Michael Kelly’s practice encompasses litigation and counseling matters in all areas of intellectual property law, patents, trademarks, copyrights and unfair competition as well as related fashion, entertainment, music, contract, Internet and domain name issues. Mr. Kelly has appeared before federal courts, state courts, the Trademark Trial and Appeal Board and UDRP arbitration panels in numerous proceedings. He also assists clients with non-contentious matters including the acquisition of intellectual property rights and provides counseling to clients on their intellectual property portfolios. Mr. Kelly’s clients have included Walmart, SAP, Fabergé, D'Artagnan, and LeSportsac, among others.
Mr. Kelly has considerable experience with assessing the availability and registrability of trademarks and the acquisition and protection of domain names. In addition to securing, protecting and enforcing clients’ intellectual property rights, he also routinely counsels clients on other intellectual property related matters including brand management issues, advertising issues and contracts, anti-piracy programs and enforcement, trademark counterfeiting and gray market goods, compliance with the Children’s Online Privacy Protection Act (COPPA), website privacy policies, general website layout, website disclaimers and the Digital Millennium Copyright Act (DMCA).
- Fabergé, a famed jewelry retailer, in a trademark infringement case against a New York City restaurant, lounge, and event space called "Faberge.” In August 2014, a New York Federal Judge’s ruling awarded our client an injunction to block the owners of the restaurant from using the famous Fabergé name and distinctive storefront design.
- Walmart, a leading Fortune 500 retailer, in assisting with all trademark, trade dress, and design patent matters. We have reviewed over 1,000 shoes in our U.S. design patent shoe review program on behalf of Walmart.
- D'Artagnan, a leading gourmet food retailer and manufacturer, in an opposition proceeding before the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office. After mounting a vigorous defense on behalf of our client, the case settled.
- Queens Brewery, a craft brewery, in all intellectual property aspects of being a new craft brewery and assisting with the brewery's branding initiatives. We successfully opposed a U.S. trademark application that was encroaching on Queens Brewery’s rights.
- Eastman Sporto Group, manufacturer and supplier of the SPORTO shoe brand, in a Uniform Dispute Resolution Policy domain name proceeding before the World Intellectual Property Organization involving the domain name <sporto.com>. The panel found in favor of Eastman Sporto Group and ordered the domain name, <sporto.com>, be transferred to the company. In re <sporto.com> (WIPO)
- GFI Brokers LLC, in a trademark infringement suit against SCB & Associates and Starsupply Renewables SA. Obtained a favorable settlement wherein defendants agreed to halt all use of the infringing mark and to rebrand all of their activities in all of the Americas, among other favorable terms. GFI Brokers LLC v. SCB & Associates, et al. (S.D.N.Y.)
- Wonderfactory LLC, a Web design and strategy company, in a copyright claim over the use of photographs in an iPad app demonstration. Successfully resolved on behalf of client. SIC Media, Inc. v. Time Inc., et al. (S.D.N.Y.)