Timothy J. Kelly
Partner, New York
Professional Experience
Timothy J. Kelly is Co-Chairman of the firm’s e-Commerce & New Media Practice Group.
He has extensive experience in all aspects of trademark and unfair competition law, including domestic and international trademark portfolio management, clearing and prosecuting trademarks, licensing, IP due diligence investigations and litigation both in the district and appellate courts and before the Trademark Trial and Appeal Board. He has also had experience negotiating and litigating Internet domain name and other e-commerce disputes. Mr. Kelly has represented a wide range of clients in various industries including clothing, human foods and confections, pet foods, pharmaceuticals, electronics, appliances, and publications.
His trademark litigations include representing:
- Advance Magazine Publishers, Bacardi & Company, Ltd., and Sidney Frank Importing Co., Inc., and EventQuest, Inc., in Advance Magazine Publisher’s Inc. d/b/a The Condé Nast Publications, Inc., Bacardi & Company, Ltd., Sidney Frank Importing Co., Inc., and EventQuest, Inc. v. Jay Norris and Norris/Nelson Entertainment, Inc. (declaratory judgment action involving use of the term TASTEMAKERS; won on summary judgment); and Advance Magazine Publishers in Advance Magazine Publisher’s Inc. d/b/a The Condé Nast Publications, Inc. v. Vogue Int’l Inc. (internet domain name dispute).
- Mars in Mars, Incorporated v. Triunfo-Mex, Inc. (trademark and trade dress infringement); Mars, Incorporated v. Concord Confections (trademark and trade dress infringement); Mars, Incorporated v. Classic Chocolates, Inc. (trademark and trade dress infringement); Hershey Foods Corp. v. Mars, Incorporated (trade dress infringement and dilution); and Mars, Incorporated v. Dan Dee Int’l, Ltd. (trademark opposition proceeding
- Bear U.S.A. in Bear U.S.A., Inc. v. William Kim, et al. (trademark and trade dress infringement); Bear U.S.A., Inc. v. Bing Chuau Group U.S.A. Corp. (trademark and trade dress infringement and contempt); Golden Bear, Inc. v. Bear U.S.A., Inc. (trademark infringement); Bear U.S.A., Inc. v. The Bear Partnership (trademark opposition/cancellation proceding).
- Electrolux Home Products in BSH Home Appliances Corp. v. Electrolux Home Products, Inc. (trademark infringement).
- Warner Lambert in Nabisco Inc. v. Warner Lambert Co. (trademark infringement).
- Nike in FIFA (Federation International Football Ass’n) v. Nike, Inc. (trademark infringement).
Mr. Kelly is a member of the firm’s Recruiting Committee. Mr. Kelly is responsible for the firm's Trademark Law & Practice Update.
Awards and Recognition
Listed in Legal 500 2007, 2008 and 2009 in IP-Non-Contentious/Transactional: -- trademarks-full coverage. He was also listed in the 2008 and 2009 edition of the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners.
For information on the selection processes, see:
http://www.legal500.com/index.php?option=com_content&task=view&id=772&Itemid=1
http:// www.expertguides.com/default.asp?page=11&stub=2/
Education
J.D., Pace University School of Law, 1991, Notes and Comments Editor, Pace Environmental Law Review
B.S. Biology, Fairfield University, 1986
Bar Admissions
State of New York, 1992; State of Connecticut, 1991; U.S. District Courts for the Southern and Eastern Districts of New York
Professional Activities
American Bar Association; American Intellectual Property Law Association; New York State Bar Association; New York Intellectual Property Law Association; International Trademark Association
Related Information
Representative Cases
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M Ship Co. v. Ice Marine Ltd.
Fed. Cir. 2009 -
Advance Magazine Publishers, Inc., d/b/a The Conde Nast Publications, Bacardi & Co., Ltd., Sidney Frank Importing Company, and EventQuest, LLC v. Jay Norris, Norris/Nelson Entertainment, Inc. and Tastemakers Media, LLC
S.D.N.Y. 2008 -
M Ship Co., LLC v. Ice Marine LTD.
S.D.Fl. 2008 -
Schaeffler KG v. Brastates Bearings Industries, et al.
S.D.Fl., 2008 -
The Bear Partnership and Wings Research and Development, S.r.L. v. Bear U.S.A., Inc.
Trademark Trial and Appeal Board 2004 -
Federation Internationale de Football Association v. Nike Inc.
D.C.C. 2003 -
Mars, Incorporated v. Triunfo-Mex, Incorporated, et al.
E.D.N.Y. 2003 -
Nabisco v. Warner-Lambert Co.
2d Cir. 2000 -
Advance Magazine Publisher’s, Inc. d/b/a/The Conde Nast Publications, Inc. v. Vogue Int’l, Inc.
D.N.J. 2000 -
Bear U.S.A., Inc. v. William Kim, et al.
S.D.N.Y. 1999 -
Hershey Foods Corp. v. Mars, Incorporated
M.D.Pa 1998
Publications
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Fitzpatrick's Trademark Law and Practice Update
Volume 4, Issue 1
May 19, 2010 -
'Greening' a Law Firm
Bloomberg's May Law Firm Management Law Report
May 2010 -
Year in Review
IAM Magazine Brands in the Boardroom
May 2010 -
e-Bay's Online Sales Do Not Infringe TIFFANY Trademark
Fitzpatrick Case Update
April 2, 2010 -
TTAB's COLD WAR MUSEUM cancellation decision reversed
World Trademark Review Daily
December 4, 2009 -
Fitzpatrick, Cella, Harper & Scinto’s U.S. Trademark Law and Practice Update
Volume 3, Issue 2
December 2, 2009 -
Pepsi fails to derail launch of Coca-Cola’s reformulated sports drink
World Trademark News Daily
October 1, 2009 -
Removal of UPCs constitutes trademark infringement, says Second Circuit
World Trademark Review Daily
July 8, 2009 -
Fitzpatrick, Cella, Harper & Scinto’s U.S. Trademark Law and Practice Update
Volume 3, Issue 1
May 14, 2009 -
Avoiding fraud in the prosecution and maintenance of US trademarks
Intellectual Asset Management's Brands in the Boardroom
April 2009 -
Google dealt blow in keyword case
World Trademark Review Daily
April 17, 2009 -
Infringement - Burden to Police Must Be Bourne By Trademark Owner
World Intellectual Property Digest 2008
December 2008 -
Metatag use leads to award of profits and attorneys' fees
World Trademark Law Report
November 21, 2008 -
Fitzpatrick, Cella, Harper & Scinto’s U.S. Trademark Law and Practice Update
Volume 2, Issue 3
November 11, 2008 -
Fitzpatrick, Cella, Harper & Scinto’s U.S. Trademark Law and Practice Update
Volume 2 Issue 2
May 14, 2008 -
Last Best Beef, L.L.C. v. Dudas
World Trademark Law Report
November 3, 2006
Events
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Challenging Times: Intellectual Property Assets and Bankruptcy
Fall Meeting of the New York State Bar Association's Intellectual Property Section
October 16, 2009 -
From Outdated to Updated
International Trademark Association's 127th Annual Meeting
May 14-18, 2005 -
Advanced Issues In Trademark Licensing
International Trademark Association's 126th Annual Meeting
May 1-5, 2004 -
INTA's 125th Annual Meeting
May 3-7, 2003 -
Enforcement and Infringement Litigation
INTA Practice Forum
February 27, 2003
In The News
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Three Fitzpatrick Lawyers Named World's Leading Trade Mark Law Practitioners
Guide to the World's Leading Trade Mark Law Practitioners
2008
Press Releases
- E tkelly@fchs.com
- T (212) 218-2262
- F (212) 218-2200
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