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Susan M. Kayser

Partner
+1.202.778.9421
Fax +1.202.778.9100
Susan Kayser is a nationally recognized IP litigator and counselor, having been named an “All Star” by Managing Intellectual Property; an “IP Trailblazer” by the National Law Journal; and consistently recognized by The Legal 500 US and the World Trademark Review as a leading trademark practitioner (both litigation and non-contentious). She services clients in the fashion, luxury, consumer products, food, and automotive industries on trademark, advertising, and copyright matters.

Client Recognition:
  • “She wields a thorough command of the law and relevant procedural rules. Her calm and rational approach has resulted in favourable settlements with difficult parties without the need for the nasty hysterics so often favoured by other counsel.” World Trademark Review 1000 (2018).
  • “…ample experience in the courtroom…” securing permanent injunctive relief and millions in damages. WTR 1000 (2017).
  • “fantastic disputes specialist…whose work on a variety of high-profile contentious briefs has left a string of clients ‘thrilled’” WTR 1000 (2015).
  • “shrewd interlocutory tactics” and “tactical trial lawyering skills.” The Legal 500 US (2010).
  • “…‘amazing support’ in relation to portfolio management” The Legal 500 US (2007).
  • “a solid litigator with broad-based knowledge of trademark law” WTR 1000 (2011).
  • “responsive and thorough” WTR 1000 (2013).
  • “outstanding” and “a true delight to work with” WTR 1000 (2014).
Trademarks

Ms. Kayser has significant experience in obtaining (and defeating) TROs and preliminary injunctions, including those involving contributory infringement and counterfeiting, and ex parte seizures. She handles all aspects of USPTO practice, has won numerous oppositions before the TTAB, and obtained fame decisions, including from the National Arbitration Forum.

Ms. Kayser also provides clients with results-oriented counseling, manages multibillion dollar worldwide trademark portfolios and worldwide clearance projects, serves as lead negotiator for multi-jurisdictional disputes, and leads IP due diligence teams for brand acquisitions.

Advertising 
Ms. Kayser litigates and defends competitor false advertising claims under the Lanham Act. She also counsels clients on compliance with Section 5 of the Federal Trade Commission Act, including testimonials, endorsements, and online advertising, marketing, and social media issues; efficacy claims for sport and health products; and “Made in the USA” claims. She clears advertising and marketing campaigns, including advising on related trademark, copyright, and right of publicity issues. She conducts training for companies on compliance with U.S. advertising laws.

Copyrights
Ms. Kayser represents clients in copyright litigation and counsels on protection and enforcement of original works, including fabric designs, labels, art (paintings and sculptures), photographs, and architectural designs. She also represents clients on moral rights under the Visual Artists Rights Act (VARA).

Activities
Ms. Kayser served on the editorial board of Trademarks & Brands Online. She was also a member of the International Trademark Association North American Global Advisory Council and former chair of the Subcommittee on Trademark Policy and Advocacy for the Enforcement Committee. She is coauthor of the chapter “Copyright Damages” for the treatise Calculating and Proving Damages (Law Journal Press) and has written extensively on the subject of online contributory infringement.

Professional Background

Prior to joining the firm, Ms. Kayser served as a trademark litigator for an international law firm where she represented famous brands. In addition, she also defended against the Lanham Act false advertising claims by competitors. She regularly counseled clients on advertising issues and compliance with Section 5 FTC regulations, including testimonials, endorsements, and online advertising issues, efficacy claims for sport and health products, and "Made in the USA" claims.

Achievements

  • Managing Intellectual Property “All Star” (2014, 2016-2019)
  • National Law Journal “IP Trailblazer” (2014)
  • Lead lawyer for “Standout” trademark litigation Chloé SAS v. SISCOM, The Financial Times, most innovative US litigations (2013)
  • Consistently ranked as a leading trademark litigator by The Legal 500 US survey
  • Consistently recognized by World Trademark Review as leading trademark practitioner

Speaking Engagements

  • Luxury & Fashion Webinar: Trademark, Design and Copyright Update for Fashion Brands, March 21, 2019
  • Blockchain and Trademarks, Strafford CLE, December 4, 2018
  • Madison Avenue Meets Hollywood: Navigating Product Placement Deals in Movies and Television, INTA 2018 Annual Meeting, Seattle, May 21, 2018
  • Food Labeling post-POM Wonderful LLC v. Coca-Cola Co., panelist, D.C. Bar Washington, D.C., July 29, 2014
  • The Presumption of Irreparable Harm:  Don’t Stop Believing, INTA 2014 Annual Conference Hong Kong, May 12, 2014
  • Executive Roundtable Series: Protecting Your Business Against Online Counterfeiting and Patent Trolls, Washington, D.C., February 26, 2014
  • E-Discovery: Obtaining Electronic Documents Without Glitches, INTA Leadership, Miami Beach, Florida, November 2013
  • Executive Roundtable Series: Hot Topics in Trademark, False Advertising, and Copyright Law, Washington, D.C., April 27, 2012
  • Winning (And Managing Costs In) False Advertising and Other Lanham Act Litigation Webinar, April 19, 2012
  • Madrid Protocol - Is It Working For U.S. Brand Owners? panelist, INTA Annual Conference Seattle, Washington, May 2009
  • INTA - Trademark Administrators Conference, Madrid Protocol, panelist, Arlington, Virginia, October 2008
  • What’s New in Patent, Trademark and Insurance Coverage Law, panelist, Washington Metropolitan Association of Corporate Counsel (WMACCA), Falls Church, Virginia, April 2008
  • Intellectual Property: Assessing Current and Proposed Reforms in Patent, Trademark, and Copyright, panelist, ABA Section of Administrative Law and Regulatory Practice, The ABA Section of Intellectual Property Law Washington, D.C., October 25, 2007
  • Federal Trademark Dilution Revision Act, moderator, INTA Roundtable, Washington, D.C., April 2007
Publications
  • World Intellectual Property Review (WIPR), ‘Physical, conceptual, distinctive’-why the Batmobile is copyrightable (November 26, 2015)
  • E-Commerce Law Reports - volume 15 issue 06, Multi Time Mach. Inc. v. Amazon.com Inc. (November 2015)
  • Operation Choke Point: a tool against online counterfeiting, E-Commerce Law & Policy - PDF Only Ql (May 2014)
  • Combating Contributory Infringement on the Internet, INTA Bulletin - PDF Only (May 1, 2014)
  • The duties of online service providers, TBO Newsletter (March 2014)
  • Counterfeiting: Chloé SAS et al v. Sawabeh Information Services Co., et al., E Commerce Law Reports, Vol. 13, Issue 06 (December 2013)
  • Second Circuit Clarifies Copyright Fair Use Standard (May 2013)
  • FTC Updates Guidance on Online Advertising Disclosures (March 2013)
  • Calculating and Proving Damages, Chapter 8, coauthor, Copyright Damages, Law Journal Press (2011)
  • Recent Copyright Case Developments (August 5, 2011)
  • Sui Generis Right for Databases. Revamped or Redundant? coauthor, IP Intelligence (Fall 2009)
  • 2007 Trademark Law Decisions of the Federal Circuit, coauthor, 57 Am. U.L. Rev. 1039 (2008)
  • Resolving Trademark Disputes Through ADR, Inside the Minds: Intellectual Property Dispute Resolution, Aspatore (2008)
  • Prospective Franchisee Not Covered by Connecticut Act, The Franchise Lawyer, Vol. 3, No.4. (Spring 2000)
  • Summarized opinions of the United States Court of Appeals for the District of Columbia Circuit and the District of Columbia Court of Appeals, Case Digests, Legal Times (November 1997–September 1999)
  • Advertising Fund Disclosures: Lessons Learned From the Meineke Case, coauthor, Franchise Update, 2nd Quarter 1997, at 34, 36 (1997)
  • Back Away From the Benefits, review of the Supreme Court’s 1996–97 term, Legal Times, S48 (July 14, 1997)
  • On behalf of the Kipling brand, secured TRO and preliminary injunction against multiple manufacturers and sellers infringing the trade dress of Kipling handbags and travel bags.
  • On behalf of multi-national consumer goods corporation, the Procter & Gamble Co., secured a consent judgment and permanent injunction against a private-label manufacturer infringing the trade dress packaging and trademarks of a successful teeth whitening line of products.
  • On behalf of the Kipling, Timberland, and Nautica brands, obtained a $31 million damages award, permanent injunction, and transfer of multiple domain names in an action to combat the unauthorized and counterfeit uses of the three plaintiffs’ famous trademarks in multiple domain names and copycat websites.
  • Advised a major Japanese trading company, and its affiliate, in the establishment of a ground­breaking, cross-border e-commerce platform with one of China’s largest state-owned enterprises and its affiliate.
  • As lead trademark counsel for six luxury brand plaintiffs, Chloe, Cartier, Montblanc, Alfred Dunhill, Lange & Sohne, and Panerai, secured summary judgment on contributory trademark infringement and counterfeiting claims against large B2B website, and obtained multiple favorable pre-trial rulings, including highly contested jurisdictional claims over website owner and operator located outside the U.S., and dismissal of all of defendants’ counterclaims including wrongful seizure and violation of the Stored Communications Act and the Computer Fraud and Abuse Act.
  • IP counsel to international corporation on its acquisitions of clothing and accessories brands, including acquisition of all trademarks, copyrights, and domain names, and related license arrangements.