Biography
Kelly McCarthy represents clients in relation to brand protection issues, trademark enforcement and portfolio management. Her practice focuses on trademark protection for consumer products with a particular emphasis on beauty, personal care, wellness, sporting goods, and food and beverage industries. 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.
Prior to joining Sideman & Bancroft LLP, Ms. McCarthy was Of Counsel at Tomlinson Zisko LLP.
Experience
Intellectual Property Counseling
- Ongoing representation of ILIA Beauty, a popular maker of clean cosmetics and skin care, in all aspects of intellectual property development, anti-counterfeiting and enforcement matters
- Ongoing representation of Loved01 by John Legend in relation to name selection, clearance, global trademark prosecution and launch
- Ongoing representation of Doen, a popular apparel and accessories brand, in all aspects of intellectual property development, anti-counterfeiting and enforcement matters
- Ongoing representation of several celebrity founded and backed brands including CECRED, Henry Rose, Will Perform in all aspects of brand protection and enforcement with a focus on unique issues associated with famous individuals
- Ongoing representation of CAST Jewelry in relation to intellectual property protection and enforcement issues
- Ongoing representation of Maison Louis Marie, a popular niche fragrance brand in all aspect of trademark protection
- Ongoing representation of Stella & Dot LLC, popular designer of apparel, accessories, cosmetics, and skincare, in all aspects of intellectual property development, anti-counterfeiting and enforcement matters
- Ongoing representation of General Mills in relation to name clearance for new products
- Ongoing representation of Magpul Industries Corp., a leading supplier of accessories for firearms for military and recreational applications, in all aspects of intellectual property development and anti-counterfeiting matters
- Ongoing representation of Varian Medical Systems, Inc., a Fortune 1000 multinational developer and manufacturer of medical devices and software for cancer treatment, in trademark matters and other selected intellectual property issues
Mergers and Acquisitions
- Representation of the selling stockholders of Advanced Portfolio Technologies, Inc., a provider of software and data products supporting investment advisory services, in its sale to SunGard
- Special IP counsel to Incase Designs Corp., a designer and developer of carrying solutions for consumer electronics, in the leveraged buyout of Incase by Swander Pace
- Special IP counsel to Incase Designs Corp., in the acquisition of Incase by Incipio Technologies
- Special IP counsel to Varian Medical Systems, Inc. in spin-off of Varex Imaging
Professional Involvement
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 Brands and Innovation Committee and is a member of the organization’s Research Advisory Council. 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 Board of Directors for the San Francisco Zoological Society, a globally recognized metropolitan zoo, educational and conservation organization.
Listed in World Trademark Review’s List of The World’s Leading Trademark Professionals 2017- 2024. Ms. McCarthy is recognized as a Trademark Star in Managing Intellectual Property‘s 2020-2024 reviews of the world’s leading IP practitioners and law firms.
Listed in The Best Lawyers in America® 2023 and 2024
Education
- Loyola Marymount University B.A. 1998, cum laude
- University College Dublin, Ireland 1996 - 1997
- University of California, Hastings College of the Law J.D. 2001
Admissions
- California
