Stephanie Schmidt
Senior Associate
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Stephanie is a member of the Intellectual Property Brands group. Her practice focuses primarily on trademark and copyright matters, including counseling clients on selecting and clearing trademarks, prosecuting applications for trademark registrations before the United States Patent and Trademark Office and internationally, trademark enforcement and disputes, developing and policing trademark portfolios, and preparing licensing agreements. She also counsels clients on copyright prosecution, disputes, and licensing. Stephanie also advises clients on matters pertaining to trade secrets and publicity rights. Additionally, Stephanie has experience enforcing intellectual property rights online, including on social media platforms and e-commerce websites.
Professional experience
Collapse all- JD, with honors, The University of Texas Law School, 2017
- BS, cum laude, Business Administration, University of Southern California, 2013
In law school, Stephanie was a Teaching Quizmaster for the Legal Research and Writing Program. She was also active in the Texas Business Law Society, the Women's Law Caucus, Texas International Law Journal, Domestic Violence Clinic, and the Texas Law Professional Development Institute: Law Firm Track (Spring 2015).
- Texas State Bar
Stephanie has experience in international prosecution and enforcement of global trademark portfolios for large multinational corporations. She also has experience preparing trademark applications and responses to United States Patent and Trademark Office Actions for new and expanding companies. Further, she has advised clients on a range of contentious matters, including trademark oppositions, infringement litigation matters, and domain disputes under ICANN's Uniform Domain Name Resolution Policy.
Stephanie has, for example:
Simultaneously managed global trademark portfolios for large-scale clients in a variety of industries, including: petrochemical conglomerate (2,000+ marks), data analytics company (500+ marks), medical technology company (200+ marks), health care system (300+ marks), international specialty food manufacturing and distribution company (200+ marks), agricultural conglomerate (130+ marks) and auto body repair chain (75+ marks);
Advised on clearance, prosecution and maintenance from newly-formed start-ups to large, established portfolios;
Handled and defended trademark enforcement actions including TTAB proceedings and federal lawsuits; and
Advised corporate M&A practice on IP provisions in both sell-side and buy-side transactions.
- Legal 500 US, Recommended Lawyer, Trademarks: Non-contentious (including prosecution, portfolio management, and licensing), The Legal 500, 2023 - 2024
- "TTAB Prohibits Sur-Sur-Rebuttals in Trademark Proceedings," Norton Rose Fulbright Brand Protection Blog, August 21, 2023
- "Supreme Court Makes Waves With Abitron Ruling," Norton Rose Fulbright Brand Protection Blog, July 10, 2023
- "Up in Smoke: TTAB Denies Registration for Cannabis Paraphernalia," Norton Rose Fulbright Brand Protection Blog, May 16, 2023
- "Apple's Tacking Attempt in Trademark Opposition Hits a Sour Note," Norton Rose Fulbright Brand Protection Blog, April 17, 2023
- "TTAB Begins Pretrial Conference Pilot Program," Norton Rose Fulbright Brand Protection Blog, April 5, 2023
- "Do Not Be Fooled (Part 2): USPTO Issues Warning of Spoof Calls from Scammers," Norton Rose Fulbright Brand Protection Blog, February 3, 2023
- "USPTO Shortened Office Action Response Deadlines to Go into Effect in December," Norton Rose Fulbright Brand Protection Blog, October 19, 2022
- "The Intersection of Trademarks and Copyrights and Other Intellectual Property Rights," American Intellectual Property Law Association, May 17, 2021
- Contributor, "USPTO Adopts New Communication and Electronic Filing Requirements," Norton Rose Fulbright Brand Protection Blog, February 13, 2020
- Contributor, "Do Not Be Fooled—Misleading Solicitations Regarding Your Trademarks," Norton Rose Fulbright Brand Protection Blog, November 30, 2018
- "#Trademarked?," Norton Rose Fulbright Social Media Law Bulletin, November 6, 2018
- "Grumpy Cat Back In Court," Norton Rose Fulbright Social Media Law Bulletin, July 25, 2018
- "Grumpy Cat Almost Smiling Over Big Award," Norton Rose Fulbright Social Media Law Bulletin, March 14, 2018
- "Ninth Circuit Reverses Social Media Gag Order," Norton Rose Fulbright Social Media Law Bulletin, December 22, 2017
- "Court Looks to Social Media for Evidence of Trademark Infringement," Norton Rose Fulbright Social Media Law Bulletin, October 25, 2017
- Contributor, "Instant Fame and the FTC Endorsement Guides," Norton Rose Fulbright Social Media Law Bulletin, June 30, 2016
- Contributor, "U.S. Trademark Office Proposes Fee Increases," Norton Rose Fulbright Brand Protection Blog, June 27, 2016
- "Trademark Year in Review," Norton Rose Fulbright Webinar, February 22, 2023
- "The Intersection of Trademarks and Copyrights and Other Intellectual Property Rights," American Intellectual Property Association Spring Meeting (New Orleans, Louisiana), May 17, 2022
- "Selecting a Trademark," Trademark Boot Camp Series: Nuts & Bolts of Trademark Practice, Co-Sponsored by the State Bar of Texas IP Section and the Texas Regional United States Patent and Trademark Office, June 17, 2020
- "Selecting a Trademark," Trademark Boot Camp Series, Co-Sponsored by the Dallas Bar Association IP Law Section, the State Bar of Texas IP Section, and the Texas Regional United States Patent and Trademark Office, March 22, 2019
- "Trademark Basics for Small Business Owners," Pflugerville Black Business Builders Annual Symposium, February 16, 2018
- International Trademark Association
- State Bar of Texas IP Section, Trademark Committee Member
- American Bar Association
- Austin Bar Association
- American Intellectual Property Law Association
- Austin Intellectual Property Law Association
- Austin Young Lawyers Association
- Texas Young Lawyers Association
- AmeriCorps Alumna
- Spanish