Trade mark litigation
Computer technology & services
ICT & software
David Kelly has represented clients in trademark, copyright and unfair competition issues for more than 30 years, with a focus on litigation, disputes, and strategic counselling. Dave represents many famous brands, and has handled many notable matters, including recently obtaining a preliminary injunction followed by an award of $19,200,000 in statutory damages for trademark counterfeiting against a large, high-profile online print-on-demand retailer and the first fame findings for the marks H-D and HD (E.D. Wisconsin 2018), and successfully enforcing AstraZeneca’s single-color “purple” trademark for its NEXIUM® heartburn medication against two generic pharma companies, obtaining TROs and preliminary injunctions on both infringement and dilution grounds along with the first fame finding for AstraZeneca’s “purple” mark (D. Delaware 2015)
Dave is consistently recognized as one of the country’s top trademark lawyers. In 2018, Legal 500 US named Dave as a Leading Lawyer, Legal 500’s top category, for both trademark litigation and non-contentious matters for the 11th consecutive year. Only nine U.S. lawyers were named in each category, and during the past decade Dave was either the only U.S. lawyer or one of only two lawyers named in both categories. In 2017, Dave was named to the inaugural Legal 500 Hall of Fame—only 11 U.S. trademark lawyers were recognized, with Dave the only lawyer named for both trademark categories. According to Legal 500 feedback, clients describe Dave as “a leader in the field,” “a superstar,” “an outstanding trademark litigator,” and “an exceptionally bright and thoughtful advocate.” Clients also look to Dave for strategic advice based on his reputation as being “full of business savvy” and “a source of much practical advice… that understands our business in a way that most lawyers don’t.”
In 2019, WTR 1000 named Dave one of the top 10 lawyers nationwide for both trademark enforcement and litigation and trademark prosecution and strategy. Dave was one of only three lawyers named to both categories in WTR 1000’s top band of nationally recognized lawyers. According to WTR 1000 feedback, Dave is “arguably the best trademark practitioner in the country”; “the man to call” for “make-or-break disputes”; “smart as a whip and always 10 steps ahead of his rivals. When complex questions arise, he thinks outside of the box to deliver ingenious solutions”; a lawyer who “maintains strong relationships with massive brands and has built a stunning firm around him”; “has a fantastically clear grasp of things and is an eminently practical and skilled negotiator” whose “substantial proficiency and estimable business acumen single him out in the field”; and “his real-world advice doesn’t elevate law above business.”
Dave has also been recognized as by IP Stars for many years. IP Stars feedback includes that Dave is a “leader in the field”, a “superstar,” and has “unparalleled knowledge and experience in trademark litigation and TTAB cases.” Dave has been similarly recognized by Managing Intellectual Property, WIPR, Expert Guides, and others.
Before co-founding Kelly IP, Dave practiced for 26 years at Finnegan, Henderson, Farabow, Garrett & Dunner, chairing the trademark group for many years.