Partner

Stephanie Bald

About

For more than 20 years, Stephanie Bald has represented clients in a wide range of trademark, copyright, false advertising, and unfair competition matters, with a focus on litigation, disputes, and strategic counseling. Experienced in all aspects of litigation, Stephanie has handled cases of all stages in federal courts across the country and before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). Stephanie also has significant expertise managing global trademark portfolios and enforcement programs, handling complex online enforcement and policing programs including disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), and advising clients on the selection, registration, use, and maintenance of trademarks and copyrights.

Stephanie has been consistently recognized as a top trademark lawyer nationally. She has been named to Managing Intellectual Property’s Top 250 Women in IP, ranked nationally by the World Trademark Review 1000, selected as a “WTR Global Leader,” and recognized as an “IP Star” by Managing Intellectual Property. Clients describe Stephanie as “a fierce advocate with a wealth of experience,” “perfect in the trusted advisor role,” “an invaluable part of her client’s internal teams,” “a jack of all trades who does a fabulous job in everything,” and someone clients can “always count on . . . to deliver a great result regardless of the issue.” Clients also praise Stephanie’s “creative mind,” “strategic vision,” “business-minded outlook,” and “top-notch” understanding of the law.

Stephanie was appointed by the U.S. Secretary of Commerce to serve a three-year term as a member of the USPTO’s Trademark Public Advisory Committee (TPAC) (2018-2021). Stephanie also has long been active with the American Intellectual Property Law Association (AIPLA), where she has served on AIPLA’s Board of Directors (2000-2023) and as the chair and vice chair of the Trademark Law and Trademark Litigation Committees (2012-2018). Stephanie has been a member of the Executive Committee of AIPLA’s Women and IP Committee since 2019. Since 2014, Stephanie has been an Adjunct Professor at American University’s Washington College of Law, where she teaches an advanced course on trademark practice and procedure.

Before co-founding Kelly IP, Stephanie practiced trademark law as an associate and partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C.

  • FEDERAL COURT
  • / American Eagle Outfitters, Inc. v. Walmart (W.D. Pa.)
  • Obtained final consent judgment and permanent injunction against Walmart and its supplier acknowledging American Eagle’s back pocket stitch design for women’s jeans is inherently distinctive and has acquired secondary meaning, enjoining Walmart and its supplier from using Walmart’s accused back pocket stitching and ordering the destruction of the accused products, and reflecting a payment to American Eagle under a confidential settlement agreement.
  • / Caribe Corp. v. Philips (D.N.J.)
  • After a 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 a TTAB decision finding a likelihood of confusion; 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.
  • / American University v. American University of Kuwait (D.D.C. and TTAB)
  • Prevailed in TTAB cancellation proceeding on behalf of American University against a registration for the mark AUK AMERICAN UNIVERSITY OF KUWAIT and Design for educational services under the TTAB’s ACR procedure; defeated counterclaims for genericness and descriptiveness; in appeal to D.C. district court filed by registrant, obtained dismissal of all claims with prejudice.
  • / Great Harvest Franchising, Inc. 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.
  • / 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.
  • / 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.
  • / Amazon Technologies, Inc. v. Wax (Fed. Cir. and TTAB)
  • Successfully challenged AMAZON VENTURES application 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.
  • / 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.
  • / Juan Pablo Chavez v. British Broadcasting Corp. (S.D.N.Y. and 2nd Cir.)
  • Successfully moved to dismiss plaintiff’s trademark and copyright infringement claims arising out of the BBC’s use of plaintiff’s alleged works and marks; prevailed in appeal before the Second Circuit.
  • / Aston Martin v. Fisker (C.D. Cal.)
  • Represented luxury car manufacturer Aston Martin in multiple litigations to enforce its iconic grille designs.
  • / Bugatchi Group, Inc. v. Bugatti GmbH (S.D. Fla.)
  • Represented owner of the BUGATCHI mark for fine men’s apparel in a trademark infringement action against the German company, Bugatti GmbH, regarding its use of BUGATTI for apparel. Case was amicably resolved.
  • / 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.
  • / Caterpillar Inc. v. K Family Shoes Corporation (C.D. Cal.)
  • Obtained preliminary and permanent injunctions prohibiting defendant U.S. retailer and defendant Chinese manufacturer from using of the word marks GAI, GAIERBILLART, GAIERPILLAR, GAIERPOLLAR and the yellow and black color combination for footwear; obtained a damages award of $2,000,000 against Chinese manufacturer, plus attorney’s fees and costs.
  • / Yahoo! Inc. v. BelgiumDomains, LLC (S.D. Fla.)
  • Represented Yahoo! in a cybersquatting action involving the registration and use of more than 600 domain names comprised of Yahoo!’s trademarks or variations thereof and obtained a consent judgment and permanent injunction pursuant to a confidential settlement agreement.
  • / Nobody Media, LLC v. Nobody Works, LLC (E.D.N.Y)
  • Represented advertising company in two separate trademark infringement cases involving defendant’s use of NOBODY. Obtained consent judgment and permanent injunction.

 

  • TTAB
  • / Amazon Technologies, Inc. v. Daigle (TTAB)
  • Prevailed in cancellation proceeding on behalf of Amazon against WINDOW SHOPPING registration for, among other things, “information services, namely, providing information on a wide variety of topics,” on the ground of genericness under the TTAB’s ACR procedure.
  • / Monster, Inc. v. Monster Memory and More, Inc. (TTAB)
  • Obtained cancellation of registration for MONSTER MEMORY AND MORE for “memory cards” based on likelihood of confusion with Monster Cable’s MONSTER mark after TTAB trial; earned first fame ruling for MONSTER mark.
  • / Oakville Hills Cellar, Inc. v. Vina Casa Tamaya S.A. (TTAB)
  • Obtained dismissal of opposition against wine producer after TTAB trial; TTAB found no likelihood of confusion between the marks MAYA and TAMAYA for wine.
  • / Alvi’s Drift Wine International v. von Stiehl Winery (TTAB)
  • Obtained summary judgment dismissal of mere descriptiveness claim against the mark NAUGHTY GIRL for wine.
  • / Named to Managing IP’s Top 250 Women in IP (2014, 2016, 2018, 2022, 2024).
  • / Named in World Trademark Review 1000 (2016-2024), including ranking in the “silver” band nationally (2020-2024) and “gold” band in the D.C. metro area (2024) for trademark enforcement and litigation, and being named a “WTR Global Leader” (2024).
  • / Recognized by Managing Intellectual Property Magazine as an “IP Star” (2014-2024).
  • / Recognized by Super Lawyers as a Super Lawyer (2019-2024) and one of the Rising Stars for Intellectual Property in the Washington, D.C. area (2014-2018).
  • / Named one of D.C.’s Top 40 Lawyers Under 40 by Trending 40 (2016).
  • / Nominated “Rising Star IP” by Legal Media Group America’s Women in Business Law Awards (2013).
  • /Appointed by U.S. Secretary of Commerce to serve a three-year term on the USPTO’s Trademark Public Advisory Committee (TPAC) (2018-2021).
  • /Adjunct Professor, American University, Washington College of Law (Trademark Practice and Procedure) (2014-present).
  • /International Trademark Association, Saul Lefkowitz Moot Court Competition Judge, Chicago Regional Competition (2020-2022).
  • /American Intellectual Property Law Association: AIPLA Board of Directors (2020-present); Executive Committee, Women in IP Committee (2019-present); Chair, Subcommittee on Leadership and Succession, Women in IP Committee (2019-present); Chair, Trademark Law Committee (2016-2018); 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).
  • /Chicago Women in Intellectual Property
  • /Illinois Bar Association
  • /District of Columbia Bar Association (Section on Intellectual Property Law)
  • /American Bar Association (Section on Intellectual Property Law)
  • / Coauthor. “Motion Practice,” in A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, American Bar Association, 2010, 2014, 2016, 2020.
  • / Coauthor. “2019 Trademark Decisions of the Federal Circuit,” American University Law Review, April 2020.
  • / Coauthor. “2019 Trademark Year in Review,” AIPLA 2019 Annual Meeting Materials.
  • / Coauthor. “Ethical Issues for Trademark Lawyers Practicing Before the U.S. Patent and Trademark Office,” Landslide, ABA, Vol. 5, Nov. 5, 2013.
  • / Coauthor. “Ethical Issues in U.S. Trademark Prosecution and TTAB Practice,” The John Marshall Review of Intellectual Property Law, Winter 2010-2011.
  • / Coauthor. “Navigating the TTAB’s News Rules: A Survey of Cases Under the New Rules and Their Impact on TTAB Practice and Procedure,” AIPLA Quarterly Journal, Winter 2010.
  • / Coauthor. “Accelerated Case Resolution: Expedited Litigation for Less Before the TTAB,” BNA’s Patent, Trademark & Copyright Journal, Nov. 27, 2009.
  • / Coauthor. “2008 Trademark Decisions of the Federal Circuit,” American University Law Review, April 2009.
  • / “Japonais Restaurant Name and Concept Do Not Have to go Back to Sweet Home Chicago,” Journal of Intellectual Property Law & Practice, June 18, 2008.
  • / Coauthor. “Establishing Trademark and Unfair Competition Liability,” Trademark Infringement Remedies (BNA Books), 2006.
  • / “Trademarks for Your Business,” AIPLA/USPTO Women Entrepreneur Mentoring Program, USPTO Women Entrepreneur Initiative, Webinar, March 20, 2024.
  • / “The Trademark Modernization Act – What We’ve Learned in the First Ten Months About the New Expungement and Reexamination Proceedings,” AIPLA Annual Meeting, Washington, DC, October 28, 2022.
  • / Co-presenter, “The Working Mom: Perspectives and Advice on Pursuing a Work-Life Balance Throughout Your Legal Career,” AIPLA, Webinar, June 16, 2022.
  • / Co-presenter, “The Do’s and Don’ts of Pitching for Business,” AIPLA Diversity Committee, Academy for Business Development for IP, Webinar, October 20, 2021.
  • / Co-presenter, “How to Use Professional Associations to Further Your Career, Build a Network, and Grow Your Business,” AIPF Annual Meeting, Virtual, September 23, 2021.
  • / Co-coordinator, “What’s the Next Step for the Next-Gen? The Importance of Diversity in Strategic Succession Planning,” AIPLA Webinar, September 15, 2021.
  • / Co-coordinator, “Navigating Only-ness: Understanding and Managing the Isolation Faced by Women in Leadership,” AIPLA Webinar, January 27, 2021.
  • / “2019 Trademark Year in Review,” AIPLA Webinar, April 14, 2020.
  • / Co-presenter, “Professional Responsibility and Practice before the USPTO,” PLI Advanced Trademark Law 2020: Current Issues, New York City, NY, March 11, 2020.
  • / American University Federal Circuit Symposium, “False Suggestion of a Connection Under Section 2(a),” Washington, DC, November 1, 2019.
  • / “2019 Trademark Year in Review,” AIPLA Annual Meeting, Washington, DC, October 26, 2019.
  • / Co-presenter, “TTAB Practice Issues and Tips,” PLI Advanced Trademark Law 2019: Current Issues, New York City, NY, March 13, 2019.
  • / Moderator. “Global IP Protection and Enforcement Strategies,” AIPLA Annual Meeting, Washington, DC, October 28, 2016.
  • / Moderator. “Board Practice Tips and Pitfalls,” AIPLA Trademark Boot Camp, Arlington, VA, June 10, 2016.
  • / Combating Counterfeits During the Holidays: How Are Government and Industry Working Together To Protect Consumers During The Busiest Shopping Season Of The Year?” Briefing to Congressional Trademark Caucus, Washington, DC, December 17, 2015.
  • / “Evidence and Accelerated Case Resolution,” AIPLA Trademark Boot Camp, Arlington, VA, 2013-2015.
  • / “Ethics for Trademark Attorneys Practicing Before the USPTO,” PLI Advanced Trademark Law Annual Review 2014, New York City, NY, April 3, 2014.
  • / “Ethics for Trademark Attorneys Practicing Before the USPTO,” ABA Webinar, June 18, 2013.
  • / “The American Trademark System,” European Trademarks Summit 2011, IBC Legal Conferences, London, June 27, 2011.
  • / “TTAB Accelerated Case Resolution, Recent Trends in Trademark Cases,” Strafford Publications, Inc., Webinar, September 29, 2010.
  • /District of Columbia
  • /Illinois
  • /U.S. Court of Appeals, Federal Circuit
  • /U.S. Court of Appeals, Fourth Circuit
  • /U.S. District Court, District of Columbia
  • /U.S. District Court, District of Maryland
  • /U.S. District Court, Eastern District of Wisconsin
  • /U.S. District Court, Northern District of Illinois
  • /American University, Washington College of Law, J.D., cum laude, 2004
  • /American University, School of International Service, M.A., International Politics, 2004
  • /Denison University, B.A., English Literature, French, summa cum laude, Phi Beta Kappa, 2001