StephanieBald

Partner

Stephanie Bald specializes in trademark, false advertising, and unfair competition litigation, disputes, and strategic counseling. She has represented clients in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). Experienced in all aspects of litigation, Stephanie has authored winning trial briefs and dispositive summary judgment motions. She has obtained and defeated requests for emergency relief, including motions for temporary restraining orders, preliminary injunctions, and ex parte requests for discovery. Stephanie has handled a number of TTAB cases through trial, and also has significant appellate experience, having litigated trademark and domain name appeals before the Court of Appeals for the Federal Circuit and other courts of appeals.



Within her counseling practice, Stephanie advises clients on domestic and global trademark enforcement strategies and renders opinions on trademark infringement and dilution; false advertising; and the selection, use, registration, and licensing of trademarks. Stephanie is the current chair of the American Intellectual Property Law Association’s (AIPLA) Trademark Litigation Committee and has written extensively on trademark issues, including as a contributing author to leading treatises on trademark remedies and TTAB practice and procedure. A strong believer that lawyers should serve not only their clients but also their communities, Stephanie has devoted hundreds of hours to pro bono work. Most recently, she obtained asylum for a prominent human rights activist and family, who fled their home country after several attempts were made on their lives.



Stephanie previously practiced trademark and copyright law as an associate and then partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.



stephanie.bald@kelly-ip.com
(202) 808-3573

StephanieBald

Highlights


  • 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.


  • Amazon Technologies, Inc. v. Daigle (TTAB). Successfully litigated a cancellation proceeding against WINDOW SHOPPING for, among other things, "information services, namely, providing information on a wide variety of topics," on the ground of genericness under the TTAB's Accelerated Case Resolution (ACR) procedure.

  • Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB). Successfully challenged an application to register AMAZON VENTURES for various investment and venture capital services using the TTAB’s ACR procedure; earned fame ruling for both the AMAZON.COM and AMAZON marks; prevailed in appeal before the Federal Circuit.


  • Travelers Indemnity Company v. Travellers.com (Fourth Circuit and E.D. Va.). 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; prevailed in appeal before the Fourth Circuit.

  • H.D. Vest, Inc. v. Herbert Vest (N.D. Tx.). 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.

  • Caterpillar Inc. v. K Family Shoes Corporation (C.D. Cal.). Obtained preliminary and permanent injunctions prohibiting defendant U.S. retailer and defendant Chinese manufacturer from using of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR and the yellow and black color combination for footwear; obtained a damages award of $2,000,000 against Chinese manufacturer, plus attorney’s fees and costs.

  • Yahoo! Inc. v. BelgiumDomains, LLC (S.D. Fla.). Represented Yahoo! in a cybersquatting action involving the registration and use of more than 600 domain names comprised of Yahoo!’s trademarks or variations thereof and obtained a consent judgment and permanent injunction pursuant to a confidential settlement agreement.


  • Oakville Hills Cellar, Inc. v. Vina Casa Tamaya S.A. (TTAB). Obtained dismissal of opposition alleging a likelihood of confusion between the marks MAYA and TAMAYA for wine.

  • In re American Petroleum Institute’s Ex Parte Application for Discovery Under § 1782 (N.D. Cal.). Without having to file suit, obtained grant of API’s ex parte application for discovery of Google in the U.S. for evidentiary use in a counterfeiting action in China.

StephanieBald

Professional Activities

  • American Intellectual Property Law Association (Chair, Trademark Litigation Committee, 2012-present; Vice Chair, Trademark Litigation Committee, 2012; Case-Summary Report Coordinator, Trademark Litigation Committee, 2010—2012)

  • Guest Lecturer, American University, Washington College of Law (U.S. Trademark Law) (2008—present)

  • International Trademark Association

  • American Bar Association (Section on Intellectual Property Law)

  • District of Columbia Bar Association (Section on Intellectual Property Law)

  • Illinois Bar Association

StephanieBald

Select Publications

  • Coauthor. "Ethical Issues for Trademark Lawyers Practicing Before the U.S. Patent and Trademark Office," Landslide, ABA, Vol. 5, Nov. 5, 2013.


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

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

  • Coauthor. "Motion Practice," in A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, 2010.

  • 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.

  • Coauthor. "2008 Trademark Decisions of the Federal Circuit," American University Law Review, April 2009.

  • "Japonais Restaurant Name and Concept Do Not Have to go Back to Sweet Home Chicago", Journal of Intellectual Property Law & Practice, June 18, 2008.

  • Coauthor. "Establishing Trademark and Unfair Competition Liability," Trademark Infringement Remedies (BNA Books), 2006.


Select Speeches


  • "Ethics for Trademark Attorneys Practicing Before the USPTO," PLI Advanced Trademark Law Annual Review 2014, April 3, 2014.


  • "Ethics for Trademark Attorneys Practicing Before the USPTO,” ABA Webinar, June 18, 2013.


  • "The American Trademark System,” European Trademarks Summit 2011, IBC Legal Conferences, London, June 27, 2011.


  • "TTAB Accelerated Case Resolution, Recent Trends in Trademark Cases,” Strafford Publications, Inc., Webinar, September 29, 2010.

StephanieBald

Bar and Court Admissions

  • District of Columbia

  • Illinois


  • U.S. Court of Appeals, Federal Circuit

  • U.S. Court of Appeals, Fourth Circuit

  • U.S. District Court, District of Columbia


  • U.S. District Court, District of Maryland


Education

  • American University, Washington College of Law, J.D., cum laude, 2004

  • American University, School of International Service, M.A., International Politics, 2004

  • Denison University, B.A., English Literature, French, summa cum laude, Phi Beta Kappa, 2001