Underwood singing a new introductory song entitled “Game On." Well, this “Game” is now the subject of a copyright infringement suit in Federal District Court in New York.
Read more
U.S. Supreme Court Adopts Rule Protecting a Trademark Licensee’s Ability to Use a Trademark after a Bankrupt Licensor’s Rejection of the License
July 8, 2019 | Blog | By Susan Neuberger Weller, Alexander Roan, Tim McKeon
This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy. The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing.
Read more
U.S. Supreme Court to Review Copyrightability of Privately-Produced Annotated State Statutory Compilations
June 28, 2019 | Blog | By Susan Neuberger Weller, Harold Laidlaw
Earlier this week, the Supreme Court granted the State of Georgia’s petition to review the Eleventh Circuit’s decision in Code Revision Comm'n v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018). In that case, the Eleventh Circuit held that the privately-compiled but officially-sanctioned and adopted Official Code of Georgia Annotated (OCGA) was not protected by copyright under the “government edicts” doctrine.
Read more
FUCT? You Heard That Right: Refusing to Register “Scandalous” and “Immoral” Trademarks is Unconstitutional
June 27, 2019 | Blog | By Susan Neuberger Weller
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019). Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.
Read more
Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the Cannabis Industry
June 11, 2019 | Blog | By Susan Neuberger Weller, Kathryn Lafferty Ignash
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and services. In response to the Bill’s enactment on December 20, 2018, the United States Patent and Trademark Office (USPTO) issued a new examination guide to clarify its examination procedures involving hemp goods and services. For businesses in the cannabis industry, the examination guide (recently issued on May 2, 2019) will impact the viability of federal trademark applications filed on or after December 20, 2018 that were once previously barred.
Read more
The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?
March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach
The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.
Read more
News & Press
No, Seriously, Don't Try To 'Trademark' Coronavirus
March 19, 2020 | Law360
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.
Ban On 'Scandalous' TMs Is Probably Dead For Good
September 18, 2018 | Law360
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.
After NYT Challenge, BuzzFeed Drops 'All The News' Slogan
October 12, 2017 | Law360
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.
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.
Racial slurs, free speech at issue in 'Slants' trademark case
February 1, 2017
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.
US Supreme Court Examines Many Angles in Slants Oral Arguments
January 22, 2017 | http://www.managingip.com/Article/3655973/US-Supreme-Court-examines-many-angles-in-Slants-oral-arguments.html Managing Intellectual Property
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.
Offensive TMs At High Court: Everything You Need To Know
January 17, 2017
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.
Law360 Intellectual Property Editorial Advisory Board
February 29, 2016
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.
Events
Speaker
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