David M. Kelly

Partner

David Kelly focuses on a wide variety of trademark, Internet, and unfair competition issues, with a focus on litigation, disputes, and strategic counseling.

Mr. Kelly litigates 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 of the U.S. Patent and Trademark Office. He has particular experience handling Internet trademark and domain name disputes, having served as lead counsel in more than 40 such litigations, including in rem cases. Additionally, he has handled hundreds of complaints under the Uniform Dispute Resolution Policy (UDRP) and similar polices. In 1999, Mr. Kelly was selected to serve on WIPO’s UDRP Panel of Neutrals. He also has extensive experience in clearance and enforcement matters relating to entertainment properties from his representation of Disney, ABC, Fox, and others.

Highlights

• Defeated a motion for preliminary injunction filed by the owner of the mark SOOTHIES for gel pads for breast feeding to enjoin the sale of SOOTHIE-branded baby bottles and bottle nipples.
• Defeated a motion for preliminary injunction filed by Wells Fargo subsidiary H.D. Vest, Inc. seeking to enjoin defendant from using his personal name H.D. Vest in connection with his businesses.
• Successfully opposed an application for an embossed design for 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 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 of the district court’s refusal to enjoin the infringer.
• 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.
• Served as the chair of the firm’s trademark and copyright practice.

Professional Recognition

• Recognized by The Legal 500 U.S. as one of the leading lawyers in both trademark litigation and non-contentious trademark law, 2008-2011.
• Ranked by the World Trademark Review 1000 among top trademark lawyers for contentious work in the United States, 2012; and in D.C., 2011-2012.
• Ranked among top 25 U.S. trademark experts, 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, 2011; and among top U.S. trademark lawyers in the Guide to the World's Leading Trademark Law Practitioners, 2006, 2008, 2010, 2012.
• Listed in the Washingtonian Magazine as a top IP lawyer,” 2009 and 2011.
  Listed in Intellectual Asset Management (IAM) Magazine as one of 250 leading IP strategists, 2009-2011.
• Recognized by Legal Times as one of the top 10 "Leading Lawyers" in trademark and copyright in the Washington, D.C. area, 2008.
• Three-time recipient of the Burton Award for legal writing, 2002, 2005, 2010.

Professional Activities

• District of Columbia Bar
• American Bar Association
• International Trademark Association

Select Publications

• "Case Study: GoPets v. Hise," Law360, Nov. 15, 2011.
• 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. "Statutory Damages under the Anticybersquatting Consumer Protection Act," BNA's Electronic Commerce and Law Report, June 11, 2008.
• Coauthor. "Wikipedia: More than Just a Footnote for Lawsuits," Law360, Jan. 15, 2008.