Susan O'Neil

Susan G. O'Neill

Partner

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Intellectual Property
Intellectual Property
San Francisco

Susan brings more than 27 years of experience to bear in protecting intellectual property and resolving intellectual property disputes. She has pursued and stopped hundreds of infringements of her clients' registered marks. She has also defended numerous infringement claims.

Susan has handled many other intellectual property litigation matters—including other trademark issues, copyright infringement, patent infringement, software piracy, and more—both nationally and internationally. She has represented a wide variety of nonprofit organizations, for-profit companies, other entities and individuals, including particularly in the health and food industries.

Additionally, Susan specializes in trademark prosecution and counseling. She advises clients regarding the protection of their marks through federal and state registrations and also manages international trademark portfolios. She has handled several trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She also advises clients on copyright protection and other copyright issues.

Susan further assists her clients in the food and beverage industry with product advertising and labeling, along with related regulatory issues.

Published Decisions

Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987)

Publications

"The .BANK Top Level Domain Will Soon Be Launched - Financial Institutions Should Take Account," co-author, Intellectual Property Law Alert (May 2015)

".xxx Domain Name Blocking for Trademark Owners," co-author, Hanson Bridgett Intellectual Property Alert (August 2011)

"UDRP Hijacking Thwarted—How a Registrar's Strategy Backfired," co-author, INTA Bulletin (April 2011)

"UDRP Hijacking: Avoiding an Involuntary Passage to India," INTA Bulletin (February 2009)

"Back to the Future of Trademark Law," INTA Bulletin (February 2007)

"Global Recognition of Association's ADR Efforts," contributor, INTA Bulletin (April 2007)

"Court Facilitated Mediation: A View from Both Sides of the Atlantic," co-author, INTA Bulletin (January 2007)

"IP Legal Checklist," American Seniors Housing Association (November 2006)

"U.S. Litigants Prepare for New E-Discovery Rules," co-author, INTA Bulletin (November 2006)

"Helping Clients Navigate the Winding Roads of Intellectual Property Litigation," Inside the Minds: IP Litigation Best Practices: Leading Lawyers on Protecting and Defending Your Company's Intellectual Property, Aspatore Books (September 2005)

"Effective Representation in Mediation," contributor, INTA Bulletin (December 2004)

"Wind Beneath My Wings," Air Scoop (September 2001)

"New Top-Level Domain .Biz, .Info, .Name, .Pro, .Coop, .Aero, and .Museum," T.I.P.S. (2001)

See All Publications

Presentations

"Doing More with Less: Effective Strategies for Policing Your Brand While on a Tight Budget," moderator, International Trademark Association, Trademarks and the Internet Program (September 2011)

"Domain Names: New Tricks of the Trade," panelist, State Bar of California (September 2006)

"Effective Representation of a Party in Mediation and Advance Negotiation Techniques," panelist, INTA Leadership Meeting (November 2004)

"Protecting Intellectual Property Rights for International Clients," panelist, Legal Network International (October 2003)

"Annual Business Law Update," panelist, Continuing Education of the Bar (2000-2002)

See All Presentations

Honors

Martindale-Hubbell AV® Preeminent™ Rating, Intellectual Property Law

Northern California Super Lawyers (2006)

Professional Affiliations

International Trademark Association (Emerging Issues Committee; previously served as Chair: Online Trademark Use Subcommittee, Leader: Domain Parking and Monetization Working Group, Member of the Bulletin Committee, Chair: ADR Content Subcommittee and ADR Courts, Boards and Agencies Subcommittee)

Globalaw Intellectual Property Initiative Co-Chair

Bar Association of San Francisco

Education

J.D., with honors, University of San Francisco School of Law (1984)

B.A., with honors, University of California, Berkeley (1981)

Admissions And Courts

California

San Francisco

415-995-5037 Direct Phone
415-995-3457 Fax

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Firm Leadership

Food and Beverage Practice Leader