‘Sucks’-type Domain Names & Criticism Sites under the UDRP David Lindsay Monash Law.
StephanieBald - Kelly IP · name disputes under the Uniform Domain Name Dispute Resolution Policy...
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Kelly IP, LLP | 1300 19th Street, NW | Suite 300 | Washington, DC 20036 | Phone (202) 808-3570 | Fax (202) 354-5232 www.kelly-ip.com Stephanie H. Bald Partner (202) 808-3573 [email protected] StephanieBald Partner Stephanie Bald specializes in trademark litigation, disputes, and strategic counseling. She represents clients in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). She also handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has significant experience managing global trademark portfolios and advising clients on the selection, use, registration, enforcement, and licensing of trademarks. Stephanie has been named to Managing Intellectual Property’s Top 250 Women in IP (2014-2018), named to the World Trademark Review 1000 (2016-2018), and recognized as an “IP Star” by Managing Intellectual Property (2014-2018). According to World Trademark Review 1000, clients describe Stephanie as “a fierce advocate with a wealth of experience” and “a jack of all trades who does a fabulous job in everything.” Stephanie “does a stellar job representing her clients” due to her “strategic vision” and “ability to foresee short-term and long-term issues coming down the road.” She also possesses “a business-minded outlook, her fundamental understanding of the law is top-notch and, importantly, she is a real joy to work with.” In December 2018, Stephanie was appointed by the U.S. Secretary of Commerce to serve a three-year term on the USPTO’s Trademark Public Advisory Committee (TPAC). TPAC is a statutorily created committee that reviews the policies, goals, performance, budget, and user fees of trademark operations and advises the USPTO on these matters. Ms. Bald also has long been active with the American Intellectual Property Law Association (AIPLA), where she has served as the chair and vice chair of the Trademark Law and Trademark Litigation Committees. She is currently the chair of the Subcommittee for Succession and Leadership of AIPLA’s Woman and IP Committee. Stephanie has spoken and written extensively on a wide variety of trademark issues, including as a contributing author to leading treatises on trademark remedies and TTAB practice and procedure. She is also an Adjunct Professor at American University’s Washington College of Law, where she has taught an advanced course on trademark practice and procedure for many years. Stephanie previously practiced trademark law as an associate and partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C. Highlights Đ Caribe Corp. v. Philips (D.N.J.). After bench trial, obtained finding of no liability in Philips’s favor on trademark infringement claims asserted by Caribe against Philips’s corporate tagline and reversal of TTAB decision finding a likelihood of confusion between the parties’ marks; earlier in the case, obtained summary judgment that Caribe was not entitled to any form of monetary relief on its trademark infringement and related claims. Đ Great Harvest Franchising, Inc., et al. v. Panera Bread Company (W.D.N.C.). Defended Panera in trademark infringement action brought by Great Harvest alleging Panera’s FOOD AS IT SHOULD BE tagline infringed Great Harvest’s BREAD. THE WAY IT OUGHT TO BE. tagline. Case was amicably resolved without any admission of liability by Panera and with Panera continuing to use its FOOD AS IT SHOULD BE tagline. Đ H.D. U.S.A., LLC v. Mayo (E.D. Wis.). Obtained summary judgment for Harley-Davidson on its trademark infringement and counterfeiting claims, a permanent injunction prohibiting defendants from selling their infringing charms, and an award of $6 million in statutory damages. Bar and Court Admissions Đ District of Columbia Đ Illinois Đ U.S. Court of Appeals, Federal Circuit Đ U.S. Court of Appeals, Fourth Circuit Đ U.S. District Court, District of Columbia Đ U.S. District Court, District of Maryland Đ U.S. District Court, Eastern District of Wisconsin Education Đ American University, Washington College of Law, J.D., cum laude, 2004 Đ American University, School of International Service, M.A., International Politics, 2004 Đ Denison University, B.A., English Literature, French, summa cum laude, Phi Beta Kappa, 2001
Transcript of StephanieBald - Kelly IP · name disputes under the Uniform Domain Name Dispute Resolution Policy...
Kelly IP, LLP | 1300 19th Street, NW | Suite 300 | Washington, DC 20036 | Phone (202) 808-3570 | Fax (202) 354-5232
www.kelly-ip.com
Stephanie H. BaldPartner
(202) 808-3573 [email protected]
StephanieBald Partner
Stephanie Bald specializes in trademark litigation, disputes, and strategic counseling. She represents clients in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). She also handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has significant experience managing global trademark portfolios and advising clients on the selection, use, registration, enforcement, and licensing of trademarks.
Stephanie has been named to Managing Intellectual Property’s Top 250 Women in IP (2014-2018), named to the World Trademark Review 1000 (2016-2018), and recognized as an “IP Star” by Managing Intellectual Property (2014-2018). According to World Trademark Review 1000, clients describe Stephanie as “a fierce advocate with a wealth of experience” and “a jack of all trades who does a fabulous job in everything.” Stephanie “does a stellar job representing her clients” due to her “strategic vision” and “ability to foresee short-term and long-term issues coming down the road.” She also possesses “a business-minded outlook, her fundamental understanding of the law is top-notch and, importantly, she is a real joy to work with.”
In December 2018, Stephanie was appointed by the U.S. Secretary of Commerce to serve a three-year term on the USPTO’s Trademark Public Advisory Committee (TPAC). TPAC is a statutorily created committee that reviews the policies, goals, performance, budget, and user fees of trademark operations and advises the USPTO on these matters. Ms. Bald also has long been active with the American Intellectual Property Law Association (AIPLA), where she has served as the chair and vice chair of the Trademark Law and Trademark Litigation Committees. She is currently the chair of the Subcommittee for Succession and Leadership of AIPLA’s Woman and IP Committee. Stephanie has spoken and written extensively on a wide variety of trademark issues, including as a contributing author to leading treatises on trademark remedies and TTAB practice and procedure. She is also an Adjunct Professor at American University’s Washington College of Law, where she has taught an advanced course on trademark practice and procedure for many years.
Stephanie previously practiced trademark law as an associate and partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.
Highlights Đ Caribe Corp. v. Philips (D.N.J.). After bench trial, obtained finding of no liability in Philips’s
favor on trademark infringement claims asserted by Caribe against Philips’s corporate tagline and reversal of TTAB decision finding a likelihood of confusion between the parties’ marks; earlier in the case, obtained summary judgment that Caribe was not entitled to any form of monetary relief on its trademark infringement and related claims.
Đ Great Harvest Franchising, Inc., et al. v. Panera Bread Company (W.D.N.C.). Defended Panera in trademark infringement action brought by Great Harvest alleging Panera’s FOOD AS IT SHOULD BE tagline infringed Great Harvest’s BREAD. THE WAY IT OUGHT TO BE. tagline. Case was amicably resolved without any admission of liability by Panera and with Panera continuing to use its FOOD AS IT SHOULD BE tagline.
Đ H.D. U.S.A., LLC v. Mayo (E.D. Wis.). Obtained summary judgment for Harley-Davidson on its trademark infringement and counterfeiting claims, a permanent injunction prohibiting defendants from selling their infringing charms, and an award of $6 million in statutory damages.
Bar and Court Admissions
Đ District of Columbia
Đ Illinois
Đ U.S. Court of Appeals, Federal Circuit
Đ U.S. Court of Appeals, Fourth Circuit
Đ U.S. District Court, District of Columbia
Đ U.S. District Court, District of Maryland
Đ U.S. District Court, Eastern District of Wisconsin
Education
Đ American University, Washington College of Law, J.D., cum laude, 2004
Đ American University, School of International Service, M.A., International Politics, 2004
Đ Denison University, B.A., English Literature, French, summa cum
laude, Phi Beta Kappa, 2001
Kelly IP, LLP | 1300 19th Street, NW | Suite 300 | Washington, DC 20036 | Phone (202) 808-3570 | Fax (202) 354-5232
www.kelly-ip.com
StephanieBaldPartner
Đ Represented Aston Martin in litigations to enforce its iconic grille designs (C.D. Cal.).
Đ Twin Cities Public Television, Inc. v. RH Reality Check (D. Md.). Represented preeminent Public Broadcasting Service (PBS) affiliate television station in a trademark litigation against RH Reality Check, an online news reporting service focused on gender, race, and political issues regarding use of the mark REWIRE.
Đ Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB). Successfully challenged an application to register AMAZON VENTURES for various investment and venture capital services using the TTAB’s ACR procedure; earned fame ruling for both the AMAZON.COM and AMAZON marks; prevailed in appeal before the Federal Circuit.
Đ Travelers Indemnity Company v. Travellers.com (4th Cir. and E.D. Va.). Obtained summary judgment on cybersquatting claim on behalf of insurance company Travelers, resulting in an order directing the domain name TRAVELLERS.COM to be transferred to Travelers; prevailed in appeal before the Fourth Circuit.
Đ American InterContinental University et al. v. American University (N.D. Ill., D.D.C). Defended American University in a declaratory judgment action regarding whether the plaintiff’s use of AMERICAN INTERCONTINENTAL UNIVERSITY infringed the client’s rights in AMERICAN UNIVERSITY.
Đ Monster, Inc. v. Monster Memory and More, Inc. (TTAB). Obtained cancellation of registration for mark MONSTER MEMORY AND MORE for “memory cards” based on a likelihood of confusion with client’s prior used and registered MONSTER marks for audio and video cables, among other goods, under the TTAB’s ACR procedure; earned fame ruling for client’s MONSTER marks.
Đ Amazon Technologies, Inc. v. Daigle (TTAB). Successfully litigated a cancellation proceeding against WINDOW SHOPPING for, among other things, “information services, namely, providing information on a wide variety of topics,” on the ground of genericness under the TTAB’s Accelerated Case Resolution (ACR) procedure.
Đ H.D. Vest, Inc. v. Herbert Vest (N.D. Tx.). Defeated a motion for preliminary injunction filed by Wells Fargo subsidiary, H.D. Vest, Inc., seeking to enjoin defendant from using his personal name H.D. Vest in connection with his businesses.
Professional Activities
Đ Adjunct Professor, American University, Washington College of Law (Trademark Practice and Procedure) (2015-present)
Đ American Intellectual Property Law Association (Chair, Trademark Law Committee, 2016-present; Vice Chair, Trademark Law Committee, 2015-2016; Chair, AIPLA Trademark Boot Camp, 2015-2016; Chair, Trademark Litigation Committee, 2012-2014; Vice Chair, Trademark Litigation Committee, 2012; Case-Summary Report Coordinator, Trademark Litigation Committee, 2010-2012).
Đ International Trademark Association
Đ American Bar Association (Section on Intellectual Property Law)
Đ District of Columbia Bar Association (Section on Intellectual Property Law)
Đ Illinois Bar Association
Đ Named in Managing IP’s Top 250 Women in IP (2014-2018).
Đ Named in World Trademark Review 1000 (2016-2018).
Đ Recognized as among the top legal practitioners in trademark law in the U.S. in Legal Media Group’s Expert Guides: Guide to the World’s Leading Trade Mark Lawyers (2014- 2018).
Đ Recognized by Managing Intellectual Property Magazine as an “IP Star” (2014-2018).
Đ Recognized by Super Lawyers as one of the Rising Stars for Intellectual Property in the Washington, D.C. area (2014-2018).
Đ Named one of D.C.’s Top 40 Lawyers Under 40 by Trending 40 (2016).
Đ Nominated “Rising Star IP” by Legal Media Group America’s Women in Business Law Awards (2013).
Professional Recognition
Highlights continued...
