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For David Kelly, one of the most satisfying aspects of being a trademark lawyer is that he finds evidence of his handiwork almost every time he leaves the house. “You walk into a grocery store, a department store, down the street, and all the issues I work on, you see,” he says. “I deal with real-life things.” Clients such as Fox Entertainment, Cirque du Soleil, sports equipment maker Head NV, and the U.S. Postal Service turn to Kelly, 50, for trademark litigation and strategic counseling. Kelly also chairs the 30-lawyer trademark and copyright practice at Finnegan, Henderson, Farabow, Garrett & Dunner. “He makes our jobs easier,” says Linda Heban, vice president and chief trademark counsel at Harley-Davidson Motor Co., who turns to Kelly for assistance with trademark enforcement and domain name issues. “He can bring some clarity to complicated situations, and he’s assembled a really excellent team under him.” Heban praises Kelly’s “terrific” work product and his responsiveness, noting she might e-mail him with a question at 8:30 on a Sunday morning and hear back from him 15 minutes later. Kelly has an active litigation practice, both in federal court and at the U.S. Patent and Trademark Office. Recent matters include a complex case last year before the PTO’s Trademark Trial and Appeal Board on behalf of Fort James Operating Co., the maker of Brawny paper towels. Fort James, a subsidiary of Georgia Pacific Corp., opposed an application by Royal Paper Converting Inc. to register a design mark for paper towels. The design — a pattern of circles of squares — was similar to the one embossed on Brawny paper towels. Royal Paper argued that the design printed on Brawny towels was always joined with and overshadowed by the actual Brawny mark, and as a result, purchasers weren’t likely to confuse the products. But the appeal board noted that a product can have more than one trademark without diminishing the value of each one. In ruling for Brawny and denying the application, the board found that confusion was likely based on the identity of the goods and the similarity of the designs. “It was a tough case because we had to deal with issues of functionality, ornamentality, and whether and when the Brawny design had acquired distinctiveness,” Kelly recalls. Also last year, Kelly went after 650 foreign defendants on behalf of Yahoo! Inc. under the Anti-Cybersquatting Consumer Protection Act. The in rem suit, filed in U.S. District Court for the Eastern District of Virginia, targeted 1,866 domain names that contained the Yahoo trademark or a variation of it. A key issue was whether the law required Yahoo to place advertisements in overseas newspapers to give notice of the proceedings, which, as Kelly notes, “would have been a logistical nightmare” as well as very expensive. Kelly first obtained a waiver of the publication requirement and then convinced Judge James Cacheris to allow service of papers by e-mail only. “It was a huge victory and cost savings for the client,” he says. Kelly went on to recover more than 1,800 Yahoo-related domain names. Laura Covington, Yahoo’s associate general counsel, calls Kelly “a straight-shooter” and “a quick study.” Plus, she says, “he’s very good with practical advice. He doesn’t just give a black-and-white legal answer. He considers the business realities as well.” It wasn’t Kelly’s first victory for Yahoo. He points to a memorable case in 1999 related to the Yahoo site for children, Yahooligans (now known as Yahoo! Kids). A grade school teacher was searching for information with his class and accidentally typed in Yaholigans, with one “o” instead of two. What the class found was a Web site featuring hard-core pornography. Yahoo was immediately inundated with complaints. Within a day, Kelly had secured a temporary restraining order to shut down the site. “No trademark case is ever the same,” he says. “There are always different twists.” The Walt Disney Co. is another longtime client. Kelly recalls one successful case opposing the trademark registration of “The Magic Swingdom” — for an instructional golf video for children. Steve Ackerman, vice president and counsel at Disney, praises Kelly as “a very thoughtful and practical lawyer.” Ackerman says Disney seeks Kelly’s counsel on all matter of trademark issues. “It cuts across everything,” he says. “Theme parks, television shows, movies, the Internet.” Kelly earned his law degree in 1983 from Duquesne University School of Law. Early on, he knew he wanted to focus on trademarks. Although he holds a master’s degree in civil engineering, patent work never appealed to him. He worked for Keaty & Keaty in New Orleans before joining Finnegan in 1986. Kelly counts Christopher Foley, Arthur Levine, Griffith Price Jr., Douglas Rettew, and Mark Sommers among his noted colleagues at the intellectual property law powerhouse.

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