susan
Susan Freedman
rodney rothwell

 


     
 

Senior Counsel

(703) 677-3018
sfreedman@rmsclaw.com


Areas of Practice: Trademarks and copyrights.

Ms. Freedman is an accomplished trademark attorney with twenty years of experience representing businesses and trade associations in the publishing, news, film, television, media, entertainment, pharmaceutical, computer software, financial, chemical, and fashion industries in protecting trademarks, domain names, and copyrights, including on the Internet, worldwide. Her comprehensive practice focuses on getting results, protecting value, and enforcing rights, all while respecting client’s resources. She serves clients in the following ways:

  • Setting priorities for trademark and copyright protection and enforcement that reflect a client’s unique business priorities and financial limits;
  • Counseling clients on creating cost-effective and business-driven domestic and global trademark selection and registration strategies;
  • Conducting trademark audits to assess whether a business’s established trademark rights match current and intended future uses of a trade name or brand, and taking appropriate steps to add protection or allow unused rights to lapse;
  • Advising on a mark’s availability, based on extensive searching, to prevent adoption of a mark that is not protectable or infringes another party’s mark;
  • Preparing trademark applications for filing at the U.S. Patent & Trademark Office (“USPTO”), and presenting arguments to overcome any substantive or procedural USPTO objections to registration;
  • Implementing trademark and domain name monitoring services to promptly identify and stop infringements;
  • Shutting down unauthorized use of trademarks and copyrights in advertisements, including on the Internet, through cease and desist letters, legal proceedings, and settlement;
  • Filing lawsuits and domain name arbitration proceedings to stop cybersquatters from stealing marks as domain names;
  • Drafting, filing, and prosecuting and defending proceedings at the USPTO’s Trademark Trial and Appeal Board (“TTAB”), to oppose a trademark application, or petition to cancel a registration;
  • Using Digital Millennium Copyright Act (“DMCA”) takedown notices to promptly remove infringing content from third party websites such as eBay and YouTube; and
  • Negotiating and drafting coexistence, settlement, license agreements, non-disclosure agreements, work-forhire copyright agreements, and rights of publicity releases to resolve disputes or maximize the value of a trademark or copyright.

Ms. Freedman has been a frequent speaker at meetings of intellectual property organizations, including the International Trademark Association (“INTA”); EuroForum, and Intellectual Property Institute of Canada (“IPIC”). She has also co-authored a column on counterfeiting issues in the IP Litigator magazine. She speaks fluent German.

Legal History: Counsel at Nixon Peabody, LLP; Partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; and Associate at Coudert Brothers.

Education: George Washington University, Washington, DC (J.D., 1992); Eberhard-Karls-Universität, Tübingen, Germany (Fulbright Grant, 1984-1985); Hamilton College, Clinton, New York (B.A, 1984, magna cum laude, German and Russian Languages and Literature).

Memberships: International Trademark Association (“INTA”): Vice Chair, Resource Development Group, Non-Profit Committee, 2012); Women in Technology.

Admitted: New York and District of Columbia. Not admitted in Virginia.