Catherine M.C. Farrelly

Catherine M.C. Farrelly, formerly Catherine M. Clayton, is a Director in the Intellectual Property Department, and leads the firm's Trademark Practice. She has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution. Ms. Farrelly regularly provides clients with strategic advice regarding the availability, validity and enforceability of trademarks. In addition, she has significant experience preventing the unauthorized use of trademarks and copyrights through litigation, arbitration and negotiation.

Ms. Farrelly has worked extensively with clients in the fields of cosmetics, hair care, alcoholic beverages, apparel, entertainment, biotechnology, pharmaceuticals, finance and real estate. In addition to representing clients in federal court and before the Trademark Trial and Appeal Board, she regularly assists clients with establishing and maintaining domestic and international trademark portfolios; negotiates and drafts trademark and copyright licenses and assignments; protects clients’ trademarks and copyrights by halting on-line auctions of infringing goods; and resolves domain name disputes through negotiation, litigation in federal court, and arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Ms. Farrelly was born in New Jersey and was raised in London, England, The Hague, Netherlands, Kingwood, Texas and Yanbu, Saudi Arabia. In 1992, she earned a bachelors degree from the University of Texas at Austin, with majors in Political Science and French and a minor in Art History. As an undergraduate, Ms. Farrelly also studied law for one year at the Université de Poitiers in France.  She received her J.D. from Georgetown University Law Center in 1997.

Ms. Farrelly began her practice at Pennie & Edmonds LLP and was associated with Paul, Hastings, Janofsky & Walker LLP prior to joining Gibbons.

Education
Georgetown University Law Center (J.D., 1997)
Member, Journal of Law and Policy in International Business

University of Texas (B.A., 1992)
Université de Poitiers, Faculté de Droit (1990 - 1991)

Professional Admissions
State of New York

United States District Court for the Southern District of New York

United States District Court for the Eastern District of New York

United States Supreme Court

Professional Activities
Advisory Board Member, University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic

Member, International Trademark Association ("INTA")

Member, New York Intellectual Property Law Association

Member, New York Bar Association

Publications
"Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations," IP Law Alert, August 28, 2014 (Catherine M.C. Farrelly, Christopher H. Strate)

"McDonald’s Triumphs over BioMcDiesel," IP Law Alert, August 4, 2014 (Catherine M.C. Farrelly, Gianna Cricco-Lizza)

"USPTO Cancels Washington Redskins’ Trademark Registrations," IP Law Alert, June 18, 2014

"The ART Act: New Legislation Proposes Royalties for Visual Artists Based on Secondary Sales," IP Law Alert, March 6, 2014 (Catherine M.C. Farrelly, Uzoamaka N. Okoye)

"Time Bars for Joint Authors and Copyright Registration Cancellation: The Third Circuit Weighs in on Two Issues of First Impression," IP Law Alert, February 21, 2014 (Catherine M.C. Farrelly, Christopher H. Strate)

"Lontex ands Oakley to "Sweat it Out" in Trademark Dispute," IP Law Alert, September 20, 2013 (Catherine M.C. Farrelly, Ralph A. Dengler)

"Coach Loses Design Mark Battle Against E&D Trading, Inc.," IP Law Alert, September 9, 2013 (Catherine M.C. Farrelly, Jillian A. Centanni)

"The Laws of Physics and Copyright Law: SDNY Rules that First-Sale Doctrine Does Not Apply to the Resale of "Used" Digital Media," IP Law Alert, April 12, 2013 (Catherine M.C. Farrelly, James J. Kang)

"Free Speech May Allow Disparagement, but the Trademark Office Does Not: TTAB Affirms Refusal to Register STOP THE ISLAMISATION OF AMERICA," IP Law Alert, February 26, 2013

"Secure Enforceable IP Rights for Product Designs," New York Law Journal, January 14, 2013 (Catherine M.C. Farrelly, William A. Hector)

"The GOLD GLOVE Trademark Infringement Action: Will Rawlings Strike Out For Failure to Adequately Plead Its Case?," IP Law Alert, January 10, 2013 (Catherine M.C. Farrelly, Ralph A. Dengler)

"Supreme Court Hears Oral Argument in Already LLC v. Nike, Inc.," IP Law Alert, November 9, 2012

"Yums v. Nike Update -- Two Amicus Curiae Briefs Filed: One Arguing Vacatur and Remand and the Second in Support of Yums," IP Law Alert, September 6, 2012 (Catherine M.C. Farrelly, Jillian A. Centanni)

"Color Trademarks Remain in Fashion: Second Circuit Sides with Louboutin," IP Law Alert, September 5, 2012

"Already v. Nike:  Petitioner's Brief Asserts that Jurisdiction Remains Despite Covenant Not to Sue," IP Law Alert, August 24, 2012 (Catherine M.C. Farrelly, Owen J. McKeon, Ralph A. Dengler)

"CAVEAT EMPTOR! - USPTO Issues Warning on Misleading Third Party Communications," IP Law Alert, May 11, 2012

"In Defense of Color Trademarks: INTA Submits Amicus Brief in Christian Louboutin v. Yves Saint Laurent," IP Law Alert Blog, November 16, 2011

"Is It Open Season Now for NPEs?," IP Law Alert, October 31, 2011 (Catherine M.C. Farrelly, Ralph A. Dengler)

"A Challenge to Color Trademarks in the Field of Fashion: Christian Louboutin v. Yves Saint Laurent America," IP Law Alert, August 17, 2011 (Catherine M.C. Farrelly, Christopher H. Strate)

"District Court Awards Tory Burch $164 Million in Anti-Counterfeiting Litigation," IP Law Alert, June 13, 2011 (Owen J. McKeon, Catherine M.C. Farrelly)

"Supreme Court Denies Certiorari in Tiffany v. eBay Appeal," IP Law Alert, November 30, 2010

"Farouk Systems Wins $300 Million Damages Award Against On-Line Chinese Counterfeiting Ring," IP Law Alert, October 25, 2010

"Supreme Court Denies Certiorari in Trademark Challenge to Washington Redskins Name," IP Law Alert, January 12, 2010

"Ironing Out eBay's Obligations to Brand Owners," New York Law Journal, August 28, 2009 (Catherine M.C. Farrelly, Lucy E. Emhardt)

"All Over The Map: Luxury Labels Battle eBay With Widely Varied Results," Intellectual Property Newsletter, September 29, 2008 (Catherine M.C. Farrelly, Lucy E. Emhardt)

"Inside the Minds: IP Portfolio Management: Leading Lawyers on Preventing Infringement, Capitalizing on a Client's IP, and Implementing Best Practices," Aspatore Books, 2008

"Vertical Minimum Pricing Agreements Permitted," New Jersey Law Journal, September 24, 2007 (Catherine M.C. Farrelly, Carrie A. Longstaff)

Quotes/Interviews
Interviewed in "Trademark & Copyright: A New Era," GC Mid-Atlantic, September 2007, September 1, 2007

News
Nineteen Gibbons Attorneys Listed in New York Metro Super Lawyers and Rising Stars

Recent and Upcoming Speaking Engagements
Speaker, "Protecting Your Company: Trademark Basics You Need to Know," Gibbons Women's Initiative, March 8, 2012

Host, INTA Roundtable: Looking Beyond the BRIC: Other Emerging Markets in Asia and Latin America, February 29, 2012

Speaker, Gibbons P.C., "Trademarks for the Non-Trademark Lawyer - What In-House Counsel Should Know About Trademarks," April 20 - 21, 2010

Host, INTA Roundtable: Policing Trademarks on the Internet and Web 2.0, January 14, 2010

Host, INTA Roundtable: Managing Trademark Costs in a Down Economy - Opportunities and Obstacles for Brand Owner, April 23, 2009

International Trademark Association (INTA) 130th Annual Meeting, Berlin, Germany (Cross-Border Labeling Requirements for Food and Apparel), May 19, 2008

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Catherine M.C. Farrelly Attorney at Law
Catherine M.C. Farrelly
Director
Intellectual Property

Practice Areas
Cross-Border Transactions
Intellectual Property

Contact Information
One Pennsylvania Plaza,
37th Floor
New York, NY 10119-3701

Direct: 212-613-2071
Fax:      212-554-9651
CFarrelly @gibbonslaw.com
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