Susan L. Heller

Heller’s trademark practice launched more than 20 years ago when she was retained to oversee the trademark aspects of significant acquisitions for prominent real estate properties — notably including the sale of the Pebble Beach golf course and litigation on behalf of the Aspen Ski Co. over the ownership of the Aspen name on clothing.

Her work for Greenberg Traurig in the global strategic monetization of big name brands continues to grow, along with Heller’s client list.

Last year, she was lead trademark counsel for Tishman Speyer Properties, the owner of landmark real estate including Rockefeller Center; Urban Armor Gear LLC, a maker of rugged, lightweight cases for phones and computers; industrial metals giant Alcoa Inc. and its spinoff Arconic Inc.; West Marine, a leading seller of boating and fishing related products; and several large companies engaged in mergers and acquisitions.

She also has an active Trademark Trial and Appeal Board practice and a growing anti-counterfeiting push to protect brand goodwill and sales worldwide.

“Of course, there are continual problems with China,” she said of the flood of ersatz goods labeled with famous brand names that flood the U.S. market. And there are new geographical hotbeds of counterfeiting activity. “But now we also see counterfeiting originating in Kuwait, Dubai and South America.”

An important aspect of the effort to stop it is familiarity with the venue. “You need to understand the culture you’re operating in. Dubai is very high-end and dependent on tourism. They can’t have counterfeiting there and the local officials are active partners in shutting it down,” she said. “Kuwait is working to develop its tourist industry and so far, it’s not a partner like Dubai.”

Counterfeiters have gotten sophisticated. “It’s a challenge to stay a step ahead,” Heller said. “You pursue them, and it’s like playing whack-a-mole. You work with local counsel and investigators and government agencies and you try to make the bad guys feel they should try to copy a different brand.”

Overall, Heller added, the lost revenue from counterfeit goods is significant for her clients, but even worse is the way the value of the brand itself suffers. “Brand asset monetization is getting bigger and bigger,” she said. “The stakes have moved the issue from the marketing department to the boardroom because of the dollars involved.”

Heller was named co-managing shareholder of Greenberg Traurig’s Irvine office last year. She continues as chair of the firm’s global trademarks and brand management practice and co-chair of the global women’s initiative.

“I especially enjoy the partnership with clients, the brainstorming,” she said. “The longer I do this, the more I like it.”

— John Roemer