David M. Kelly

Partner

David Kelly chairs the firm’s trademark and copyright practice. He serves an international clientele on a wide variety of trademark, Internet, and unfair competition issues, with a focus on litigation, disputes, and strategic counseling.

Mr. Kelly represents clients in a vast array of fields, including the Internet, publishing, motion pictures, television, telecommunications, real estate, banking, insurance, sporting goods, computers, and automobile and motorcycle manufacturing. He also represents numerous nonprofit associations and organizations and several government agencies.

Mr. Kelly’s litigation practice includes cases involving conventional trademarks, certification marks, domain names, trade names, trade dress, product configurations, gray-market products, and counterfeit products. He has appeared in federal courts around the country and has handled hundreds of cases before the Trademark Trial and Appeal Board.

Mr. Kelly has developed a particular expertise in handling Internet trademark and domain name disputes. He has acted as lead counsel in more than thirty litigations in the U.S. involving domain names and Internet trademark issues, including in rem cases. Mr. Kelly has handled more than 200 complaints under the Uniform Dispute Resolution Policy and similar polices. Mr. Kelly was selected in 1999 to serve on the Panel of Neutrals assembled by WIPO to decide complaints under the Uniform Dispute Resolution Policy.

Highlights

• Obtained an order in an in rem case involving 1,866 domain names to waive ACPA’s publication requirement to avoid publishing notice of the action in the 85 countries where the registrants were located, and to permit service of the order and further papers only by email; recovered virtually all of the domain names through settlement, consent judgments, or default judgment.
• Successfully opposed an application for an embossed design for paper towels and other paper products on the ground that it was confusingly similar to the registered embossed designs used on BRAWNY paper towels.
• Successfully opposed an application for the mark INQUEST for database and research software based on likelihood of confusion with the registered mark PROQUEST for information retrieval products and services.
• Obtained a reversal of a refusal to register the certification mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST for recreational therapy services on the grounds that the mark was generic or descriptive without secondary meaning.
• Following a jury verdict (as co-counsel) that use of the mark CITIZENS BANK infringed the senior user’s rights in the mark CITIZENS for banking services, obtained a reversal on appeal (as co-counsel) of the district court’s refusal to enjoin the infringer.
• Obtained a TRO enjoining a nightclub from falsely advertising that Cirque du Soleil would be performing at a New Year's Eve party.
• Obtained a TRO for Yahoo! enjoining the defendants from using the domain name 21yahoo.com for a website at which it was offering free stock in 21Yahoo.com, Inc.
• Obtained a TRO against the mark SMALL LEADING HOTELS OF THE WORLD for hotel-marketing services based on the mark SMALL LUXURY HOTELS OF THE WORLD for the same services.
• Defeated a motion for preliminary injunction against the mark ALTAVISTA for Internet search-engine services based on the mark ALTAVISTA for publishing services.
• Handled a series of nine lawsuits in five states involving counterfeit and/or gray-market prescription human-growth hormones, which resulted in the seizure of more than 20,000 packages of counterfeit products.
• Serves as a member of the firm’s Compensation Committee.

Professional Recognition

• Ranked among top 15 trademark experts in the world, by in-house counsel and peers in Legal Media Group’s Guide to the World’s Leading Trademark Law Practitioners (2010).
• Ranked among top 25 trademark experts in the USA, by in-house counsel and peers in Legal Media Group’s Expert Guides to the Leading U.S. Lawyers—Best of the Best USA (2007, 2009).
• Listed in the Washingtonian Magazine as a “Top Lawyer” (2009).
• Listed in Intellectual Asset Management (IAM) Magazine as one of 250 leading IP strategists (2009).
• Recognized by The Legal 500 United States as one of the leading lawyers in trademark litigation and in non contentious trademark law (2008, 2009).
• Selected as one of three finalists for Washington Business Journal’s Top Washington IP Lawyers (2008).
• Recognized by Legal Times, as one of the top 10 “Leading Lawyers” in trademark and copyright in the Washington, DC area (2008).
• Ranked among top U.S. trademark lawyers in Legal Media Group's Guide to the World’s Leading Trademark Law Practitioners (2006, 2008).
• Two-time recipient of the Burton Award for effective legal writing for his articles “The High Price of Popularity” (2005) and “Confusion, Dilution Still the Focus of Linking Cases” (2002).
  

Professional Activities

• District of Columbia Bar
• American Bar Association
• American Intellectual Property Law Association 
• International Trademark Association
  

Select Publications

• Coauthor. "Twenty Years of Rogers v. Grimaldi: Balancing the Lanham Act with the First Amendment Rights of Creators of Artistic Works," The Trademark Reporter, Nov./Dec. 2009.
• Coauthor. "Why Trademark and Copyright Counsel Should Heed the Patent Precedent of the Supreme Court," Landslide, Nov./Dec. 2009.
• Coauthor. "Has the Law of Fair Use Caught Up with Keyword Litigation?," Advertising Age, May 20, 2009.
• Coauthor. "2008 Trademark Decisions of the Federal Circuit," American University Law Review, April 2009.
• Coauthor. "What Trademark Lawyers Need to Know About the Supreme Court's Patent Jurisprudence—The Effect of MedImmune and eBay on Trademark Litigation," April 2009.
• Coauthor. "Statutory Damages Under the Anticybersquatting Consumer Protection Act," BNA’s Electronic Commerce and Law Report, June 11, 2008.
• Coauthor. "Revealing the Hidden Menace," Trademark World, Feb. 2008.
• Coauthor. "Wikipedia: More Than Just a Footnote for Lawsuits," IP Law 360, Jan. 15, 2008.
• "The Web: Are You Truly Master of Your Domain?," Boston Business Journal, June 5, 2007.
• Coauthor. "The Generic Roadblock," Trademark World, March 2007.