Timothy J. Kelly

Timothy J. Kelly

Partner, New York

Timothy Kelly serves as Chair of the Firm’s Trademark Practice Group. He has extensive experience in all aspects of trademark, unfair competition, and false advertising 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.

Tim is also Chair of the Firm’s Consumer Goods Practice and has represented a wide range of clients in various industries including financial services, apparel, human foods and confections, pet foods, pharmaceuticals, electronics, appliances, consumer goods, and publications.

Tim also has experience negotiating and litigating Internet domain name and other e-commerce disputes, as well as experience in pharmaceutical and consumer products patent litigation.

Tim is editor of the firm's Trademark Law & Practice Update and is a member of the Firm’s Recruiting Committee.

Case Highlight
Tim secured a temporary restraining and seizure order from the United States District Court for the Southern District of Florida on behalf of client Schaeffler Technologies against a distributor of counterfeit automobile clutches and clutch components. Thereafter, working with a team made up of the client and several U.S. Marshals from the Miami office of the US Marshal’s Service, Tim executed the seizure Order and confiscated several thousand pieces of counterfeit product.
What Others Say
  • “client focused and business oriented” (Legal 500 2015)
  • “Dedicated, attentive and a pleasure to work with” (World Trademark Review 1000 2013)
  • “He is an excellent litigator, great to work with and has excellent business judgment” (World Trademark Review 1000 2012)
  • “very focused and practical trademark attorney” (World Trademark Review 1000 2011)
  • [is seen as] “professional, knowledgeable, thorough and fast” (Legal 500 2010)
  • "Always thinking about the client”and “responsive to strategic needs” (Legal 500 2008)
Representative Matters
  • American Express in American Express Marketing & Development Corp. and American Express Travel Related Services Company, Inc. v. Gary Noland (declaratory judgment; trademark infringement)
  • Schaeffler Technologies GmbH & Co. KG in Schaeffler KG v. Alliance Bearing Industries, Inc. (trademark infringement); Schaeffler KG v. Demers (trademark infringement); and Schaeffler KG v. Brastates Bearings Industries, Inc. (trademark counterfeiting, ex parte temporary restraining order, seizure).
  • Gilead Sciences, Inc. in Gilead Sciences, Inc. v. Sigmapharm Laboratories, LLC (patent infringement); Combe Incorporated in San Francisco Technologies v. Combe Incorporated, et al. (patent marking); Baby Bjorn AB in Baby Bjorn AB v. Regal Lager, Inc. (patent infringement); and Warner Chilcott Laboratories in Warner Chilcott Laboratories v. Ethex Corporation and KV Pharmaceuticals Co. (patent infringement).
  • 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 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).
Events / Publications
News & Press