Attorney Stephanie Bald of Kelly IP.

About

Stephanie Bald specializes in trademark litigation, disputes, and strategic counseling. She represents clients in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). She also handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has significant experience managing global trademark portfolios and advising clients on the selection, use, registration, enforcement, and licensing of trademarks.

Stephanie has been consistently recognized as a top trademark lawyer nationally. She has been named to Managing Intellectual Property’s Top 250 Women in IP (2014-2019), named to the World Trademark Review 1000 (2016-2020), and recognized as an “IP Star” by Managing Intellectual Property (2014-2020). In World Trademark Review 1000, clients describe Stephanie as “perfect in the trusted advisor role,” “an invaluable part of her client’s internal teams,” “a jack of all trades who does a fabulous job in everything,” “a fierce advocate with a wealth of experience,” “a real joy to work with” and someone clients can “always count on . . . to deliver a great result regardless of the issue.” Clients also praise Stephanie’s “strategic vision,” “ability to foresee short-term and long-term issues coming down the road,” “business-minded outlook,” and “top-notch” understanding of the law.

In December 2018, Stephanie was appointed by the U.S. Secretary of Commerce to serve a three-year term on the USPTO’s Trademark Public Advisory Committee (TPAC). TPAC reviews the policies, goals, performance, budget, and user fees of trademark operations and advises the USPTO on these matters. Ms. Bald also has long been active with the American Intellectual Property Law Association (AIPLA), where she has served as the chair and vice chair of the Trademark Law and Trademark Litigation Committees. She is currently a member of the Executive Committee of AIPLA’s Women and IP Committee and has been nominated to join AIPLA’s Board of Directors starting in the Fall 2020. Since 2014, Stephanie has been an Adjunct Professor at American University’s Washington College of Law, where she teaches an advanced course on trademark practice and procedure.

Before co-founding Kelly IP, Stephanie practiced trademark law as an associate and partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.

Highlights

Federal Court

Caribe Corp. v. Philips (D.N.J.)

After a bench trial, obtained a finding of no liability in Philips’s favor on trademark infringement claims asserted by Caribe against Philips’s corporate tagline and reversal of a TTAB decision finding a likelihood of confusion between the parties’ marks; earlier in the case, obtained summary judgment that Caribe was not entitled to any form of monetary relief on its trademark infringement and related claims.

Great Harvest Franchising, Inc., et al. v. Panera Bread Company (W.D.N.C.)

Defended Panera in trademark infringement action brought by Great Harvest alleging Panera’s FOOD AS IT SHOULD BE tagline infringed Great Harvest’s BREAD. THE WAY IT OUGHT TO BE. tagline. Case was amicably resolved without any admission of liability by Panera and with Panera continuing to use its FOOD AS IT SHOULD BE tagline.

H.D. U.S.A., LLC v. Mayo (E.D. Wis.)

Obtained summary judgment for Harley-Davidson on its trademark infringement and counterfeiting claims, a permanent injunction prohibiting defendants from selling their infringing charms, and an award of $6 million in statutory damages.

Twin Cities Public Television, Inc. v. RH Reality Check (D. Md.)

Represented preeminent Public Broadcasting Service (PBS) affiliate television station in a trademark litigation against RH Reality Check, an online news reporting service focused on gender, race, and political issues regarding use of the mark REWIRE.

Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB)

Successfully challenged AMAZON VENTURES application 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 (4th Cir. 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.

Juan Pablo Chavez v. British Broadcasting Corp. (S.D.N.Y. and 2nd Cir.)

Successfully moved to dismiss plaintiff’s trademark and copyright infringement claims arising out of the BBC’s use of plaintiff’s alleged works and marks; prevailed in appeal before the Second Circuit.

Aston Martin v. Fisker (C.D. Cal.)

Represented luxury car manufacturer Aston Martin in litigation to enforce its iconic grille

Bugatchi Group, Inc. v. Bugatti GmbH (S.D. Fla.)

Represented owner of the BUGATCHI mark for fine men’s apparel in a trademark infringement action against the German company, Bugatti GmbH, regarding its use of BUGATTI for apparel. Case was amicably resolved.

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.

Nobody Media, LLC v. Nobody Works, LLC (E.D.N.Y)

Represented advertising company in two separate trademark infringement cases involving defendant’s use of NOBODY. Obtained consent judgment and permanent injunction.

TTAB

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 ACR procedure.

American University v. American University of Kuwait (TTAB and D.D.C.)

Prevailed in cancellation proceeding filed by American University against a registration for the mark AUK AMERICAN UNIVERSITY OF KUWAIT and Design for educational services under the TTAB’s ACR procedure; defeated multiple counterclaims; appeal is pending before the D.C. district court.

Monster, Inc. v. Monster Memory and More, Inc. (TTAB)

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.

Oakville Hills Cellar, Inc. v. Vina Casa Tamaya S.A. (TTAB)

Obtained a finding of no likelihood of confusion between the marks MAYA and TAMAYA for wine.

Alvi’s Drift Wine International v. von Stiehl Winery (TTAB)

Obtained summary judgment dismissal of mere descriptiveness claim against the mark NAUGHTY GIRL for wine.

Recognitions

  • Recognized by Super Lawyers as a Super Lawyer (2019, 2020) and one of the Rising Stars for Intellectual Property in the Washington, D.C. area (2014-2018).
  • Named in World Trademark Review 1000 (2016-2020), including ranking in the “silver” band nationally for trademark enforcement and litigation (2020).
  • Named one of D.C.’s Top 40 Lawyers Under 40 by Trending 40 (2016).
  • Recognized by Managing Intellectual Property Magazine as an “IP Star” (2014-2020).
  • Named in Managing IP’s Top 250 Women in IP (2014-2019).
  • Recognized as among the top legal practitioners in trademark law in the U.S. in Legal Media Group’s Expert Guides: Guide to the World’s Leading Trade Mark Lawyers (2014-2020).
  • Nominated “Rising Star IP” by Legal Media Group America’s Women in Business Law Awards (2013).

Affiliations

  • U.S. Patent and Trademark Office, Trademark Public Advisory Committee (2018-present)
  • Adjunct Professor, American University, Washington College of Law (Trademark Practice and Procedure) (2014-present)
  • American Intellectual Property Law Association (AIPLA Board of Directors, nominated to serve starting Fall 2020; Executive Committee, Women in IP Committee (2019-present); Chair, Subcommittee on Leadership and Succession, Women in IP Committee (2019-present); Chair, Trademark Law Committee, 2016-2018; Vice Chair, Trademark Law Committee, 2015-2016; Chair, AIPLA Trademark Boot Camp, 2015-2016; Chair, Trademark Litigation Committee, 2012-2014; Vice Chair, Trademark Litigation Committee, 2012; Case-Summary Report Coordinator, Trademark Litigation Committee, 2010-2012)
  • International Trademark Association, Saul Lefkowitz Moot Court Competition Judge, Chicago Regional Competition (2020)
  • American Bar Association (Section on Intellectual Property Law)
  • Chicago Women in Intellectual Property
  • District of Columbia Bar Association (Section on Intellectual Property Law)
  • Illinois Bar Association

Publications

  • Coauthor. “2019 Trademark Decisions of the Federal Circuit,” American University Law Review, April 2020.
  • Coauthor. “2019 Trademark Year in Review,” AIPLA 2019 Annual Meeting Materials.
  • Coauthor. “Motion Practice,” in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, American Bar Association, 2010, 2014, 2016.
  • 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. “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.

Public Speaking

  • “2019 Trademark Year in Review,” AIPLA Webinar, April 14, 2020.
  • Co-presenter, “Professional Responsibility and Practice before the USPTO,” PLI Advanced Trademark Law 2020: Current Issues, New York City, NY, March 11, 2020.
  • American University Federal Circuit Symposium, “False Suggestion of a Connection Under Section 2(a),” Washington, DC, November 1, 2019.
  • “2019 Trademark Year in Review,” AIPLA Annual Meeting, Washington, DC, October 26, 2019.
  • Co-presenter, “TTAB Practice Issues and Tips,” PLI Advanced Trademark Law 2019: Current Issues, New York City, NY, March 13, 2019.
  • Moderator. “Global IP Protection and Enforcement Strategies,” AIPLA Annual Meeting, Washington, DC, October 28, 2016.
  • Moderator. “Board Practice Tips and Pitfalls,” AIPLA Trademark Boot Camp, Arlington, VA, June 10, 2016.
  • Combating Counterfeits During The Holidays: How Are Government And Industry Working Together To Protect Consumers During The Busiest Shopping Season Of The Year?” Briefing to Congressional Trademark Caucus, Washington, DC, December 17, 2015.
  • “Evidence and Accelerated Case Resolution,” AIPLA Trademark Boot Camp, Arlington, VA, 2013-2015.
  • “Ethics for Trademark Attorneys Practicing Before the USPTO,” PLI Advanced Trademark Law Annual Review 2014, New York City, NY, 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.

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
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. District Court, Northern District of Illinois

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