SUSAN J. LATHAM
Diligent, analytical, determined and dynamic.
Susan Latham has been a litigator for nearly fifteen years, focusing her practice on intellectual property rights and competition law. With that focus, Susan has litigated cases throughout the United States and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Over the years, Susan has litigated cases across a wide variety of industries, such as: aviation, cosmetics, skincare, health and wellness, beverages, online dating, finance, fashion, fragrances, hair care, hotels and resorts, restaurants, television, and test preparation.
Susan holds a Master of Laws degree in the field of intellectual property and is known among colleagues for finding things others miss. Susan digs deep into the facts and issues of a case in a search for case-ending leverage. As a result, Susan has had particular success bringing about early resolutions of disputes.
In 2013, Susan represented defendants in a trademark infringement and cyber-piracy case wherein they were accused of infringing plaintiff's MATCH.COM trademarks. Susan conducted extensive research into plaintiff's and several hundred other market-participants' use of the term. Based on that fact-gathering, Susan was able to assert a counterclaim that aimed to cancel plaintiff’s trademark registrations. Susan also engaged an industry expert who opined on the meaning and trade-usage of the trademarked term. Shortly after filing the counterclaim and disclosing the expert’s report, the plaintiff agreed to settle the case in advance of trial.
Similarly, in a case involving Christian Dior’s J'ADORE trademarks, Susan conducted extensive research into the history of the J'ADORE marks and found facts that enabled her to seek cancellation of the registrations on multiple grounds. As a result, the parties negotiated a worldwide settlement of their dispute which the court made part of the public record.
In 2014, Susan represented defendants in a trademark infringement and false advertising action relating to fat reduction procedures and devices offered under the COOLSCULPTING mark. Susan investigated plaintiff’s business and advertising practices and, based thereupon, filed a counterclaim for false advertising and seeking to cancel the mark. Those efforts also led to an early, negotiated settlement among the parties.
Even before diving into the facts, Susan has brought cases to early resolution by means of motions to dismiss that focused the court’s attention on legal deficiencies in the plaintiff’s claims. In 2009, Susan represented the defendant in a trade dress infringement case relating to the design of motorcycle accessories. Susan’s close scrutiny of the claims revealed several grounds for moving to dismiss the complaint. Within days of Susan filing the motion to dismiss, the plaintiff voluntarily dismissed its claims. In 2012, in a copyright infringement case relating to architectural drawings for a recreational pool facility, Susan moved for, and obtained, the dismissal of both the initial and first amended complaints. The success of those motions led the plaintiff to voluntarily dismiss the case with prejudice.
Susan has also used her analytical skills to develop and file appeals. In 2006, Susan represented the appellant before the Eleventh Circuit Court of Appeals in a trademark counterfeiting case involving the resort services industry. Susan succeeded in getting the Court to grant oral argument, which led the parties back to the negotiating table and a settlement of the case.
Susan is also a published author in the field of intellectual property. Susan’s work has been published by leading scholarly and trade publications, such as: the Hastings Communications and Entertainment Law Journal, a preeminent law journal covering communications, entertainment, and intellectual property law; Thomson Reuter’s Westlaw Journal of Intellectual Property; and Practical Winery & Vineyard.
Susan began her career as a stockbroker in New York City and has also managed the accounting and finances of a graphic design firm, as well as working on the business-side of the advertising department of the iconic fashion retailer Barneys New York. Thus, Susan enjoys a keen appreciation for the business interests of her clients and endeavors to keep those interests in mind throughout every representation.
While earning her Master of Laws degree, Susan worked in the legal department of the legendary fashion and lifestyle brand, Kate Spade, LLC, to enforce the company’s trademarks and copyrights, and record the company’s trademarks with the U.S. Customs Border Control in an effort to stop the flow of counterfeits entering the U.S.
In addition to litigation, Susan also assists clients with the registration and maintenance of their trademarks, trade dress and copyrights.
Susan is based in Miami but has ties to NJ, NYC, and Co. Cork, Ireland. Some of the charities and cultural organizations Susan supports include the American Brain Tumor Association, and the Dranoff International 2 Piano Foundation. Susan is also a member of the South Florida Irish‑American Chamber of Commerce.
Benjamin N. Cardozo School of Law, Yeshiva University, LL.M., Intellectual Property Law; Distinguished Performance and Charles Ballon Writing Awards.
Florida State University College of Law, Juris Doctor, cum laude
University of Delaware, B.S., Business Admin.
U.S. Court of Appeals for the Eleventh Circuit
U.S. District Court for the Southern District of Florida
U.S. District Court for the Middle District of Florida
U.S. District Court for the Southern District of New York
U.S. District Court for the District of New Jersey
U.S. District Court for the Eastern District of Wisconsin
Articles & Presentations:
"Trademark Licensing and the 'Buddy System'," Westlaw Journal of Intellectual Property. Vol. 25, Issue 5, June 2018.
“Best Practices for Evaluating Trademark Applications,” Inside the Minds: Recent Trends in Trademark Protection, 2016 ed., Aspatore Books (Thomson Reuters).
Protecting Brands from Theft and Counterfeiting in 2016 and Beyond Live Webcast; The Knowledge Group; June 2, 2016. Participated as a panelist to offer guidance for the best practices and procedures for companies to protect their brands from theft and counterfeiting.
“On the Radar: Notorious Counterfeiting and Piracy Markets of 2015,” Corporate Counsel, Feb. 2016.
Moderator, INTA Roundtable: 2015 U.S. Case Law in Review, Jan. 2016.
“How Recognition of Geographical Areas of Viticultural Significance Affects U.S. Trademarks for Wine,” PRACTICAL WINERY & VINEYARD JOURNAL, October 2011.
“Newton v. Diamond: Measuring the Legitimacy of Unauthorized Compositional Sampling – A Clue Illuminated and Obscured,” 26 HASTINGS COMM. & ENT. L.J. 119, 2004. Cited by the Sixth Circuit in Bridgeport Music, Inc. v. Dimension Films, 2004 WL 1960167 (6th Cir., Sept. 7, 2004).
Cozen O'Connor, Miami, Florida
Feldman Gale, P.A., Miami, Florida
Lewis & McKenna, P.A., Saddle River, New Jersey
Kate Spade, LLC, New York, New York