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 counseling. Dave is consistently recognized as one of the country’s top trademark lawyers. In 2016, The Legal 500 U.S. named Dave as a Leading Lawyer, Legal 500's top category, in both trademark litigation and non-contentious trademark matters for the ninth consecutive year. This highest honor was bestowed upon only 9 lawyers across the country in each category. From 2009-2013, Dave was the only U.S. trademark lawyer to be named a Leading Lawyer in both categories, and for 2014-2016 Dave is just one of two Leading Lawyers in both categories. According to Legal 500, clients describe Dave as “an outstanding trademark litigator” and “an exceptionally bright and thoughtful advocate.” Clients also look to Dave for strategic advice based on his reputation for 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 2016, World Trademark Review 1000 named Dave one of the top 27 lawyers nationwide for trademark enforcement and litigation for the second year in a row, and one of 6 "Gold" status lawyers for enforcement and litigation and one of 9 "Gold" status lawyers for prosecution and strategy in the Washington, DC area. According to World Trademark Review 1000, clients describe Dave as "fantastic and practical"; a "superb lawyer" with a "transnational reputation" who "is massively experienced, has a fantastically clear grasp of things and is an eminently practical and skilled negotiator"; Dave "has always been excellent...and there was no doubt that we would follow him" when he co-founded Kelly IP; and clients rely on Dave because his "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 been similarly recognized by Managing Intellectual Property, IP Stars, Legal Media Group, Super Lawyers, and others.
Before joining Kelly IP, Dave practiced trademark and copyright law for 26 years at Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P in Washington, D.C. He served as chair of Finnegan’s Trademark and Copyright Practice Group for most of his 20-plus years as a partner.
- Monster, Inc. v. Monster Memory and More, Inc. (TTAB). Obtained cancellation of registration for mark MONSTER MEMORY AND MORE for "memory cards" based on a likelihood of confusion with client's prior used and registered MONSTER marks for audio and video cables, among other goods, under the TTAB's ACR procedure; earned fame ruling for client's MONSTER marks.
- Obtained summary judgment on cybersquatting claim on behalf of insurance company Travelers, resulting in an order directing the domain name TRAVELLERS.COM to be transferred to Travelers, which was affirmed by the Fourth Circuit Court of Appeals.
- Obtained on behalf of Harley-Davidson a temporary restraining order and multiple preliminary injunctions against a trademark licensee’s unauthorized use of the licenseinjunctions by the Seventh Circuit Court of Appeals.
- 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.
- Recognized by The Legal 500 U.S. as one of the top 10 Leading Lawyers in the U.S. for both trademark litigation and non-contentious trademark law (2008-2015), the only lawyer named on both lists during 2009-2013 and one of only two lawyers named during 2014-2015.
- Recognized by World Trademark Review 1000 as one of the top 22-27 trademark lawyers in the U.S. for contentious work (2012-2016); and one of the top 5-9 trademark lawyers in Washington DC area for contentious work (2011-2016) and non-contentious work (2016).
- Recognized as an "IP Star" by Managing Intellectual Property (2014-2015).
- Shortlisted for Managing Intellectual Property's 2016 "Outstanding IP Litigator Award" in the Washington DC area (Dave was one of only seven lawyers shortlisted for this award, and one of two trademark lawyers).
- Recognized by Super Lawyers as one of the top IP Litigation lawyers in the Washington, D.C. area (2013-2015).
- Recognized for filing the second highest number of UDRP Complaints with the National Arbitration Forum by attorney (2013).
- 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 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 as one of the top 15 Leading Trademark Law Practitioners in the world in Legal Media Group’s Guide to the World’s Leading Trade Mark Practitioners (2010).
- Recognized by Washingtonian Magazine as one of the top IP lawyers in the Washington, D.C. area (2009, 2011, 2014).
- Recognized by Chambers USA as a top intellectual property lawyer in the Washington, DC area (2015)
- Recognized by Intellectual Asset Management (IAM) Magazine as one of 300 leading IP Strategists worldwide (2009-2012).
- Recognized by 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 in the Washington, D.C. area (2008).
- Recognized by Who’s Who Legal for Trademarks (2002-2015)
- Recognized by Who’s Who Legal for Information Technology (2014)
- Three-time recipient of the Burton Award for excellence in legal writing (2002, 2005, 2010).
- Selected to serve on the Panel of Neutrals assemble by WIPO at the inception of the Uniform Dispute Resolution Policy
- District of Columbia Bar
- American Bar Association
- International Trademark Association
- 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.
- District of Columbia
- Duquesne University School of Law, J.D., 1983
- University of Pittsburgh, M.S., Civil Engineering, 1980
- University of Pittsburgh, B.S., Civil Engineering, 1979