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Susan E. Clady

Intellectual Property Group Lead - Trademarks
Cleveland
T.
216.363.4152
liamE

Susan focuses her practice on trademark, copyright and e-commerce matters, particularly the selection, clearance and adoption of trademarks, the preparation of trademark and copyright applications, and trademark and copyright prosecution.

In working widely with trademarks, Susan has gained considerable experience with managing trademark portfolios that range in size from a few U.S. trademarks to extensive national and international portfolios containing numerous marks. Management of these portfolios involves counseling clients regarding international filing options, including country specific applications, European Union applications and international applications. It also includes advising clients concerning which marks to maintain - due to current use, anticipated use, or preventative registration - and which marks to abandon due to changes in the client's product lines.

Susan regularly advises clients regarding trademark and copyright infringement and enforcement issues. This often involves preparing trademark right-to-register and right-to-use advisory opinions. In protecting clients' rights, Susan has addressed cease and desist letters and has litigated in federal courts, state courts, and before the Trademark Trial and Appeal Board.

Susan regularly negotiates trademark and copyright agreements that include strategic licensing agreements, asset purchase agreements, co-existence agreements, confidentiality agreements and assignments. In addition, she counsels clients regarding e-commerce matters and domain name selection, acquisition, transfer and disputes.

Representative Experience

  • Represented various trademark owners in Opposition and Cancellation proceedings before the Trademark Trial and Appeal Board.
  • Counseled various clients on legal issues arisng in web site development, safe harbor protections, and domain name protections.
  • Counseled clients on licensing and assignment issues.
  • Represented client as defendant in trademark infringement litigation before the court and as opposer in Opposition proceeding before the Trademark Trial and Appeal Board.
  • Counseled clients on the selection and adoption of trademarks, service marks and trade names.
  • Represented defendant in patent infringement litigation concerning lawn tool; successfully transferred action to local district court; court held for client after Markman hearing.
  • Represented domain name holder in dispute over registration of domain name; negotiated favorable settlement for domain name holder.
  • Represented plaintiff in unfair competition and trademark infringement litigation; U.S. District Court granted summary judgment in favor of plaintiff.
  • Counseled clients regarding selection, use and transfer of domain names.
  • Prosecute trademark and service mark applications before the U.S. Patent and Trademark Office.
  • Intellectual Property
  • Trademarks
  • Copyrights and Creative Content
  • Intellectual Property Litigation
  • Additive Manufacturing-3D Printing
  • The Ohio State University, 1993, B.A., Criminal Justice and Criminology
    • summa cum laude
  • Ohio State University Moritz College of Law, 1996, J.D.
    • Order of the Coif
    • With honors
    • Managing Editor, The Ohio State Law Journal
  • Ohio
  • U.S. District Court for the Northern District of Ohio
  • Member, Cleveland Intellectual Property Law Association
  • Member, American Bar Association
  • Member, International Trademark Association, Young Practitioners Committee
  • Secretary, Cleveland Intellectual Property Law Association (2008-2010)
  • Member, International Trademark Association; Moot Court Competition Coordinating Committee (2006-2013)
  • Adjunct Assistant Professor of Law, Case Western Reserve University School of Law-Trademark Law (2001-2002)
Articles and Presentations
April 4, 2024
Cultural Competency and Working with Foreign Counsel | Susan E. Clady, Julie R. Fenstermaker, Angela R. Gott
January 31, 2022
My Benesch My Team - SPIRE
January 26, 2017
3D Printing Quarterly Report | Q4 2016

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June 20th, 2013
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January 4, 2010
Clady Named Partner at Benesch
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