LindaMcLeod

Partner

Linda McLeod’s unique experience makes her one of the most sought-after lawyers to handle cases before the Trademark Trial and Appeal Board (TTAB). During her years as a TTAB Administrative Trademark Judge and interlocutory attorney, Linda issued hundreds of decisions in opposition and cancellation proceedings and ex parte appeals from registration refusals. Linda also gained extensive trademark prosecution experience as an examining attorney at the U.S. Patent and Trademark Office (USPTO).



As lead counsel, Linda has won numerous opposition and cancellation proceedings before the TTAB and Court of Appeals for the Federal Circuit. She has extensive experience litigating cases through trial and under accelerated case resolution (ACR) before the TTAB. She has obtained favorable “fame” decisions for major brand owners, enhancing their future enforcement efforts. Linda has successfully negotiated worldwide trademark agreements resolving contentious proceedings in multiple jurisdictions.



Linda has received numerous accolades for her expertise. She was awarded “Best in Trademark” at Legal Media Group America’s Women in Business Law Awards (2012). She is consistently ranked by the World Trademark Review, Guide to the World’s Leading Trademark Law Practitioners, and several other publications, as one of the top trademark lawyers for both contentious and non-contentious trademark matters. According to the Legal 500 U.S., clients say that Linda is a “very bright, skilled, strategic thinker...” who “provides exceptional advice." In the World Trademark Review 1000, clients praise Linda for her "super skills" and "always being on top of the latest trademark law developments" in TTAB and USPTO matters. Linda was appointed by the Secretary of Commerce to serve as a member of the USPTO's Trademark Public Advisory Committee (TPAC), 2011–2014.



Before joining Kelly IP, Linda was a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.



Linda.mcleod@kelly-ip.com
(202) 808-3574

LindaMcLeod

Highlights

  • Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB). Successfully challenged an application to register AMAZON VENTURES for various investment and venture capital services under accelerated case resolution (ACR) before the TTAB and Court of Appeals for the Federal Circuit; earned ruling that both the AMAZON.COM and AMAZON marks are “famous for its services,and significantly so".


  • H-D Michigan, Inc. v. Broehm (TTAB). Successfully litigated an opposition against the mark HOLY-DIVINESON and design for “hats; headwear; shirts; t-shirts” on the ground of likelihood of confusion with the HARLEY-DAVIDSON and HARLEY trademarks and Harley-Davidson’s BAR & SHIELD logo for, among other things, motorcycles, clothing, and headwear. This decision held that Harley-Davidson’s “bar and shield logo, regardless of wording and other matter, is itself a famous mark.…”

  • Gap (Apparel) LLC v. Gap One Enterprises, LLC (TTAB). Prevailed in opposition against GAP ONE mark for general merchandising services, namely, marketing on ground of likelihood of confusion with GAP marks for retail store services and clothing; achieved ruling that GAP trademarks are famous and thus entitled to a broad scope of protection.


  • Starbucks Coffee Co. v. Marshall (TTAB). Successfully opposed LESSBUCKS COFFEE for coffee, tea, and coffee and tea-based beverages, and related retail store services based on a likelihood of confusion with the famous STARBUCKS and STARBUCKS COFFEE trademarks; achieved ruling that STARBUCKS is truly a famous trademark with extensive public recognition and renown.


  • Fort James Operating Co. v. Royal Paper Converting, Inc. (TTAB). Successfully opposed an application for an embossed design for paper towels, facial tissues, paper napkins, and toilet paper on the ground that it was confusingly similar to the registered embossed designs used on BRAWNY paper towels.


  • H-D Michigan, Inc. v. 3222381, Canada, Inc. (TTAB). Prevailed in likelihood of confusion case involving Harley-Davidson’s SCREAMIN’ EAGLE line of motorcycle products, clothing, and accessories.


  • Novo Nordisk A/S v. Innoject, Inc. (TTAB). Successfully challenged application to register the mark INNOJECT for “medical syringes” based on the registered mark INNOLET for “medical disposable hypodermic syringes.”


  • Buell Motorcycle Co. v. Honda Motor Co. (TTAB). Successfully challenged the mark STREETFIGHTER on the grounds that it was generic for a type of motorcycle.


  • Starbucks U.S. Brands Corp. v. Contact Int’l Inc. (TTAB). Prevailed on summary judgment in an opposition against the mark FRIO CAPPUCCINO for “non-alcoholic coffee-based beverages containing milk” on descriptiveness grounds.


  • Celestica North America Inc v. CCC Mobil Oy (TTAB). Successfully opposed an application for the mark CELESTA for software for “smart phones, PDAs, and PCs to provide communications in digital cellular networks and local data management features” based on the mark CELESTICA for memory cards and power supplies.


  • In re National Council for Therapeutic Recreation Certification, Inc. (TTAB). Obtained a decision from the TTAB reversing 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.

LindaMcLeod

Professional Recognition

  • Recognized as "IP Star" by Managing Intellectual Property (2014).

  • Named in Managing IP's Top 250 Women in IP (2014).

  • Awarded “Best in Trademark” at Legal Media Group America’s Women in Business Law Awards (2012, 2013).

  • Recognized by Legal's Finest for Trademark Law-USA (2014).

  • Nominated “Best in Trademark” by Legal Media Group America’s Women in Business Law Awards (2014).

  • Ranked among top D.C. trademark lawyers for contentious and non-contentious work in World Trademark Review 1000, 2011—2013.

  • Ranked among top U.S. business lawyers in Legal Media Group’s Guide to the World’s Leading Women in Business Law, 2010; and among the top U.S. trademark lawyers in the Guide to the World’s Leading Trademark Law Practitioners (2006, 2008, 2010, 2012).

  • Ranked among top IP Lawyers by Washingtonian Magazine (2013).

  • Consistently listed in The International Who’s Who of Trademark Lawyers and Who’s Who Legal: USA—Trademarks since 2009.

  • AV® rated by Martindale-Hubbell.



Professional Activities

  • U.S. Patent and Trademark Office, Trademark Public Advisory Committee (TPAC) (2011—2014)

  • Intellectual Property Owners (IPO) Annual Meeting Planning Committee (2014)

  • American Intellectual Property Law Association (Chair, PTO Relations with the USPTO Committee, 2011—2013)

  • International Trademark Association

  • University of Akron School of Law (Board Member, IP Advisory Council)

  • The Pauline Newman IP American Inn of Court

  • Federal Circuit Bar Association

  • National LGBT Bar Association

LindaMcLeod

Select Publications

  • Coauthor. "Lessons From Recent USPTO Disciplinary Action," Law360, Feb. 21, 2014.

  • Coauthor. “On the Pretrial Management Trail with Blackhorse,” Law360, Aug. 17, 2011.

  • Coauthor. “Ethical Issues in U.S. Trademark Prosecution and TTAB Practice,” The John Marshall Review of Intellectual Property Law, Winter 2010-2011.

  • Coauthor. “U.S. Bose Decision - Effects on Madrid System Users,” WIPO Magazine, June 2010.

  • Coauthor. “Navigating the TTAB’s New Rules: A Survey of Cases Under the New Rules and Their Impact on TTAB Practice and Procedure,” AIPLA Quarterly Journal, Winter 2010.

  • Coauthor. “Recent TTAB Decisions Highlight Challenges of Pleading and Proving Fraud after Bose,” The Intellectual Property Strategist, Feb. 2010.

  • Coauthor. “Motion Practice,” in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, 2010.

  • Coauthor. “Embracing Marketplace Realities: Rediscovering Section 18 of the Lanham Act on the Twentieth Anniversary of Its Revival,” The Trademark Reporter, Nov./Dec. 2009

  • Coauthor. “Accelerated Case Resolution: Expedited Litigation for Less Before the TTAB,” BNA’s Patent, Trademark & Copyright Journal, Nov. 27, 2009.

  • Coauthor. “U.S. TTAB Bars Registration of the Mark A-HOLE PATROL on the Ground that the Mark Is Immoral or Scandalous,” Journal of Intellectual Property Law & Practice, June 2009.




Select Speeches

  • “Tips for Practice Before the Trademark Trial and Appeal Board,” ABA IP Conference (April 4, 2013).

  • “TTAB Practice and Procedure –The Quiz Show,” AIPLA TTAB Rules game show (October 25, 2012).

  • “Up to Speed: Top Ten Trademark Cases and Recent Developments in U.S. Trademark Law That Impact You,” 2012 INTA Trademark Administrator’s Conference (October 15, 2012).

  • “Up to Speed: Top Ten Trademark Cases and Recent Developments in U.S. Trademark Law That Impact You,” IPIC 86th Annual Meeting (October 12, 2012).

  • “Registration of Non-Traditional Trademarks in the United States,” Strafford Publications, Inc. webinar (February 8, 2012).

LindaMcLeod

Bar and Court Admissions

  • New York

  • District of Columbia

  • Oregon

  • Court of Appeals for the Federal Circuit

  • The Supreme Court


Education

  • New York University School of Law, LL.M. Trade Regulation, 1989

  • University of Oregon, J.D., 1988

  • Willamette University, B.A. Economics, 1984