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Susan E. Hollander

Partner
+1.415.882.8058
Fax +1.415.882.8220
+1.650.798.6722
Fax +1.650.798.6701

Susan Hollander has more than 20 years of experience in all aspects of intellectual property law, including complex litigation in trademark and copyright infringement, unfair competition, trade dress and false advertising cases. She is particularly known for helping clients prevent the genericism and dilution of their brands and has been responsible for numerous reported trademark decisions, including precedent-setting jury verdicts.

She has extensive experience practicing before the Patent and Trademark Office and the Trademark Trial and Appeal Board, as well as district and appellate courts throughout the United States. She has managed international and U.S. prosecution and maintenance of trademark applications and registrations for diverse industries, and handled comprehensive enforcement efforts in protecting and policing intellectual property rights. She also has extensive experience in overseeing trademark surveys on all issues relating to the defense of trademark rights and has negotiated numerous trademark settlement agreements and license agreements.

Ms. Hollander has performed these services for a wide variety of companies, including those involved in technology, internet, retail, consumer products and manufacturing, as well as renowned artists, food, wine, and apparel companies, state and local agencies, financial institutions, health care organizations and entertainment companies.

Ms. Hollander has represented: HTC Corporation; T-Mobile; James Hardie Building Products, Inc.; Scotts Miracle Gro; Xilinx Semiconductor; Chicken of the Sea International; ADP Payroll; Francis Ford Coppola Winery; Emerson Electric; 24 Hour Fitness; AFLAC; Cuvaison Vineyards; Smith & Hawken; Sola Optical; Electric Entertainment; and Cosmic Debris.

Achievements

  • Selected “Top 100 Intellectual Property Litigators in California,” Daily Journal.  View announcement here. 
  • Selected “Top Women Litigators in California,” Daily Journal
  • Selected “Top 250 Women in IP” Managing Intellectual Property - IP Stars

Professional/Civic Activities

  • California Bar Association
  • American Bar Association

Speaking Engagements

Ms. Hollander has lectured extensively on trademark developments and trade dress issues. In 2007, she was an adjunct professor at the University of San Francisco School of Law, where she taught copyright law.

Additional Information

  • Ph.D. Candidate, Stanford University, 1984, Stanford University Scholarship.
  • Tri-Union Seafoods, LLC dba Chicken of the Sea Int'l v. Mr. Tuna, Inc. (Southern District of California). Represented Tri-Union International in trademark infringement litigation involving its famous Chicken of the Sea brand against New York-based seafood company, Mr. Tuna, for breach of contract, trademark infringement, trademark dilution, and unfair competition, among other claims. The case resulted in a $9.8 million judgment in favor of the client.
  • Louisiana-Pacific Corporation v. James Hardie Building Products, Inc. (Northern District of California). Represented James Hardie Building Products in a trademark infringement and tortious interference dispute, brought by Louisiana-Pacific. The court dismissed with prejudice Louisiana-Pacific’s claims for tortious interference, and dismissed the infringement claims.
  • Acer Incorporated et al v. Apple Inc. (Trademark and Trial Appeal Board). Represent Taiwan-based smartphone manufacturer HTC Corp. (along with Acer, Samsung, Dell and Nokia) in challenging Apple Inc.'s attempts to obtain trademark registrations for some of its iPhone and iPad designs. The high profile case implicates key trademark issues in functionality, descriptiveness, and genericism involving product configurations.
  • ChaCha Search vs. HTC America Inc. and HTC Corporation (U.S. District Court for Southern Indiana). Represented HTC in its defense of trademark litigation brought by ChaCha Search Inc. The company claimed that it owns the trademark for “ChaCha” in Europe and the U.S. The case was settled to favorably for the client.
  • HTC Corporation et al v. Samsung Electronics (Western District of Washington). Represented HTC in a trademark infringement case against Samsung for their line of mobile devices under the HTC INSPIRE trademark registration. HTC filed suit to assert that its HTC INSPIRE trademark is not confusingly similar to Samsung’s INSPIRATION trademark and does not violate the rights of Samsung under the Lanham Act. The case was settled favorably for the client.
  • State of Florida v. T-Mobile (Trademark and Trial Appeal Board). Represented T-Mobile USA, Inc. in its defense of a trademark cancellation proceeding filed by the State of Florida’s Department of Management Services seeking to cancel T-Mobile’s U.S. SUNCOM trademark registrations. The case was settled favorably for the client.
  • AFLAC (Northern District of California) Represented AFLAC in a copyright infringement action brought before the U.S. District Court for Northern California. The case was brought by an artist claiming infringement of the duck design being used in the client’s “You Don’t Know Quack” ad campaign. The case was settled favorably for the client.
  • Francis Ford Coppola (Northern District of California). Represented the trust of film director Francis Ford Coppola in an infringement lawsuit filed in 2012 against a Novato, CA restaurant that is using a nearly identical name as Coppola’s A Tavola trademark. The case was settled favorably for the client.
  • Scotts v. Pennington Seed (Southern District of Ohio). Represented Miracle Gro in trademark and trade dress infringement action. Defended against genericism counterclaim. The case was settled favorably for the client.
  • Scotts v. Lebanon Seaboard (Southern District of Ohio). Represented Miracle Gro in trademark and trade dress infringement action. Defended against genericism counterclaim and obtained decision precluding introduction of “unclean hands” evidence.
  • Scotts v. Terracycle (District of New Jersey). Represented Miracle Gro in trademark and false advertising suit; settled with press release being issued.
  • Open Source Yoga v. Bikram Choudhury (Northern District of California). Represented Bikram Choudhury in defense of a copyright cancellation claim brought by Open Source Yoga. Obtained a favorable summary judgment ruling for client, establishing the copyrightability of yoga sequences.
  • Kevin Spacey v. Jeff Burgar (Central District of California). Successfully represented Kevin Spacey in cyberpiracy action against foreign internet website operator.
  • Kevin Spacey v. Alberta Hot Rods and Kevin Spacey v. John Zuccarini (National Arbitration Forum) Represented Kevin Spacey in two domain name disputes over “kevinspacey.com” and “kevinspacy.com” (respectively) under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Cases were settled by the UDRP panel, ordering that the domain names be transferred to the client.
  • Duck Walk Vineyards, Inc. v. St. Helena Wine Co., Inc. d/b/a Duckhorn Vineyards (Eastern District of New York). Represented Duckhorn Vineyards in a trademark and trade dress infringement action against Duck Walk Vineyards, Inc. The case was settled favorably for the client.
  • Chicken of the Sea International v. Mermaid Seafoods (District of Connecticut). Represented Chicken of the Sea International in bench trial against Mermaid Seafoods in a motion infringement of the Chicken of the Sea mermaid design. The case was settled favorably for the client.
  • Duckhorn Vineyards v. Duck Pond Cellars (Northern District of California). Successfully defended Duckhorn Vineyards in a trademark and trade dress infringement action against Duck Pond Cellars of Oregon. The case was settled favorably for the client.
  • Newhall Land and Farming Co. v. Easton Investments (Central District of California). Represented the City of Valencia in jury trial and subsequent 9th Circuit appeal protecting the trademark "Valencia" against the defense that VALENCIA was unprotectable as a trademark for being geographically descriptive. Won a $2.3 million trademark infringement jury verdict.
  • Sinai v. the State of California's Bureau of Automotive Repair (Northern District of California). Represented the State of California’s Bureau of Automotive Repair in a copyright infringement claim against Sinai. Obtained summary judgment in favor of client.
  • Cellularm, Inc. v. Bay Alarm Co. (Northern District of California). Represented Bay Alarm Co. in a trademark infringement claim brought on by Cellularm Inc. Obtained summary judgment in favor of client, dismissing Cellularm's claim for actual damages.
  • First Interstate Bancorp v. Stenquist dba First Interstate Lending (Northern District of California). Represented First Interstate Bancorp in two trademark infringement cases against Stenquist (dba First Interstate Lending). Obtained summary judgment in favor of client, dismissing First Interstate Realty's trademark infringement claim and granting summary judgment on First Interstate Bancorp's trademark infringement claim.