- Brand Integrity and Innovation Group
- Intellectual Property
Kelly McCarthy represents clients in relation to brand protection issues, trademark enforcement and portfolio management. Her clients include public and private entities, from emerging regional companies to global industry leaders.
Ms. McCarthy advises clients on a variety of trademark and brand protection issues, including matters involving product and corporate name selection; trademark availability and clearance; worldwide branding strategies; trademark related agreements including licenses; management and prosecution of worldwide and US trademark portfolios; disputes before the U.S. Trademark Trial and Appeal Board; domain name disputes and cybersquatting concerns; foreign, domestic and online anti-counterfeiting and enforcement measures; advertising, claims and promotions, and social media and Internet marketing issues.
Ms. McCarthy specializes in the development and implementation of customized and comprehensive brand protection programs that focus on global trademark portfolio growth while combatting product counterfeiting concerns and other infringements.
Ms. McCarthy belongs to the International Trademark Association (INTA), where she has served as the chair of the Academic Committee and now sits on the unREAL Campaign Committee. She is also a member of the San Francisco Intellectual Property Association and the Personal Care and Products Council. Ms. McCarthy is the author of a number of articles and journal publications and speaks and writes frequently on intellectual property issues.
Ms. McCarthy is a member of the West Coast Board of Directors for buildOn, a national charitable organization focused on breaking the cycle of poverty, illiteracy and low expectations through service and education in the United States and developing nations.
Listed in Euromoney’s Expert Guide: Top Women in Business Law; Trademark Practitioners, 2013, 2014, 2016 and World Trademark Review’s List of The World’s Leading Trademark Professionals 2017.
- B.A., Loyola Marymount University, 1998, cum laude
- University College Dublin, Ireland, 1996-1997
- J.D., University of California, Hastings College of the Law, 2001
- "Brand Protection in the Web Marketplace: A Task for Mere Mortals?" InsideCounsel, 2015
- Commentary, "With No Trademark, Sriracha Name is Showing Up Everywhere," Los Angeles Times, 2015
- Commentary, "Big fish and Whacked Moles:How to Fight Anonymous Counterfeiters Who Are Tarnishing Your Brand," InsideCounsel, 2014
- "Don’t Ya Just Love E-Commerce? Effective Web Monitoring Programs for Anti-counterfeiting," InsideCounsel, 2014
- "Positioning Trademark Portfolios and Supply Chains to Combat Counterfeits," InsideCounsel, 2014
- "Strategic Budgeting for Anti-Counterfeiting Programs," InsideCounsel, 2014
- "Trademark Saga for King's Candy Crush Game," San Francisco Daily Journal, 2014
- Co-author, "Co-branding: A sweet business strategy?" Westlaw Journal - Computer & Internet, 2014
- Commentary, " David vs. Goliath, Trader Joe's Sues Independent Reseller 'Pirate Joe'," Forbes, 2013
- Commentary, "How to Avoid the Pinterest Bandit," Upstart Business Journal, 2012
- Commentary, "New York Federal Judge Denies Jurisdiction Over Alleged California Cybersquatter," The Westlaw Journal - Computer & Internet, 2012
- "Domain Names: Protecting Your Turf," The Street, 2012
- Commentary, "Online Counterfeiting," BNA's Patent, Trademark & Copyright Law Daily™, 2011
- Co-author, "Protecting Your Budget While Protecting Your Brand," Executive Counsel, 2011