Partner
Linda McLeod
About
Linda McLeod’s unique experience makes her one of the most sought-after lawyers to handle cases before the Trademark Trial and Appeal Board (TTAB). During her years as a TTAB Administrative Trademark Judge and interlocutory attorney, Linda issued hundreds of decisions in opposition and cancellation proceedings and ex parte appeals from registration refusals. Linda also gained extensive trademark prosecution experience as an examining attorney at the U.S. Patent and Trademark Office (USPTO).
As lead counsel, Linda has prevailed on numerous opposition and cancellation proceedings before the TTAB and Court of Appeals for the Federal Circuit. She has extensive experience litigating cases through trial and under accelerated case resolution (ACR) before the TTAB. She has obtained favorable “fame” decisions for major brand owners, enhancing their future enforcement efforts. Linda has successfully negotiated worldwide trademark agreements resolving contentious proceedings in multiple jurisdictions.
Linda has received numerous accolades for her expertise. She is recognized as an “IP Star” by Managing Intellectual Property (2014–2022), and she was awarded “Best in Trademark” at Legal Media Group America’s Women in Business Law Awards (2012–2013). Linda is consistently ranked by the World Trademark Review, Guide to the World’s Leading Trademark Law Practitioners, and several other publications, as one of the top trademark lawyers for both contentious and non-contentious trademark matters. According to the Legal 500 U.S., clients say that Linda is a “very bright, skilled, strategic thinker…” who “provides exceptional advice.” In the World Trademark Review 1000, clients praise Linda for her “super skills” and “always being on top of the latest trademark law developments” in TTAB and USPTO matters. Linda was appointed by the Secretary of Commerce to serve as a member of the USPTO’s Trademark Public Advisory Committee (TPAC) (2011–2014). She is a member of INTA’s Trademark Office Practices Committee (2016–2019).
Before joining Kelly IP, Linda was a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.
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/Disney Enterprises Inc. v. United Trademark Holdings (Fed. Cir. and TTAB).
- Linda McLeod was lead attorney handling a Federal Circuit appeal regarding Disney’s TINKER BELL and TINK brands. Disney opposed trademark applications for TEEN TINK & Design and TEEN TINKERBELL for “dolls” on the ground of likelihood of confusion. The TTAB sustained the opposition, holding that Disney’s TINK and TINKERBELL marks are inherently distinctive and protectable marks for dolls. UTH appealed that decision to the Federal Circuit. After oral argument, the Federal Circuit unanimously affirmed the TTAB’s decision in Disney’s favor, and rejected applicant’s asserted “public domain” defense and arguments challenging the distinctiveness of Disney’s TINKERBELL and TINK marks.
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/ Couture v. Playdom, Inc. (Fed. Cir. and TTAB).
- Linda McLeod and David Kelly scored a victory before the Federal Circuit. In a precedential decision, the Federal Circuit affirmed the TTAB’s finding that appellant’s registration was void ab initio, and held that a mark is used in commerce for registration only when it is both used or displayed in the sale or advertising of the services, and the services are actually rendered under the mark.
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/ Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB).
- Successfully challenged an application to register AMAZON VENTURES for various investment and venture capital services under accelerated case resolution (ACR) before the TTAB and Court of Appeals for the Federal Circuit; earned ruling that both the AMAZON.COM and AMAZON marks are “famous for its services, and significantly so.”
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/ H-D Michigan, Inc. v. Broehm (TTAB).
- Successfully litigated an opposition against the mark HOLY-DIVINESON and design for “hats; headwear; shirts; t-shirts” on the ground of likelihood of confusion with the HARLEY-DAVIDSON and HARLEY trademarks and Harley-Davidson’s BAR & SHIELD logo for, among other things, motorcycles, clothing, and headwear. This decision held that Harley-Davidson’s “bar and shield logo, regardless of wording and other matter, is itself a famous mark.…”
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/ Gap (Apparel) LLC v. Gap One Enterprises, LLC (TTAB).
- Prevailed in opposition against GAP ONE mark for general merchandising services, namely, marketing on ground of likelihood of confusion with GAP marks for retail store services and clothing; achieved ruling that GAP trademarks are famous and thus entitled to a broad scope of protection.
- /Recognized by World Trademark Review Global Leaders (2019-2021).
- /Selected for inclusion in World Intellectual Property Review’s (WIPR) directory of “World IP Leaders.” (2016-2020).
- /Recognized as “IP Star” by Managing Intellectual Property (2014-2022).
- /Recommended trademark lawyer by The Legal 500 (2014-2021).
- /Named in Managing Intellectual Property’s, Top 250 Women in IP (2013-2021).
- /Ranked among top D.C. trademark lawyers for contentious and non-contentious work by World Trademark Review 1000 (2011-2022), with “Gold” status in both prosecution and litigation (2014-2015 and 2020-2022) and “Gold” status for prosecution and strategy (2014-2022).
- /Recognized by Legal’s Finest for Trademark Law-USA (2014-2016).
- /Recognized among the top trademark lawyers in the world in Legal Media Group’s 2016 edition of Expert Guides: Trademarks.
- /Recognized among the “top legal practitioners” in trademark law in the United States in Legal Media Group’s 2014 edition of the Expert Guides: Guide to the World’s Leading Trade Mark Lawyers.
- /Nominated “Best in Trademark” by Legal Media Group America’s Women in Business Law Awards (2014).
- /Awarded “Best in Trademark” at Legal Media Group America’s Women in Business Law Awards (2012 – 2013).
- /Ranked among top IP Layers by Washingtonian Magazine (2013).
- /Ranked among top U.S. business lawyers in Legal Media Group’s Guide to the World’s Leading Women in Business Law (2010); and among the top U.S. trademark lawyers in the Guide to the World’s Leading Trademark Law Practitioners (2006, 2008, 2010, 2012).
- /Consistently listed in The International Who’s Who of Trademark Lawyers and Who’s Who Legal: USA-Trademarks since 2009.
- /International Trademark Association (INTA), Trademark Office Practice Committee (2016-2019)
- /U.S. Patent and Trademark Office, Trademark Public Advisory Committee (TPAC) (2011-2014)
- /Intellectual Property Owners (IPO) Annual Meeting Planning Committee (2014)
- /American Intellectual Property Law Association (Chair (2011-2012) and Member (2021), PTO Relations with the USPTO Committee; Amicus Committee (2015-2016))
- /University of Akron School of Law (Former Board Member, IP Advisory Council)
- /The Pauline Newman IP American Inn of Court
- /Federal Circuit Bar Association
- /National LGBT Bar Association
- /Coauthor. “To Create and Own a Nontraditional Trademark, Just Follow Tradition,” Landslide Magazine, January/February 2018.
- /Coauthor. “2015 Trademark Law Decisions of the Federal Circuit,” American University Law Review, 2015.
- /Coauthor. “Lessons From Recent USPTO Disciplinary Actions,” Law360, February 21, 2014.
- /Coauthor. “Ethical Issues for Trademark Lawyers Practicing Before the U.S. Patent and Trademark Office,” ABA Intellectual Property Section, Landslide Magazine, May/June 2013.
- /Coauthor, “On the Pretrial Management Trail with Blackhorse,” Law360, August 17, 2011.
- /Coauthor. “Ethical Issues in U.S. Trademark Prosecution and TTAB Practice,” The John Marshall Review of Intellectual Property Law, Winter 2010-2011.
- /Coauthor. “U.S. Bose Decision – Effects on Madrid System Users,” WIPO Magazine, June 2010.
- /Coauthor. “Navigating the TTAB’s New Rules: A Survey of Cases Under the New Rules and Their Impact on TTAB Practice and Procedure,” AIPLA Quarterly Journal, Winter 2010.
- /Coauthor. “Recent TTAB Decisions Highlight Challenges of Pleading and Proving Fraud after Bose,” The Intellectual Property Strategist, February 2010.
- /Coauthor. “Motion Practice,” in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, 2010.
- /Coauthor. “Embracing Marketplace Realities: Rediscovering Section 18 of the Lanham Act on the Twentieth Anniversary of Its Revival,” The Trademark Reporter; November/December 2009.
- /Coauthor. “Accelerated Case Resolution: Expedited Litigation for Less Before the TTAB,” BNA’s Patent, Trademark & Copyright Journal, November 27, 2009.
- /Coauthor. “US TTAB Bars Registration of the Mark A-HOLE PATROL on the Ground that the Mark Is Immoral or Scandalous,” Journal of Intellectual Property Law & Practice, June 2009.
- /Coauthor. “The Evolution of the Fraud Doctrine in the Trademark Office: Medinol and Its Progeny,” Intellectual Property Law Section Newsletter New York State Bar Association, Winter 2007.
- /Author. “Knew or Should Have Known, Reckless Disregard for the Truth, and Fraud Before the Trademark Office,” Martindale Legal Alerts/Articles, November 15, 2006.
- /“Ethics Issues for IP/IT Practitioners,” 21st Annual Virginia Intellectual Property Legal Institute (October 9, 2020)
- /“Trademark Opposition and Cancellation Proceedings at the TTAB,” Strafford Live Webinars (November 9, 2016; December 12, 2017; November 18, 2019 and December 10, 2019)
- /“Ethical Issues Before the USPTO,” 20th Annual Virginia Information Technology Legal Institute (October 4, 2019)
- /“Ethical Issues Before the USPTO,” 19th Annual Virginia Information Technology Legal Institute (October 12, 2018)
- /“Use in Commerce for Trademark Applications,” Strafford Live Webinars (August 2, 2018)
- /“Grounds for Opposition and Cancellation,” AIPLA Trademark Boot Camp (June 8-9, 2017)
- /“Ethics Issues in Practice Before the USPTO,” John Marshall Law School 8th Annual Ethics in the Practice of IP Law (May 5, 2017)
- /“Protecting Nontraditional Trademarks Under Trademark, Copyright and Design Patent Law,” Strafford Live Webinars (March 28, 2017)
- /“Ethics Before the USPTO” in Richmond, Virginia (March 21, 2017)
- /“Demonstrating Use in Commerce for Trademark Applications Webinar” Strafford Live Webinars (January 31, 2017)
- /Panel Discussion Presentation “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” Strafford Live Webinars (August 18, 2015)
- /“Grounds for Opposition & Cancellation,” AIPLA Trademark Boot Camp (June 4-5, 2015)
- /“Protecting Non-Traditional Trademark, Copyright and Design Patent Law,” Strafford Live Webinars (February 18, 2014)
- /“Trademark/Copyright Ethics,” IPO Annual Meeting in Boston (2013)
- /“Tips for Practice Before the Trademark Trial and Appeal Board,” ABA IP Conference (April 4, 2013)
- /“TTAB Practice and Procedure – The Quiz Show,” AIPLA TTAB Rules game show (October 25, 2012)
- /“Up to Speed: Top Ten Trademark Cases and Recent Developments in U.S. Trademark Law That Impact You,” 2012 INTA Trademark Administrator’s Conference (October 15, 2012)
- /“Up to Speed: Top Ten Trademark Cases and Recent Developments in U.S. Trademark Law That Impact You,” IPIC 86th Annual Meeting (October 12, 2012)
- /“Registration on Non-Traditional Trademarks in the United States,” Strafford Publications, Inc. webinar (February 8, 2012)
- /TTAB v. Federal Court Panel at ABA’s IPL Spring Conference in Arlington, Virginia (April 19, 2018).
- /AIPLA Boot Camp (June 7, 2018 – June 8, 2018).
- /33rd Annual Intellectual Property Law Conference – IPL Spring Conference (April 17, 2018 – April 20, 2018).
- /ABA IPL Spring Meeting TTAB/Civil Action Discovery CLE Panel (March 7, 2018).
- /AIPLA Boot Camp (June 7, 2017 – June 9, 2017).
- /Participation in USPTO session on TTAB Notice of Proposed Rulemaking webcast (June 24, 2016).
- /AIPLA Boot Camp (June 9, 2016 – June 10, 2016).
- /TTAB Task Force Conference Call (April 8, 2016).
- /Moderated Panel Discussion, “Rally Around the Flag-Protection and Enforcement of National and Municipal Symbols and What it Means to the Rest of Us,”IPO Annual Meeting in Vancouver, B.C. (2014).
- /AIPLA Boot Camp (June 5, 2014 – June 6, 2014).
- /INTA 2013 Leadership Meeting – Panel Discussion “Angels, Devils and Fraud: Ethical Considerations for Prosecuting U.S. Applications & Maintaining U.S. Registrations,” (November 15, 2013).
- /New York
- /District of Columbia
- /Oregon
- /Court of Appeals for the Federal Circuit
- /The Supreme Court
- /New York University School of Law, LL.M. Trade Regulation, 1989
- /University of Oregon, J.D., 1988
- /Willamette University, B.A. Economics, 1984