areas of expertise
Catherine M.C. Farrelly, formerly Catherine M. Clayton, is a partner and Chair of the Trademark & Brand Management Group and is also a member of the firm’s Litigation Group.
Ms. Farrelly is an internationally recognized leader in the field of trademark law who advises some of the world’s leading brands on intellectual property matters. She helps her clients plan strategies, manage trademark portfolios, and protect trademarks and other IP in the US and world markets. She represents well-known companies in a variety of industries, including entertainment, finance, sports, cosmetics, toys, beverages, publishing and real estate.
Ms. Farrelly has focused on trademark and copyright law for 20 years, and regularly provides clients with strategic advice regarding the availability, validity and enforceability of trademarks. She also has significant experience preventing the unauthorized use of trademarks and copyrights through litigation, arbitration and negotiation.
In addition to representing clients in federal court and before the Trademark Trial and Appeal Board, Ms. Farrelly helps clients establish, maintain and grow domestic and international trademark portfolios. She negotiates and structures trademark and copyright licenses and assignments; regularly shuts down on-line auctions of infringing goods and false advertising on social media platforms; and resolves domain name disputes through negotiation, federal court litigation, and arbitration under the Uniform Domain Name Dispute Resolution Policy.
Ms. Farrelly is an Advisory Board Member for the University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic, the Vice Chair of the Trademark Litigation Committee of the American Bar Association Section of Intellectual Property Law (2018-2019), Chair of the ABA’s USPTO Operations Relating to Trademarks Subcommittee, and a member of the International Trademark Association (“INTA”), MARQUES, the Copyright Society, the New York Intellectual Property Law Association, and the New York State Bar Association. She writes and speaks frequently on hot topics in intellectual property law, and has been published in the New York Law Journal, among other publications. Ms. Farrelly is admitted to practice in New York, the United States District Court for the Southern District of New York, the United States District Court for the Eastern District of New York, and the United States Supreme Court.
Prior to joining Frankfurt Kurnit, Ms. Farrelly was a partner with Gibbons P.C. and was associated with Paul, Hastings, Janofsky & Walker LLP and Pennie & Edmonds LLP. She has lived in the U.S., England, France, the Netherlands, the Bahamas and Saudi Arabia.
awards & recognition
New York-area "Super Lawyer" in the field of Intellectual Property
Recognized in World Trademark Review 1000 – The World’s Leading Trademark Professionals 2017 - 2020
Chambers USA America's Leading Lawyers for Business (Intellectual Property)
2016 BTI Client Service All Star Team's 30 Top IP Lawyers
Georgetown University Law Center (JD, 1997)
- Member of the Journal of Law and Policy in International Business
University of Texas (BA, 1992)
Université de Poitiers, Faculté de Droit (1990 - 1991)
Upcoming Speaking Engagements
Past Speaking Engagements
Catherine Farrelly and Danielle Maggiacomo at the New York State Bar Annual Meeting
January 15 2019
Catherine Farrelly at the International Trademark Association’s Leadership Meeting
Catherine Farrelly speaks before the Non-Traditional Trademarks Committee about the PLAY-DOH scent mark registration at the International Trademark Association’s Leadership Meeting in New Orleans.
November 7 2018
Trademark Basics for Corporate Counsel
Catherine Farrelly presents "Trademark Basics for Corporate Counsel" in LA.
April 19 2018
Trademark Basics for Corporate Counsel
September 28 2017
Game Technology Law Conference 2016
Catherine Farrelly speaks on “Building a Game as a Brand” at the Game Technology Law Conference in Seattle, WA on October 13, 2016.
October 13 2016
Tips and Tools to Manage Trademark Projects
Catherine Farrelly hosts an INTA Roundtable on "Tips and Tools to Manage Trademark Projects" here in our boardroom.
October 7 2016
2016 Annual Video Game Bar Association Summit
Catherine Farrelly moderates the panel, "Intellectual Property Update" at the 2016 Video Game Bar Association Summit in Los Angeles.
May 16 2016
Sweepstakes Promotions & Marketing Laws in a Digital/Mobile Environment
Catherine Farrelly speaks at a New York City Bar program entitled "Sweepstakes Promotions & Marketing Laws in a Digital/Mobile Environment" on Trademark Rights and Ambush Marketing.
May 15 2015
news & press
Super Lawyers - New York Metro Top Women for 2020
The New York Times distributed the Super Lawyers list of the New York Metro Area's Top Women for 2020. Fourteen Frankfurt Kurnit attorneys made the list: Wendy Stryker (Employment Law), Victoria Cook, Lisa Davis & Jean Ward (Entertainment Law), Barbara Shiers (Estate Planning & Probate), Catherine Farrelly (Intellectual Property), Amelia Brankov, Kim Maynard & Maura Wogan (Intellectual Property Litigation) Candice Kersh & Terri Seligman (Media and Advertising). Sasha Levites (Entertainment Law) Danielle Maggiacomo & Rachel Santori (Intellectual Property Law) are listed as "Rising Stars."
Catherine Farrelly and Edward Rosenthal in WTR 1000 2020
Music to Your Ears: Best Practices for Prosecuting Sound Mark Applications
The INTA Bulletin published Catherine Farrelly's article "Music to Your Ears: Best Practices for Prosecuting Sound Mark Applications." Catherine co-wrote the piece with other members of the Non-Traditional Marks Committee, United States Subcommitte. View Article
Thirty-three Frankfurt Kurnit Attorneys Named to Super Lawyers Metro List for 2019
Super Lawyers magazine lists thirty-three Frankfurt Kurnit attorneys in its 2019 NY-area edition. Read more.
Nespresso-Compatible Labels Focus of Trademark Suit
Game of Trademarks: How ‘Thrones’ Shields its Brand
Thirty-six Frankfurt Kurnit Attorneys Named in Super Lawyers Magazine for 2018
Super Lawyers magazine lists thirty-six Frankfurt Kurnit attorneys in its 2018 edition. Read more.
Hasbro, DC Comics Settle ‘Bumblebee’ Superhero TM Battle
Law360 mentions Catherine Farrelly and Maura J. Wogan as counsel to Hasbro Inc. The settlement resolves Hasbro’s claim that DC Comics’ yellow “Bumblebee” toy action figure infringed Hasbro’s Bumblebee Transformers character. (Behind paywall) View Article
Play-Doh Scent Registration May Serve As Trademark Model
Bloomberg BNA spotlights Catherine Farrelly as the lawyer behind Hasbro Inc.’s successful registration of the iconic Play-Doh scent. The article notes that “scents are the rarest” non-traditional trademarks to register.
Hasbro Registers Play-Doh Smell As Trademark
Frankfurt Kurnit in Chambers 2018
For the fourteenth consecutive year Chambers USA America's Leading Lawyers for Business recognized Frankfurt Kurnit. Chambers USA ranked us for our: Advertising, Media & Entertainment and Intellectual Property practices. Read more.
Catherine Farrelly on the Benefits of INTA Membership
Beware of Trademark Solicitation Scams
Trademark solicitation scams are on the rise. If you receive correspondence about your trademarks from someone other than your trademark attorneys — correspondence that looks like an invoice or an offer for trademark services — it may not be legitimate. Here's a summary of what the scams look like and what you should do about them. Read more.
Hasbro Says DC Comics Infringes ‘Transformers’ Toy Mark
Law360 mentions Catherine Farrelly and Maura J. Wogan as the lawyers for Hasbro Inc. in a high-profile toy industry IP dispute in New York federal court. The article discusses Hasbro Inc.’s allegation that DC Comics copied the name of its yellow “Bumblebee” character from Hasbro’s famous Transformers character. (Article behind a paywall) View Article
Vegas Golden Knights Score Hockey TMs
Law360 mentioned Catherine Farrelly as the lawyer for the Vegas Golden Knights. The article discussed the U.S. Patent and Trademark Office’s approval of trademark registrations for the National Hockey League’s newest franchise. (Article behind a paywall) View Article
Why Gene Simmons Abandoned His ‘Devil Horns’ Trademark Application
Kiss Frontman Simmons Drops Bid For ‘Horns’ Trademark
Gene Simmons Comes to his Senses
Supreme Court Rules First Amendment Protects Disparaging Trademarks
Supreme Court Says Disparaging Trademark Names Are Protected
Supreme Court Strikes Down Lanham Act Prohibition on Registration of Disparaging Trademarks
On June 19, 2017, the Supreme Court unanimously ruled in Matal v. Tam that Section 2(a) of the Lanham Act, which prohibits the federal registration of disparaging trademarks, is unconstitutional because it violates "a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Read more.
Frankfurt Kurnit in Chambers 2017
For the thirteenth consecutive year Chambers USA America's Leading Lawyers for Business recognized Frankfurt Kurnit. Chambers USA ranked us for our: Advertising: Transactional & Regulatory, Intellectual Property: Trade Mark & Copyright, Media & Entertainment: Entertainment Litigation, and Media & Entertainment: Film, Music, Television & Theater work. Read more.
Hasbro Scent Application for Play-Doh
Play-Doh Moves to Make Sure You Can’t Copy Their Signature Smell
Mashable mentioned Frankfurt Kurnit as the lawyers behind Hasbro’s Play-Doh scent trademark registration. View Article
Hasbro Filed to Protect Play-Doh Smell
Inside Counsel magazine quoted Catherine Farrelly on Hasbro’s trademark “scent” registration for Play-Doh.
What’s That Smell? Play-Doh Leads Charge For Scent TMs
Law360 quoted Catherine Farrelly on Hasbro’s efforts to acquire a trademark for the scent of Play-Doh. The New York Times picked up Law360' s coverage of the Play-Doh mark in its 13 Great Stories That Have Nothing to Do With Politics column here. View Article
Does IP Law Protect Cake and Pastry Designs?
A chef who created a cake for President Obama's inauguration in 2013 recently tweeted a photograph showing two cakes. According to the chef, one was created for the Obama inauguration and the other was for an inaugural ball for President Trump. The Trump cake baker apparently admitted copying the Obama cake design (and stated the proceeds would be donated to a charity). So among the many legal questions raised by the new Trump administration, there lies an interesting IP question: can a baker, chef or restaurateur use intellectual property law to protect a cake or pastry design? Read more.
Frankfurt Kurnit in the World Trademark Review
The World Trademark Review includes Frankfurt Kurnit in "The World's Leading Trademark Professionals 2017" saying, "'It’s easy to recommend the trademark team at Frankfurt Kurnit Klein & Selz to any company seeking the absolute best in advice and counselling." View Article
Ten Resolutions for a Happy and Healthy Trademark Portfolio
Here are our top ten resolutions to ensure your trademark portfolio is happy and healthy. Read more.
Get Ready for New Trademark Trial and Appeal Board Rules
The Trademark Trial and Appeal Board (the "Board") has announced a number of changes to the Trademark Rules of Practice, to take effect on January 14, 2017. Read more.
Thinking of Licensing Your Brand Abroad?
Licensing a trademark abroad - for manufacture or distribution of goods or services - is not easy. Read more.
Thirty-six Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2016
Super Lawyers listed thirty-six Frankfurt Kurnit attorneys in its 2016 edition. Read more.
Will Brexit Impact my Trademark Rights in Europe?
Rest easy, trademark owners! While the UK has voted to leave the European Union, it is expected to take at least two years for that to occur. Here is what trademark owners need to know. Read more.
Oprah Winfrey Moves to Trademark a Line of Name-Brand Food Products
BTI includes Catherine Farrelly on Top 30 IP Lawyers List
Federal Court Rules that Ban on Offensive Trademarks is Unconstitutional
Here's some big news for anyone who owns -- or is contemplating registration of -- a trademark that may offend certain audiences. The Federal Circuit Court of Appeals ruled on December 22nd that a law banning the registration of disparaging trademarks is unconstitutional. Read more.
Trademark Office Now Permits Amendment of Registrations to Reflect Technological Advances
Here is some big news for trademark owners: Earlier this month, the United States Patent and Trademark Office ("USPTO") began a pilot program to allow owners of registered trademarks to update their registrations to reflect changes to their products made as a result of technological advances. Read more.
Thirty-five Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2015
Super Lawyers listed thirty-five Frankfurt Kurnit attorneys in its 2015 edition. Read more.
Attorneys React to Supreme Court’s TTAB Preclusion Ruling
Catherine Farrelly was quoted by Law360 in reaction to the U.S. Supreme Court ruling stating that federal court decisions on “likelihood of confusion” can be precluded by earlier findings on the same issue from the Trademark Trial and Appeal Board.
Supreme Court Rules on Precedential Impact of Trademark Trial and Appeal Board Decisions
Thirty-two Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2014
Super Lawyers listed thirty-two Frankfurt Kurnit attorneys in its 2014 edition. Read more.
Opening Up IP in Cuba: Get Your Trademarks in Line
On February 3, 2014 Corporate Counsel quoted Catherine M.C. Farelly on how the United States' recent ease of trade restrictions on Cuba affects U.S. trademark owners.
Protect Your Trademarks in Cuba Now
With President Obama's December 17, 2014 announcement of the reestablishment of diplomatic relations with Cuba, a number of travel and trade restrictions with Cuba have been lifted, with more expected to follow. Read more.
Frankfurt Kurnit Adds Catherine Farrelly as Trademark Practice Co-Chair
Frankfurt Kurnit Klein + Selz has appointed Catherine M. C. Farrelly (formerly Catherine M. Clayton) as partner and co-chair of the firm’s Trademark and Brand Management Group effective September 30th, 2014. Read more.