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Susan A. Russell

Of Counsel

Susan Russell's extensive experience with intellectual property and international matters enables her to provide comprehensive and practical strategies to efficiently and effectively resolve complex matters for her clients.

Featured Experience

Successfully secured reinstatement of a client's house trademark that had been declared abandoned by the USPTO for almost two years.

Prevailed in defending a trademark owner from claims of infringement by a serial trademark opposer before the TTAB; established that the opposer had abandoned its mark and committed fraud upon the Trademark Office, enabling the client to register its mark.

Successfully reached settlement agreement for a client against claims of likelihood of confusion, saving the client from an opposition proceeding before the TTAB, and allowing the client to proceed with trademark registration for its marks that were part of its new branding campaign.

Professional Biography

Overview

Susan Russell is a trusted advisor who provides collaborative, practical, and actionable counsel to her clients on trademark, copyright, and trade secret transactions, prosecution, enforcement, and litigation. She also advises clients on international intellectual property law disputes, social media, online legal disputes, as well as right of publicity and advertising law.

Whether advising an industry leader or a startup, Susan has a deep appreciation for and understanding of her clients' objectives and resources available for each matter. Susan regularly advises clients across diverse industries, including technology, banking and finance, manufacturers, health care, government, entrepreneurs, real estate developers, energy resources, apparel and fashion companies, musicians, social media companies, food and beverage companies, and consumer retail and product companies.

Susan assists her clients with USPTO matters, including trademark search and clearance, responses to Office Actions, and post-registration petitions; and TTAB proceedings, including opposition and cancellation matters. Susan also works with clients on UDRP matters, including domain name disputes and transfers; DMCA matters, including copyright takedown notices; and USCRO matters, including copyright applications.

Susan regularly works with clients on IP infringement and enforcement matters. She also works with clients on developing and implementing innovative domestic and international IP enforcement strategies, including against entities engaged in counterfeit and gray market goods and cross-border importation of goods, and working with international customs agencies and IP rights organizations.

Additionally, Susan works with clients on IP contract and license drafting, review, and analysis, including Music Performance Agreements, Sponsorship Agreements, Employee IP Agreements, and IP Assignments. She also conducts IP audits, IP valuation, and IP due diligence.

Representative Matters
  • Counsel to a Fortune 500 corporation with international IP portfolio for trademark and copyright matters.

  • Counsel to a leading financial data analytics and technology company with international IP portfolio for trademark and copyright matters, including portfolio management, brand protection, and brand growth.

  • Counsel to entrepreneurs and startups across all industries, including restaurant and food services, health and beauty, media, technology, manufacturing, distribution.

  • Works with clients on brand protection and brand growth strategies at each business phase and throughout the lifecycle and lifetime of client brands.

  • Works with clients to prioritize IP protection and enforcement strategies, and helps clients maximize available budgets and resources to meet and exceed objectives.

  • Works with international associates to protect, enforce, and build client trademark and brand initiatives in foreign jurisdictions.

  • Works closely with Emerging Companies Team, Global Business Team, Corporate/M&A Team, and Hospitality, Franchising, and Distribution Team to provide clients with comprehensive and strategic guidance for each matter and to meet the client's business objectives.

  • Successfully secured reinstatement of a client's house trademark that had been declared abandoned by the USPTO for almost two years.

  • Works with clients during trademark clearance to identify potentially adverse marks and to assess risk for use and proceeding with trademark registration; and works with clients to tailor each trademark application to successfully reach registration.

  • Works with clients and the USPTO to overcome objections to applications to ensure marks reach federal registration.

  • Provides guidance to clients pursuing federal registration of certification marks to ensure compliance with USPTO requirements for reaching and maintaining registration, including working with clients to develop and establish Certification Program Standards and Certification Mark Use Agreements.

  • Prevailed in defending a trademark owner from claims of infringement by a serial trademark opposer before the TTAB; established that the opposer had abandoned its mark and committed fraud upon the Trademark Office, enabling the client to register its mark.

  • Successfully reached settlement agreement for a client against claims of likelihood of confusion, saving the client from an opposition proceeding before the TTAB, and allowing the client to proceed with trademark registration for its marks that were part of its new branding campaign.

  • Represents clients before the TTAB in cancellation proceedings.

  • Works with numerous clients to successfully identify the source of domestic and international infringing IP, and secured agreements and compliance from the infringers to cease and desist.

  • Defended an international client importing goods into the U.S. from claims trademark and copyright infringement in federal district court, including in settlement negotiations.

  • Works with clients to ensure understanding of and compliance with the changing legal landscape in trademarks, copyrights, trade secrets, social media, and advertising.

  • Represents clients in all manner of agreement review and drafting, including Sponsorship Agreements to identify and mitigate risk.

  • Reviews and prepares employment agreement provisions for clients to analyze and address trade secret and IP assignment.

  • Represented family member of a famous band in assertion of rights in breach of contract matter, including complex multi-contract review and analysis and multi-state legal analysis of band name ownership rights, laches and statute limitations defenses, and arbitration requirements.

  • Represented an author in agreement with book publisher.

  • Represented a band member in right of publicity matter against the band's manager.

  • Counseled clients about licensor and licensee trademark, copyright, and software license agreements.

  • Regularly negotiates settlement agreements on behalf of clients.

  • Represents clients in UDRP matters, including ICANN dispute proceedings.

  • Works with clients on telecommunications matters and GDPR matters.

  • Counseled a bank with respect to compliance requirements for its multistate advertising campaign, including advising on state statutes and federal regulations and guidelines, the FTC Act, deceptive and unfair trade practices, and the Truth in Lending Act's Regulation Z.

Professional Honors & Activities

Professional Membership and Leadership

  • Member – International Trademark Association
  • Member – Managing Intellectual Property, Women in IP
  • Member – The Trademark Reporter Committee, International Trademark Association (2020 – 2021)
  • Member – American Bar Association, Intellectual Property Law Section, IP Transactions and Licensing Committee
  • Inaugural Advisory Board Member – State Bar of Georgia, Entertainment & Sports Law Section
  • Member – State Bar of Georgia, IP Section, Trademark Committee; Franchise & Distribution Law Section
  • Inaugural Atlanta Chapter Founding Committee Member and Events & Programming Committee Chair – ChIPs (Chiefs in IP)
  • Board Member – Georgia Intellectual Property Alliance
  • Chair – Georgia Intellectual Property Alliance, IP3 (Intellectual Property Practitioners and Professionals)
  • Advisory Board Member – Georgia Lawyers for the Arts
  • Member – Atlanta IP Inn of Court
  • Member – OnBoard: Women in the Boardroom
  • Member – Baker Donelson's Pro Bono Committee
  • Member – International Franchise Association
  • Member – Georgia Association for Women Lawyers, Leadership Committee (2017 – 2018)

Community Involvement and Service

  • Judge – Saul Lefkowitz Moot Court Competition, Trademark and Unfair Competition Law
  • Ambassador – YES Berkeley! Student Recruitment
  • Pro Bono Volunteer – Atlanta Volunteer Lawyers Foundation
  • Pro Bono Volunteer – Pro Bono Partnership of Atlanta
  • Sustaining Member – The Junior League of Atlanta
  • Volunteer – Virginia Highland Civic Association
  • Secretary – DHGC, DHWGA Executive Board
  • Vice President – UC Berkeley Alumni Club of Georgia (2017)

Awards and Recognition

  • Recipient – Award of Appreciation, Georgia Intellectual Property Alliance, IP Hot Topics 2019

Visiting Scholar

  • Emory University School of Law, Atlanta, Georgia, Visiting Scholar, Copyright Law
  • Columbia University School of Law, New York, New York, Visiting Research Fellow, International IP Law
  • Max Planck Institute for IP and Competition Law, Munich, Germany, Visiting Scholar, German Copyrights Law, Civil Law, and International IP Law
Publications
  • "Supreme Court: You Can Trademark Whatever the ®®®® You Want (Maybe?)," JD Supra (June 2019); reprinted in IAM Weekly International Report (July 2019); reprinted in TerraLex (October 2019)
  • "Tick Tock – Website Owners Face Deadline to Preserve Liability Safe Harbor," JD Supra (April 2017)
  • "Righting Copyright Wrongs Remains Elusive – Kirtsaeng Leaves Fee Awards to District Court Discretion," JD Supra (June 2016)
  • "The First Amendment Strikes Back – Lanham Act's Disparaging Trademark Registration Ban Struck Down as Unconstitutional," IP Litigator (April 2016)
  • "Trademark Wars: The First Amendment Strikes Back – Lanham Act's Disparaging Trademark Registration Ban Struck Down as Unconstitutional," JD Supra (December 2015)
  • "Use It or Lose It: Service Mark Registration Is Subject to Cancellation if the Application Is Only Supported by Advertising," IP Today (May 2015)
  • "'Use It or Lose It': Service Mark Registration Canceled When Application Supported Only by Advertising," JD Supra (March 2015)
  • "U.S. Supreme Court Unanimously Rules That Juries Should Decide Trademark Tacking," JD Supra (January 2015)
Speaking Engagements
  • Moderator – "CERTIFY THIS!: Best Practices to Ensure Certification Marks Reach Registration and Certification Programs are a Success," International Trademark Association, Annual Meeting, Table Topic, Singapore (April 2020)
  • Moderator – "Safeguarding Your IP rights with a Nimble Strategy," Managing Intellectual Property, International Women's Leadership Forum, Chicago, Illinois (September 2019)
  • Moderator – "What's in Your Enforcement Toolkit?: Strategies to Efficiently and Effectively Shut Down Trademark Infringement Abroad," International Trademark Association, Annual Meeting, Table Topic, Boston, Massachusetts (May 2019)

Click here to read Baker Donelson's intellectual property blog

Education

  • University of California, Berkeley, School of Law, LL.M., 2004
  • University of Oklahoma College of Law, J.D., 2003
  • University of Oklahoma, B.A., cum laude, 2000

Admissions

  • Georgia
  • U.S. District Court for the Northern District of Georgia
  • Supreme Court of Georgia
  • Georgia Court of Appeals

Languages

  • German

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