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  • WTR 1000, New York 2011-2018

Education

  • J.D., Pace University School of Law, 1991
  • B.S., Fairfield University, Biology, Chemistry, 1986

    Notes and Comments Editor, Pace Environmental Law Review

Bar Admissions

  • New York
  • Connecticut

Court Admissions

  • U.S. District Court, Southern and Eastern Districts of New York

Memberships & Affiliations

American Bar Association

American Intellectual Property Law Association

International Trademark Association

New York Intellectual Property Law Association

New York State Bar Association

Timothy J. Kelly

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Partner
  • T: 212.609.6863
    F: 212.645.0596
    • Worldwide Plaza
      825 Eighth Ave., 31st Fl.
      New York, NY 10019

Timothy J. Kelly 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. Mr. Kelly has also handled patent litigation matters in the District Courts and at the Federal Circuit.

His litigations include representing:

  • American Express Marketing & Development Corp. in American Express v. Gary Noland (declaratory judgment action relating to alleged trademark infringement).
  • Schaeffler KG in Schaeffler v. Imex Service, Inc. (trademark counterfeit seizure involving counterfeit LUK®-branded clutches); Schaeffler Technologies AG & Co. KG in Schaeffler v. Brastates Bearings Industries (trademark counterfeit seizure involving counterfeit FAG®-branded bearings).
  • Gilead Sciences, Inc. in Gilead Sciences, Inc. v. Sigmapharm Laboratories, LLC (Hatch-Waxman action involving a pharmaceutical compound used for treating Hepatitis B).
  • 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); 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 Chuan 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 proceeding).
  • 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 recognized by IP Star Managing Intellectual Property, 2013-2016; Legal 500 2007-2015 for Trademarks, Non-contentious (full coverage); Legal 500 2010-2016 Trademarks; Leaders League for New York and USA: Trademark Litigation, and USA Trademark Prosecution, 2015; Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2008-2016; World Trademark Review 1000, 2011-2018; Super Lawyers: New York Metro Edition, 2015-16. World Trademark Review is published by Globe Business Media Group. Super Lawyers is published by Thomson Reuters. A description of their selection process can be found in the respective links above. No aspect of this advertisement has been approved by the Supreme Court of New Jersey.