DavidKelly

Partner

David Kelly has represented clients in trademark, copyright and unfair competition issues for more than 30 years, with a focus on litigation, disputes, and strategic counselling. Dave represents many famous brands, and has handled many notable matters, including recently obtaining a preliminary injunction followed by an award of $19,200,000 in statutory damages for trademark counterfeiting against a large, high-profile online print-on-demand retailer and the first fame findings for the marks H-D and HD (E.D. Wisconsin 2018), and successfully enforcing AstraZeneca’s single-color “purple” trademark for its NEXIUM® heartburn medication against two generic pharma companies, obtaining TROs and preliminary injunctions on both infringement and dilution grounds along with the first fame finding for AstraZeneca’s “purple” mark (D. Delaware 2015)


Dave is consistently recognized as one of the country’s top trademark lawyers. In 2018, Legal 500 US named Dave as a Leading Lawyer, Legal 500’s top category, for both trademark litigation and non-contentious matters for the 11th consecutive year. Only nine U.S. lawyers were named in each category, and during the past decade Dave was either the only U.S. lawyer or one of only two lawyers named in both categories. In 2017, Dave was named to the inaugural Legal 500 Hall of Fame—only 11 U.S. trademark lawyers were recognized, with Dave the only lawyer named for both trademark categories. According to Legal 500 feedback, clients describe Dave as “a leader in the field,” “a superstar,” “an outstanding trademark litigator,” and “an exceptionally bright and thoughtful advocate.” Clients also look to Dave for strategic advice based on his reputation as being “full of business savvy” and “a source of much practical advice… that understands our business in a way that most lawyers don’t.”


In 2019, WTR 1000 named Dave one of the top 10 lawyers nationwide for both trademark enforcement and litigation and trademark prosecution and strategy. Dave was one of only three lawyers named to both categories in WTR 1000’s top band of nationally recognized lawyers. According to WTR 1000 feedback, Dave is “arguably the best trademark practitioner in the country”; “the man to call” for “make-or-break disputes”; “smart as a whip and always 10 steps ahead of his rivals. When complex questions arise, he thinks outside of the box to deliver ingenious solutions”; a lawyer who “maintains strong relationships with massive brands and has built a stunning firm around him”; “has a fantastically clear grasp of things and is an eminently practical and skilled negotiator” whose “substantial proficiency and estimable business acumen single him out in the field”; and “his real-world advice doesn’t elevate law above business.”


Dave has also been recognized as by IP Stars for many years. IP Stars feedback includes that Dave is a “leader in the field”, a “superstar,” and has “unparalleled knowledge and experience in trademark litigation and TTAB cases.” Dave has been similarly recognized by Managing Intellectual Property, WIPR, Expert Guides, and others.


Before co-founding Kelly IP, Dave practiced for 26 years at Finnegan, Henderson, Farabow, Garrett & Dunner, chairing the trademark group for many years.



david.kelly@kelly-ip.com
(202) 808-3571


DavidKelly

Highlights

  • Obtained a preliminary injunction against an online apparel seller of counterfeit and infringing apparel bearing Harley-Davidson’s trademarks (E.D. Wis.)

  • Enforced AstraZeneca’s single-color “purple” trademark against two generic pharma companies, obtaining TROs and preliminary injunctions on both infringement and dilution grounds along with a fame finding for AstraZeneca’s mark (D. Del.)

  • Represented Aston Martin in multiple litigations to enforce its iconic grille and side vent designs (C.D. Cal.)

  • Obtained summary judgment on cybersquatting claim resulting in transfer of the domain name TRAVELLERS.COM to Travelers (E.D. Va.), affirmed by Fourth Circuit

  • Obtained cancellation of registration for MONSTER MEMORY AND MORE for “memory cards” based on likelihood of confusion with Monster Cable’s MONSTER mark while earning first fame ruling for MONSTER mark (TTAB 2013)

  • For Harley-Davidson, obtained TRO and preliminary injunctions against a trademark licensee’s unauthorized use of the licensed marks in Europe (E.D. Wis.), affirmed by Seventh Circuit

  • Defeated preliminary injunction motion filed by the owner of the mark SOOTHIES for breast feeding pads to enjoin the sale of SOOTHIE baby bottles and nipples (E.D. Va.)

  • Defeated preliminary injunction motion filed by Wells Fargo subsidiary H.D. Vest, Inc. to enjoin defendant from using his personal name H.D. Vest in business names (N. D. Tex.)

  • 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.


DavidKelly

Professional Recognition

  • Recognized by Legal 500 U.S. as a Leading Lawyer, Legal 500’s top category reserved for only 10 or so lawyers in the country, for both trademark litigation and non-contentious trademark law (2008-2018); the only lawyer named on both lists during 2009-2013 and one of only two lawyers names during 2014-2018.

  • Inducted into Legal 500’s inaugural Hall of Fame in 2017, which “highlights individuals who have received constant praise by their clients for continued excellence . . . and who are at the pinnacle of the profession,” which included only those U.S. lawyers recognized by Legal 500 as a Leading Lawyer in a practice area for six consecutive years. Only 11 trademark lawyers across the country were recognized for trademark litigation and trademark non-contentious, Dave was the only lawyer named to The Legal 500 Hall of Fame in both trademark categories.

  • Recognized by World Trademark Review 1000 (WTR 1000) as a “Gold” status lawyer nationally for trademark litigation (2016-2019), WTR 1000’s highest ranking. as a Gold status lawyer nationally for non-contentious trademark work (2018-2019); WTRM 1000 recognizes only 8-10 lawyers across the country for Gold status in each category.

  • Recognized by WTR 1000 as a “Gold” status lawyer for the Washington, DC Metro area for trademark litigation (2011-2019) and for non-contentious trademark work (2015-2019); WTR 1000 recognizes only 3 lawyers in the DC Metro area for “Gold” status in each category.

  • Named as an IP Star for the Washington, DC area by Managing Intellectual Property (MIP) (2014-2018).

  • Shortlisted for MIP’s “Outstanding IP Litigator Award” in the Washington DC area in 2016, 2017, and 2018, one of only seven lawyers shortlisted for this award and the only or one of two trademark lawyers.

  • Recognized by Chambers as a leading trademark lawyer in the Washington, DC area (2015-2018).

  • Recognized as a “World IP Leader” by World Intellectual Property Review (WIPR), a guide to leading IP practitioners around the world (2016-2019).

  • Recognized by Super Lawyers as one of the top IP Litigation lawyers in the Washington, D.C. area (2013-2019).

  • Recognized among top U.S. trademark lawyers in the Guide to the World’s Leading Trademark Law Practitioners (Top 10—2006, Top 25—2008, Top 15—2010).

  • Recognized by Washingtonian Magazine as one of the top IP lawyers in the Washington, D.C. area (2009, 2011, 2014).

  • Recognized among top 25 U.S. trademark experts in Legal Media Group’s Expert Guides to the Leading U.S. Lawyers—Best of the Best USA (2007, 2009, 2011).

  • Recognized by the Legal Times as one of the top 10 “Leading Lawyers” in trademark and copyright in the Washington, DC area (2008).

  • Recognized by the Washington Business Journal as one of the top 3 IP lawyers (and the only trademark lawyer) in the Washington, D.C. area (2008).

  • Selected by WIPO as one of the first Panelists for the Uniform Dispute Resolution Policy (UDRP) administered by WIPO’s arbitration center (2000).


Professional Activities

  • District of Columbia Bar

  • American Bar Association

  • International Trademark Association

DavidKelly

Select Publications

  • Author or co-author of more than 75 articles on various trademark topics in numerous publications, including The Trademark Reporter, Advertising Age, The National Law Journal, AIPLA Quarterly Journal, Landslide, Trademark World, IP Worldwide, Intellectual Property Today, Law 360, Corporate Counsel, The Merchandising Reporter, The Practical Lawyer, Association Law & Policy, and The European Intellectual Property Review.

  • Three-time recipient of the Burton Award for “Excellence in Legal Writing” on the topics of the intersection of the Lanham Act and the First Amendment (2010), genericness (2005), and linking (2002).

DavidKelly

Bar and Court Admissions
  • District of Columbia

  • Louisiana

  • Pennsylvania


Education

  • Duquesne University School of Law, J.D., 1983

  • University of Pittsburgh, M.S., Civil Engineering, 1980

  • University of Pittsburgh, B.S., Civil Engineering, 1979