Timothy J. Kelly

Partner - McCarter & English, LLP

IR Silver Member

Contact Details

Jurisdictions
  • New York
Address
Worldwide Plaza 825 Eighth Ave. 31st Floor
New York NY 10019 United States

Practice Area Membership(s)

  • IP - Trademark & Copyright
  • IP - Patents

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Biography

Timothy J. Kelly has extensive experience in all aspects of trademark and unfair competition law, including domestic and international trademark portfolio management, clearing and prosecuting trademarks, licensing, IP due diligence investigations, and litigation both in the district and appellate courts and before the Trademark Trial and Appeal Board. He has also had experience negotiating and litigating Internet domain name and other e-commerce disputes. Mr. Kelly has represented a wide range of clients in various industries including clothing, human foods and confections, pet foods, pharmaceuticals, electronics, appliances, and publications.

His trademark litigations include representing:

  • American Express Marketing & Development Corp. in American Express v. Gary Noland (declaratory judgment action relating to alleged trademark infringement).
  • Schaeffler KG in Schaeffler v. Imex Service, Inc. (trademark counterfeit seizure involving counterfeit LUK®-branded clutches); Schaeffler Technologies AG & Co. KG in Schaeffler v. Brastates Bearings Industries (trademark counterfeit seizure involving counterfeit FAG®-branded bearings).

  • Advance Magazine Publishers, Bacardi & Company, Ltd., and Sidney Frank Importing Co., Inc., and EventQuest, Inc., in Advance Magazine Publisher’s Inc. d/b/a The Condé Nast Publications, Inc., Bacardi & Company, Ltd., Sidney Frank Importing Co., Inc., and EventQuest, Inc. v. Jay Norris and Norris/Nelson Entertainment, Inc. (declaratory judgment action involving use of the term TASTEMAKERS); and Advance Magazine Publishers in Advance Magazine Publisher’s Inc. d/b/a The Condé Nast Publications, Inc. v. Vogue Int’l Inc. (internet domain name dispute).

  • Mars in Mars, Incorporated v. Triunfo-Mex, Inc. (trademark and trade dress infringement); Mars, Incorporated v. Concord Confections (trademark and trade dress infringement); Mars, Incorporated v. Classic Chocolates, Inc. (trademark and trade dress infringement); Hershey Foods Corp. v. Mars, Incorporated (trade dress infringement and dilution); and Mars, Incorporated v. Dan Dee Int’l, Ltd. (trademark opposition proceeding

  • Bear U.S.A. in Bear U.S.A., Inc. v. William Kim, et al. (trademark and trade dress infringement); Bear U.S.A., Inc. v. Bing Chuan Group U.S.A. Corp. (trademark and trade dress infringement and contempt); Golden Bear, Inc. v. Bear U.S.A., Inc. (trademark infringement); Bear U.S.A., Inc. v. The Bear Partnership (trademark opposition/cancellation proceeding).

  • Electrolux Home Products in BSH Home Appliances Corp. v. Electrolux Home Products, Inc. (trademark infringement).

  • Warner Lambert in Nabisco Inc. v. Warner Lambert Co. (trademark infringement).

  • Nike in FIFA (Federation International Football Ass’n) v. Nike, Inc. (trademark infringement).

Mr. Kelly is also is also a member of the International Trademark Association’s Panel of Trademark Mediators.

Firm Description

McCarter & English, LLP is a firm of approximately 400 lawyers with offices in Boston, Hartford, Stamford, New York, Newark, East Brunswick, Philadelphia, Wilmington and Washington, DC. In continuous business for more than 170 years, we are among the oldest and largest law firms in America.

Clients come first at McCarter & English. Their goals and priorities are what count. Our job is to listen to our clients, stay on top of the frequent changes that can affect their goals, and implement the strategies that will lead to success. Applying this approach effectively and consistently requires dedication and constant attention to many details. This client-centered philosophy has served our clients well and is responsible for our success and stability.

We are honored to be the chosen law firm of clients ranging from Fortune 100 companies to mid-market and emerging growth companies to individual people. When our clients do great things, we are pleased to get the assist.