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Susan Upton Douglass

212-813-5995
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Practice Description
Trademark counseling, searching, filing, and general strategies; trademark practice before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board; conflict resolution; negotiating and drafting license agreements, web site development agreements, contract manufacturing agreements, merchandising agreements, and the like; copyright counseling; filing copyright applications.

Education
University of Chicago (B.A., with honors, 1977); New York University School of Law (J.D., 1980).

Professional Activities
Member: U.S. Department of Commerce-Public Advisory Committee for Trademarks, 1997-1998; International Trademark Association (Member, U.S. Patent and Trademark Office Committee, 1985-1988, 1989-1991, 1993-1999, 2002-2005; Chair, Subcommittee on U.S. Patent and Trademark Office 1986-1988, 1989-1991, 1995-1999; U.S. Legislative Analysis Subcommittee 1999-2001; Fraudulent Trademark Filings 2006-2007); Copyright Society of the U.S.A.

Adjunct Professor: New York City Technical College, 1991, 1993 (Trademark and Copyright Law).

Honors
Recognized in the 2008 edition of Guide to the World's Leading Trade Mark Law Practitioners, published by Euromoney Legal Media Group; Included in Who's Who Legal - Trademarks.

Named as one of "The Trademark Experts' Experts" in the July/August issue of World Trademark Review.

Admissions
New York State
United States Court of Appeals for the Federal Circuit
United States District Courts for the Southern and Eastern Districts of New York

Speaking Engagements
June 2008: The New York Intellectual Property Law Association, Hot Topics in Trademark Law, “Clearance Conundrums: Strategies for Dealing with Blocking Marks”

April 2007: The American Bar Association 22nd Annual Intellectual Property Law Conference: Recent Developments in Trademark Law and Practice - Filings Under the Madrid Protocol

October 2006: New York State Bar Association, Intellectual Property in Action: A look at the Practical Side of, and Current Controversies in, Intellectual Property Law: Intellectual Property Protection Strategies

October 2005: American Bar Association Forum on Franchising, Bridging the Divide: Copyright Basics”

February 2003: Practising Law Institute, Navigating Trademark Trial & Appeal Board Practice 2003: Settlement, Arbitration, and Other Pre-Trial Dispositions of Contested Proceedings

February 2001 and February 2002: International Trademark Association, Trademark Basics Forum: Trademark Office Practice, a two-hour presentation, along with a 55-page book chapter on this topic, presented at a two-day forum in both 2001 and 2002

Published Works

Overview of Basic Principles of Trademark Law. How to Handle Basic Copyright and Trademark Problems
PLI, 1989, 1990, reprinted in 20 The Lawyer’s Brief, Issue 21 (Business Laws, Inc., 1990)
Co-author:Barbara A. Solomon
Trademark Protection: Maximizing Benefits Under the Trademark Law
International Franchise Association 24th Annual Legal Symposium
Trademark Searching is a Risky Business
New York Law Journal, p. 1
Color Me Happy: The Supreme Court Rules on the Trademark Registrability of Color
7 The Journal of Proprietary Rights 2
Music Sampling: More Than Digital Theft?
Copyright World, Aug. 1998
Co-author:Craig S. Mende
Trademark and Copyright Licensing for the Non-Specialist 2000
Practising Law Institute
Co-author:J. Allison Strickland
Deconstructing Music Sampling
New York Law Journal (Intellectual Property Supplement), November 3, 1997
Co-author:Craig S. Mende
Ch. 5 - Trademark Prosecution
Trademark Law Basics (INTA 2001, 2002)
Trademark Prosecution
Navigating Trademark Trial & Appeal Board Practice 2003
PLI 2003
Twenty Questions Copyright Tips and Traps...Don't Trust Your Intuition
A Dozen Questions on Copyright Law
Women’s Business NY, p. 10 (May 2003)
U.S. Application Practice Pointers
The International Who’s Who of Trademark Lawyers (2d Ed. 2004)
Ch. 4 - Copyrights
The Intellectual Property Handbook: A Practical Guide for Franchise, Business and IP Counsel (ABA 2005)
Hey They’re Playing My Song! - Litigating Music Copyrights
New York Law Journal (Litigation Supplement), No. 51, July 14, 1997
Co-author:Craig S. Mende
Filings Under the Madrid Protocol
Presented at the 22nd Annual American Bar Association Intellectual Property Law Conference