Kelly IP

Firm overview:

Kelly IP has a team of “solid, really smart trademark lawyers with a good specialised practice”. The Washington, DC boutique firm is “knowledgeable and nice to work with” and provides an all-encompassing trademark service, noted by peers for serving “big name clients”. 

Recognised for its prosecution practice, fellow lawyers comment that “Kelly IP does a lot of Trademark Trial and Appeal Board (TTAB) work”. The firm names BMW, Disney and construction equipment manufacturer Caterpillar among its clients.

Team overview:

At the helm of Kelly IP is co-founder and ex-Finnegan lawyer David Kelly. With “a great reputation” and more than 40 years’ experience in trademark, copyright and unfair competition matters, Kelly is primarily a litigator. His experience includes cases reaping awards of nearly $20 million. Kelly has represented motorcycle manufacturer Harley Davidson and pharmaceutical and biotechnology company AstraZeneca in trademark matters. Peers note he will be a difficult act to follow.

Key matters:

• Disney v United Trademark Holdings
  Ex-TTAB judge Linda McLeod was lead attorney handling a federal circuit appeal regarding Disney’s ‘Tinker Bell’ and ‘Tink’ brands. Disney opposed trademark applications for ‘Teen Tink & Design’ and ‘Teen Tinkerbell’ for “dolls” on the ground of likelihood of confusion. The TTAB sustained the opposition which was affirmed in Disney’s favour by the Federal Circuit.
• David Kelly represents BMW in a number of TTAB matters, including an opposition matter against a company that had registered the mark ‘JDHXBMW’.

Clients:

AstraZeneca, BMW, Caterpillar, Disney, Harley Davidson.