Susan Upton Douglass

USA: New York

Fross Zelnick Lehrman & Zissu, P.C.
4 Times Square
17th Floor
New York, NY 10036

Tel: 212-813-5900

Email: sdouglass@frosszelnick.com
Web: www.frosszelnick.com

 
Susan Upton Douglass is a Partner at Fross Zelnick Lehrman & Zissu and a specialist in trademark, copyright and unfair competition law for worldwide clientele, focusing on counseling, protection of proprietary rights, licensing, and dispute resolution. She has extensive experience in prosecuting domestic trademark and copyright applications, proceedings before the administrative tribunals, and negotiating and drafting licenses ranging from character merchandising to software development.

According to surveys of in-house and outside counsel in our field, Fross Zelnick is considered the premier firm in the world for trademark, copyright, design patent and unfair competition law, and we are arguably the largest law firm in the world dealing exclusively with this subject matter.

Fross Zelnick has, since its founding, adhered to its singular mission of helping clients protect and defend intellectual property assets. The firm has selectively added lawyers whose knowledge, creativity and judgment goes well beyond that of practitioners who do not dedicate themselves exclusively to our areas of law.

Our lawyers consistently apply their knowledge and sophistication internationally to analyze complex IP issues and counsel clients effectively. Our litigation attorneys have an extensive published track record of U.S. federal court trial and appeal successes enforcing and defending our client’s IP assets, many of which are key precedents in our field. This combination of counseling and litigation strengths, focused exclusively on IP assets in the U.S. and throughout the world, has proven to be a winning strategy for both our firm and our clients.

  • Who’s Who Legal – Thought Leaders 2018
  • Who’s Who Legal – Thought Leaders 2017. One of only four attorneys selected from the U.S.
  • Women in Business Law: 2017-2016, 2012, 2010
  • SuperLawyers – New York Women’s Edition 2017
  • SuperLawyers – New York Metro: 2008-2017
  • Who’s Who Legal – Trademarks: 2002-2017. Singled out in 2014 as one of only six “Most Highly Regarded Individuals” in North America.
  • SuperLawyers – Best Women Lawyers 2015
  • Chambers Global Leading Lawyers (Featured Attorney, 2015)
  • Lawyer Monthly Magazine Women in Law Awards: 2015
  • Chambers USA Leading Lawyers: 2010-2015 (Featured Attorney, 2015)
  • ExpertGuides – Trademarks (Legal Media Group/Euromoney): 2014
  • World Trademark Review – WTR 1000 The World’s Leading Trademark Lawyers: 2012-2014 (Special Mention, 2014)
  • Guide to the World’s Leading Women in Business Law: 2010-2014
  • Managing Intellectual Property – Top Trademark and Copyright Firms (Featured Attorney, 2005-2014)
  • Chambers USA Women in Law Awards IP Lawyer of the Year nominee: 2013
  • World Trademark Review WTR Leading Trademark Professionals: 2012-2013
  • Managing Intellectual Property – Top Trademark and Copyright Firms (Featured Attorney, 2005-2013
  • Lawdragon 500 Leading Lawyers in America: 2006-2012
  • Named “World’s Leading Trademark Law Practitioners” published by Legal Media Group, the legal publishing arm of Euromoney Institutional Investor: 2008
  • Named the “Expert’s Expert” in the July/August 2007 issue of World Trademark Review
  • Awarded the “Most Prolific Electronic Filer” Award by the U.S. Patent and Trademark Office for Law Firms: April 2007

IP Litigation and Enforcement

  • Trademark Infringement – U.S. Federal and State Courts
  • TTAB Proceedings
  • Anti-Counterfeiting Enforcement
  • Copyright Infringement – U.S. Federal Courts
  • Unfair Competition
  • Mediation
  • Domain Name Disputes/UDRPs

Trademark Counseling

  • Global Trademark Search and Clearance
  • Filing and Prosecution of Applications – U.S. and International
  • Management of Worldwide Trademark Portfolios
  • Recordal of Registrations with Customs
  • Opposition and Cancellation Actions – U.S. and International
  • Multi-Country Trademark Litigation

IP Transactions

  • Due Diligence for Mergers/Acquisitions
  • Licenses for IP Rights
  • Negotiation and Counseling for IP Agreements
  • Global Recordal of Assignments, Mergers and Corporate Changes
  • Web Site Agreements and Privacy Policies
  • Audit of IP Portfolios

Copyright Counseling

  • Work-for-Hire Issues and Agreements
  • Copyright Assignments
  • Vetting Rights for Product Launches
  • Acquisition of Rights
  • Works of Joint Authorship
  • Use Permissions for Third-Party Copyrights
  • Copyright Registration
  • International Copyright Protection
  • Berne Convention Rights
  • Renewal and Termination Rights
  • Recordal of Registrations with Customs

Internet/New Media

  • Cybersquatting and UDRP Proceedings
  • Domain Name Registration and Acquisition
  • Management of Domain Name Portfolios
  • Internet Monitoring for Infringements

Design Patents

  • Priority and Novelty Issues
  • Global Filing Strategies
  • Counseling on Suitable Drawings
  • Filing and Prosecution of Applications Worldwide
  • Enforcement of Design Patents

IP Counseling

  • Security Interests for IP Rights
  • Recordal of IP Registrations with Customs – U.S. and International
  • Rights of Publicity
  • Character Rights
  • Protection for Idea Submissions
  • Trade Secret Agreements
  • Pre-publication Libel Reviews
 
“The “very accomplished” Susan Upton Douglass is praised as a “terrific” attorney for her work representing clients before the USPTO and the Trademark Trial and Appeal Board (TTAB), as well as her handling of complex licensing and merchandising agreements. She is also experienced in assisting clients with their broader trade mark strategies.”
Chambers & Partners, 2018