Susan L Heller
USA Guide 2024
Band 1 : Intellectual Property: Trademark, Copyright & Trade Secrets: Transactional
Email address
[email protected]Contact number
949 732 6810Share profile
Band 1
About
Provided by Susan L Heller
Practice Areas
Intellectual Property & Technology
Intellectual Property Litigation
Corporate
Domain Name Portfolio Management, Internet & Mobile-Related Website Issues
Trademark & Brand Management
Career
Susan is Co-Managing Shareholder of the Orange County office, Co-Chair of the firm's Global Trademark & Brand Management Group, and Senior Advisor to the firm’s Women’s Initiative. Susan is consistently recognized by numerous publications and organizations as having one of the preeminent and most innovative international trademark practices in the country, and for being a game-changer. When the stakes are high and critical brands are at risk, Fortune 500 companies, world champion athletes, high-net-worth individuals, A-list celebrities and highly visible pre-IPO companies turn to Susan for her strategic thought leadership and counsel, honed by her three decades of experience. At the forefront of global strategic management and monetization of big name brands on a worldwide level, she is known for developing cutting-edge branding strategies, most notably in "bet-the-brand," high stakes trademark cases. Susan works directly with CEOs and senior executives, in and out of corporate boardrooms. Her practice has spanned over 30 years across virtually every industry and in most jurisdictions throughout the world.
Among Susan’s recent notable awards, Susan was listed in Band 1 of Chambers’ 2022 Intellectual Property: Trademark, Copyright & Trade Secrets (California) guide; named an outstanding IP Practitioner in the elite WIPR Leaders Guide 2021; selected as the recipient of the 2020 Client Choice Award for the Intellectual Property – Trademarks Category in California, voted exclusively by corporate counsel; selected as a “Woman Leader in The Law” in 2020 and 2021 by ALM Legal Leaders; recognized as one of the Top IP Lawyers of 2020 and “2018 and 2019 Top 100 Women Lawyers in California” by Los Angeles and San Francisco Daily Journal; “2019 Lawyer of the Year” in Trademark Law by Best Lawyers in America; “2018 Trade Marks Lawyer of the Year” by Finance Monthly Global Awards; “2018 IP Lawyer of the Year” by Corporate Livewire; “2018 Most Influential Woman in Trademark Law – California” by Acquisition International; “2018 Lawyer of the Year for Intellectual Property” by Lawyer Monthly; “2018 Gamechanger of the Year: Trademarks /Brand Management” by ACQ5 Global Awards; “2018 World’s Leading Trade Mark Law Practitioners” and “2018 World’s Leading Women in Business Law” by Euromoney; Top (Gold) rankings both Nationally and in California for Trademark Prosecution and Strategy” 2022 World Trademark Review; a “2018 Leader in Trademarks” by The Legal 500 United States; and “IP Star” in the Managing IP Magazine’s World IP Handbook and Survey. National Diversity Council named Susan one of the Top 50 Women Lawyers in the U.S. Law360 named Susan to its Intellectual Property Editorial Advisory Board five times and profiled her as one of the "10 Most Admired Intellectual Property Attorneys.”
In 2020, Susan was selected to be a member of the prestigious United Nations’ Artificial Intelligence Initiative (“AI For Good”), joining an elite team of law firm leaders, international business executives, university deans, and UN thought leaders. She was honored by her alma mater, Cornell University, which named her a Distinguished Classmate. She also serves on the highly regarded President’s Council of Cornell Women. Susan also serves on the Board of Visitors of the University of California, Irvine School of Law, the University of California Irvine’s Business School’s Dean’s Advisory Board and on the Board of Human Options, an organization whose mission is dedicated to ending the cycle of domestic violence.
Susan helps her clients monetize and optimize their critical IP assets through strategic and creative positioning, management, and enforcement of their worldwide trademark, copyright and domain name portfolios and extensive collateral product licensing. Susan is known for partnering with her clients, working with their legal, marketing and business teams to ensure that marketing strategies and business sensitivities are integrated into her legal analysis and advice. Susan conducts trademark due diligence in M&A transactions and works with corporate and tax attorneys on asset-based financing and the restructuring of IP assets for tax planning.
Susan works directly with senior management teams, in and out of corporate boardrooms, and manages major international roll-outs of critical brands. She routinely confronts and tackles serious registration challenges as well as issues concerning collateral advertising, ecommerce and social media platforms. She pushes the boundaries of traditional protection by navigating her clients through the new frontiers of online brand protection, including the dark web. Susan has been involved in a number of highly sensitive and visible international disputes over U.S. rights to famous marks, including complicated distribution rights cases.
Concentrations:
U.S. and international trademark litigation and TTAB practice (oppositions and cancellations)
U.S. and international trademark and copyright clearance, procurement, enforcement and portfolio management
Strategic Brand selection, protection, expansion and monetization
U.S. and international intellectual property transactions and acquisitions
Domain name acquisition, protection and disputes, UDRP proceedings
Professional Memberships
Member, Law360's Intellectual Property Editorial Advisory Board, 2010, 2013-2016, and 2019-2022
Member, Board of Visitors, University of California, Irvine School of Law
Member, "AI For Good," United Nations Artificial Intelligence Initiative
Member, Dean's Advisory Board of the University of California (UCI) Merage School of Business, 2016-Present
Member, President's Council of Cornell Women (Cornell University) 2000-2022
USC Law School Intellectual Property Institute, 2004-2022; Executive Committee Member, USC Law School Intellectual Property Institute, 2007, 2008, and 2015-2022; Planning Committee Member, 2004-2021.
Board of Directors, Century City Chamber of Commerce, 2012 - 2014
Member, International Trademark Association 1983-2021; U.S. Patent & Trademark Office Practices; 2016-2018; Famous and Well-Known Marks Committee 2014-2016; U.S. Legislation Committee, 2010-2012; 2012-2014.
Publications
Listed, Chambers USA Guide, Intellectual Property: Trademark, Copyright & Trade Secrets: Transactional, 2022
Personal
J.D., The George Washington University Law School, 1982
B.A., Cornell University, 1979
Chambers Review
USA
Susan Heller is called upon by major clients to advise on IP strategy and brand management.