Kelly P. McCarthy

Partner

Description of Practice

Kelly McCarthy represents business entities and individuals in commercial, corporate and intellectual property transactions, with a focus on brand protection issues and trademark and copyright portfolio management. Her clients include public and private domestic and international companies, from emerging regional companies to global industry leaders.

Ms. McCarthy advises clients on a variety of trademark and brand protection issues, including product and corporate name selection; trademark availability and clearance; worldwide branding strategies; trademark assignments, sales, co-existence agreements and license agreements; management and prosecution of worldwide and domestic trademark portfolios; prosecution of U.S. trademark applications; trademark litigation matters before the U.S. Trademark Trial and Appeal Board and state and federal courts; foreign and domestic intellectual property anti-counterfeiting protection measures, enforcement of trademark rights and negotiation of trademark disputes and settlements.

Ms. McCarthy also advises clients in intellectual property and commercial transactions, including software, copyright and patent licensing; technology development and professional services arrangements; distribution and reselling of products and services; transactions supporting web business and e-commerce relationships; technology transfer transactions; mergers and acquisitions and systems procurement and integration transactions.

Before joining Sideman & Bancroft LLP, Ms. McCarthy was Of Counsel at Tomlinson Zisko LLP.

Professional & Community Involvement

Ms. McCarthy belongs to the International Trademark Association (INTA), where she is a member of the Academics Subcommittee of the Membership Services Committee and chair of the Student Membership Project Team. She also is a member of the Intellectual Property Section of the California State Bar. Ms. McCarthy is the author of “Enabling American High-Tech Companies to Protect Their Secrets Abroad: A Comparative Analysis of Irish and American Trade Secret Regulation”, 24 Hastings International and Comparative Law Review 507 (2000-2001). Ms. McCarthy serves on the Board of Directors for the San Francisco Intellectual Property Association.

Ms. McCarthy is an active volunteer and fundraiser for the Peninsula Humane Society/SPCA in San Mateo, California and is a member of the Animal Legal Defense Fund (ALDF).

Education

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