Catherine MC Farrelly

Chair of the Trademark a& Brand Management Group at Frankfurt Kurnit Klein & Selz PC
Ranked in United States: New York
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Silver - Individuals: prosecution and strategy

Bronze - Individuals: enforcement and litigation

“Professional, timely and accurate”, is the verdict on premier media, entertainment and advertising boutique Frankfurt Kurnit Klein & Selz, whose trademark lawyers “produce outstanding results while meeting tight deadlines and charging reasonable fees”. Prioritising close relationships, the team provides bespoke services in recognition of the unique needs of each client. The advice given by the likes of Catherine Farrelly and Kimberly Maynard is always easily actionable, too, which is highly appreciated. As chair of the trademark and brand management group, Farrelly provides strong leadership to her firm as well as those she represents. One source comments: “We couldn’t be happier with what Catherine and her colleagues have done for us. In particular, she has successfully handled numerous high-profile clearance issues and agreement negotiations, as well as settled a long-running contentious matter. More generally, she has coordinated with foreign counsel on multi-jurisdictional trademark matters, which she has done very effectively. Catherine has sound judgement and a practical mindset, and completes assignments efficiently, delivering exceptional results at a significantly lower billing rate than many other firms, particularly in New York.” Her frequent collaborator Maynard also garners glowing notices: “Kim is prompt and cost effective, and works with agility and resourcefulness in very competitive spaces.” She has a high degree of expertise when it comes to new product launches in the e-commerce space, which puts her in high demand as more businesses move online. Chair of the IP practice Edward Rosenthal completes the firm’s line-up of WTR 1000 representatives. A polished litigator and enforcer, he brings gravitas to the courtroom and the negotiating table.

Catherine MC Farrelly's Profile

Catherine MC Farrelly is a partner and chair of the trademark and brand management group at Frankfurt Kurnit in New York City, and a member of the firm’s litigation group.

Ms Farrelly is an internationally recognised leader in the field of trademark law who advises some of the world’s leading brands on IP matters. She helps her clients plan strategies, manage trademark portfolios and protect trademarks and other IP in the US and world markets. She represents well-known companies in a variety of industries, including entertainment, finance, sports, cosmetics, toys, beverages, real estate and non-fungible tokens.

Ms Farrelly has focused her practice on trademark and copyright law for more than 20 years, and regularly provides clients with strategic advice regarding the availability, validity and enforceability of trademarks. She also has significant experience preventing the unauthorised use of trademarks and copyright through litigation, arbitration and negotiation.

In addition to representing clients in federal court and before the Trademark Trial and Appeal Board, Ms Farrelly helps clients establish, maintain and grow domestic and international trademark portfolios. She negotiates and structures trademark and copyright licences and assignments; routinely shuts down fraudulent websites, online sales of infringing goods and false advertising on social media platforms; and resolves domain name disputes.

Ms Farrelly is an advisory board member for the University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic, a member of the International Trademark Association, MARQUES, the Copyright Society, the New York Intellectual Property Law Association and the New York State Bar Association. She is admitted to practise in New York, the US District Court for the Southern District of New York, the US District Court for the Eastern District of New York and the US Supreme Court. 
 

Firm Profile

Praised by Best Law Firms and World Trademark Review, the Frankfurt Kurnit Trademark & Brand Management Group represents businesses and individuals in the protection, enforcement and licensing of trademark and related rights. We manage thousands of domestic and international trademark files and have handled trademark matters and resolved disputes for recognised brands and individual trademark owners.

Our clients 

We have the honour of representing some of the world’s most recognisable brands in trademark matters. Our clients include consumer products and services companies; media, entertainment and sports entities; advertising agencies, marketing and public relations companies; and performers, writers, athletes, artists, fashion models, and other celebrities and celebrity estates. For example, we represent JetBlue Airways, Scholastic Inc, John Wiley & Sons, NHL Enterprises, Nike, New York Road Runners, Marchesa, Bombas, The South Beach Diet, Casper Sleep Inc, Hasbro Inc and Ayr Wellness.

Our global brand management services

We handle clearance, prosecution, opposition, cancellation, monitoring, enforcement and litigation in the United States and throughout the world. In partnership with our clients, we tailor strategies to meet budgets and exceed goals for international protection. Because approximately 60% of our current clients’ portfolios is outside the United States, the lawyers and paralegals on our team deliberately think globally when addressing daily issues. We have a deep network of leading trademark lawyers around the world whom we personally know and call on regularly. Over decades, we have vetted and established relationships with service providers who are among the best in their respective territories.

On a daily basis, we:

  • review international watch notices and analyse potential enforcements;
  • develop strategies to maximise international protection within budgets;
  • work with local associates to send cease and desist letters around the world;
  • file oppositions, petitions to cancel and litigations against infringing or blocking marks;
  • craft creative settlement strategies to resolve multinational conflicts;
  • negotiate strategic purchases and assignments to gain territorial priority; and
  • consider our client’s business needs and give practical, commercially minded advice.

Our global brand management services are customised to each client and we pride ourselves on taking a client-centred, pragmatic and personalised approach to each brand we represent. Our group is well versed in inventive strategies for searching and clearing a mark internationally within a budget, and employs creative methods to reduce costs. We keep our clients’ business needs at the forefront of our approach to brand management.

Our trademark and brand management group also frequently handles novel matters arising from new forms of technology and communications. For example, we have recently advised on matters involving:

  • spoofed emails used for fraudulent schemes;
  • website scraping and cloning;
  • cybersquatters in foreign jurisdictions;
  • publishers of infringing e-books;
  • hashtag use, protection and enforcement in social media;
  • social media uses and search engine results;
  • non-fungible tokens and blockchain technology;
  • Uniform Rapid Suspension System and UDRP proceedings; and
  • Trademark Clearinghouse entries and enforcement in new gTLDs.

Trademark and trade dress litigation

If a dispute escalates, we are well placed to prosecute or defend litigation. We have handled some of the most significant trademark litigations of the past 20 years for a diverse group of clients, including representing John Deere in a famous anti-dilution case and Sephora in one of the first cases applying the Trademark Dilution Revision Act.

Domain name and internet-related enforcement expertise

We have extensive experience in domain name and internet-related enforcement, including interpreting and applying the Digital Millennium Copyright Act (DMCA), the Anti-Cybersquatting Consumer Protection Act and other new media statutes and case law. We routinely use third-party dispute mechanisms to halt infringement quickly and inexpensively. We frequently assist clients in responding to DMCA takedown notices, and in working to de-escalate potentially contentious situations.

Counterfeit and grey-market goods enforcement

We handle the takedown and removal of counterfeit and infringing products sold through third-party websites and elsewhere. Additionally, we work with customs officials and initiate proceedings before the International Trade Commission to prevent the sale and distribution of grey market, counterfeit and other infringing goods. We have successfully arranged for seizures of infringing goods.

Visit our IP blog for legal updates and expert insights at https://ipandmedialaw.fkks.com/.

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