Princeton Address:
Duane Morris LLP
P.O. Box 5203
Princeton, NJ 08543-5203

Susan Okin Goldsmith focuses on domestic and foreign trademark clearance and registration, infringement matters and intellectual property licensing. She also handles matters involving computer hardware and software vendors and purchasers, software licensing, e-commerce and Internet use and abuse.

Ms. Goldsmith has worked extensively with corporate and commercial business transactions, joint ventures and start-ups, including complex mergers and acquisitions and venture capital financings. She also served a judicial clerkship to the Honorable William H. Walls, then of the New Jersey Superior Court and now of the United States District Court of New Jersey.

Ms. Goldsmith is a member of the Science and Technology Section of the American Bar Association, the Committee on Internet and Computer Law and Corporate and Business Law Section of the New Jersey State Bar Association, and the Licensing Executive Society of the U.S. and Canada, and is a Certified Licensing Professional of the LES. She was recognized in the CSC Trademark Insider 2007 Annual Report, issued April 2008, with a Top Trademark Attorney award and national ranking of #18 for Q4 of 2007 and #19 for Year-End 2007 by number of trademark applications filed. Duane Morris also received a National Law Firm Award, ranking #12 among all law firms by number of trademark applications filed in 2007.

Ms. Goldsmith is a 1986 graduate of the Rutgers School of Law--Newark and a graduate of the University of Pennsylvania Wharton School of Business, where she majored in marketing.

Representative Matters

Outside counsel to a major defense contractor regarding domestic and foreign trademark matters.
Licensing of marks, software licensing, development agreements and joint ventures.
Substantial experience managing large trademark portfolios, U.S. and foreign.
Substantial experience with U.S. and foreign trademark opposition and cancellation actions.
Served as outside counsel in the frequently cited case, In re Dial A Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2000) (1-888-MATRESS is descriptive, not generic for services of telephone shop-at-home sales of mattresses, can acquire secondary meaning).
Prosecution and defense of trademark infringement actions.
Successful prosecution of numerous cybersquatting actions under the Uniform Domain-Name Dispute Resolution Policy.
Corporate structure and governance matters for start-ups, joint ventures and closely held business entities.

Professional Activities

American Bar Association
-Science and Technology Section
New Jersey State Bar Association
-Corporate and Business Law Section
-Committee on Internet and Computer Law
Licensing Executive Society of United States and Canada
- Member, New Jersey Chapter
Licensing Executive Society (LES) Certified Licensing Professional
International Trademark Association

Admissions

New Jersey
United States Court of Appeals for the Federal Circuit
United States District Court for the District of New Jersey
Supreme Court of New Jersey

Education

Rutgers School of Law - Newark, J.D., 1986
The Wharton School of the University of Pennsylvania, B.S., 1981

Experience

Duane Morris LLP
- Partner in the Intellectual Property Practice Group, 2003-present
- Special Counsel, 2001-2003
Buchanan Ingersoll, Professional Corporation (now Buchanan Ingersoll & Rooney), Princeton, New Jersey
-Senior Attorney, 2000-2001
Greenbaum, Rowe, Smith, Ravin, Davis & Himmel LLP (now Greenbaum, Rowe, Smith, Ravin & Davis), Woodbridge, New Jersey
-Of Counsel, 1999
-Associate, 1987-1998
New Jersey Superior Court, Essex County, New Jersey
-Judicial Clerk, Honorable William H. Walls, 1986-1987

Selected Publications

Co-author, "ICANN Releases Draft Applicant Guidebook for New Generic Top-Level Domains," Duane Morris Alert, October 30, 2008
"Macao: New Frontier in Trademarks," International Trademark Association Bulletin, Vol. 63 No. 6, March 15, 2008
"The Globalization of Trademark Protection," New Jersey Lawyer Magazine, October 2003
"Trademarks for Business Lawyers Part II - Enforcement," Corporate & Business Law Section Newsletter, New Jersey State Bar Association, January 2003
"Trademarks for Business Lawyers," Corporate & Business Law Section Newsletter, New Jersey State Bar Association, June 2002

Selected Speaking Engagements

Speaker, "Powerful Women . . . Powerful Choices," Women in Technology Luncheon sponsored by Duane Morris, July 31, 2008
Speaker, "Trademarks for Defense Products: Current Events and Policy Considerations," Aerospace Industry Association, April 21-22, 2008
Speaker, "Intellectual Property Protection Road Map," Duane Morris Women's Initiative, June 2006
Speaker and Workshop Coordinator, Licensing Executive Society Annual Meeting 2006 Workshop: "The Skunk Works: Defense Products in Civilian Markets," Lockheed Martin Corporation
Speaker, The Madrid Protocol, New Jersey Institute of Continuing Legal Education Intellectual Property Summit, December 2, 2004
Speaker, "Trademarks in Cyberspace," 4th Annual Internet Law Symposium, March 28, 2003
Speaker in two programs, "Issues in Brand Protection" and "What the Business Lawyer Should Know About International Transactions," Third Annual Business Law Symposium of the New Jersey Institute for Continuing Legal Education, October 2002
Speaker, "Selecting, Registering and Protecting Trademarks and Service Marks," Duane Morris LLP and Lehigh County Chamber of Commerce, January 29, 2002
Speaker, "What Every Business Lawyer Needs to Know About Trademarks," Second Annual Business Law Symposium of the New Jersey Institute for Continuing Legal Education, October 2001