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.
Named one of the “World’s Leading Trademark Professionals” by World Trademark Review, Ms. Farrelly is recognized by Chambers USA America’s Leading Lawyers for Business, Best Lawyers in America, and Super Lawyers magazine for her intellectual property work. She also has been identified as a top IP lawyer by BTI and is named to the Irish Legal 100, which honors distinguished legal professionals of Irish heritage.
Ms. Farrelly is an Advisory Board Member for the University of Pennsylvania Law School, Detkin Intellectual Property and Technology Legal Clinic, a member of the International Trademark Association (“INTA”) and its Trademark Office Practices Committee, MARQUES, where she is a member of the Brands and Marketing Team, 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
Irish Legal 100 (2020)
Best Lawyers in America
New York-area "Super Lawyer" in the field of Intellectual Property
Chambers USA America's Leading Lawyers for Business (Intellectual Property)
World Trademark Review 1000 – The World’s Leading Trademark Professionals (2017-2022)
BTI Client Service All Star Team's 30 Top IP Lawyers (2016)
Georgetown University Law Center (J.D., 1997)
- Member of the Journal of Law and Policy in International Business
University of Texas (B.A.,1992)
Université de Poitiers, Faculté de Droit (1990 - 1991)
Upcoming Speaking Engagements
Past Speaking Engagements
The Best of 2021: Trademark Decisions Practitioners Should Know About
Join Kimberly Maynard, leading a discussion with Catherine Farrelly, Rachel Santori, Julie Amadeo, and Kristina D’Angelo of significant 2021 trademark decisions from the Federal Courts and the Trademark Trial and Appeal Board that trademark practitioners should know about. Read more.
February 3 2022
Trademark Modernization Act: Understanding the USPTO’s Final Rulemaking
Beginning in December 2021, the Director of the USPTO and brand owners alike will be able to initiate the new ex parte reexamination and expungement proceedings authorized by the Trademark Modernization Act of 2020. Join us for a conversation about those proceedings, the final rulemaking recently released by the USPTO, and the impact on brand owners. Read more.
November 30 2021
Putting 2020 Behind Us: Lessons from Ten Important Trademark Decisions of the Year
2020 was a big year for trademarks. Join Catherine Farrelly, Kimberly Maynard, and Rachel Santori for a discussion of ten important trademark decisions from the Federal Courts and the Trademark Trial and Appeal Board covering the unlawful use doctrine, color marks, parody and the First Amendment, standing, laches, and more. Read more.
January 14 2021
Hindsight is 20/20: 2020’s Unique Impact on Brands
2020 has left its mark on everyone, everywhere. Brands are no exception. Join Catherine Farrelly and Kimberly Maynard as they reflect on the developments in trademark law and brand positioning that 2020 has brought. Read more.
December 15 2020
Catherine Farrelly at the International Trademark Association’s Annual Meeting & Leadership Meeting
Catherine Farrelly speaks before the Non-Traditional Trademarks Committee about protecting color as a trademark at the International Trademark Association’s Leadership Meeting.
November 10 2020
Virtual Round Table: Brands in a Time of Crisis
Catherine Farrelly presents “Brands in a Time of Crisis” during a Marques virtual discussion.
June 25 2020
Protecting Your Brand During a Pandemic
Protecting your brand and reputation is always important. But when a pandemic makes compliance with use and filing deadlines impossible, cancels licensing opportunities, and all but closes the courts -- how do you inoculate your most valuable assets against harm? Listen as two of the country’s leading trademark and brand management lawyers provide tips for brand stewards managing in a time of crisis. Read more.
April 30 2020
Catherine Farrelly at the New York State Bar Annual Meeting
Catherine Farrelly is on the IP and New Media panel during the New York State Bar Association's 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
Frankfurt Kurnit in WTR 1000 2022
Frankfurt Kurnit is once again included in World Trademark Review 1000 – The World’s Leading Trademark Professionals for 2022. Read more.
Thirty-five Frankfurt Kurnit Attorneys Named to Super Lawyers New York Metro List for 2021
The list includes: Christopher R. Chase, Victoria Cook, Lisa E. Davis, Caren Decter, Catherine M.C. Farrelly, Michael P. Frankfurt, Hayden Goldblatt, Jeffrey A. Greenbaum, John B. Harris, Richard B. Heller, Richard Hofstetter, Nicole Hyland, Candice Kersh, Rick Kurnit, Brian E. Maas, Richard Maltz, Jeffrey Marks, Kimberly Maynard, Mark Merriman, Ronald C. Minkoff, Brian G. Murphy, Edward H. Rosenthal, Terri Seligman, Thomas D. Selz, Barbara E. Shiers, Wendy Stryker, Linda Wank, S. Jean Ward, Craig Whitney and Maura Wogan. Marcie Cleary, Christina Jenkins, Sasha Levites, Tyler Maulsby, and Adam Osterweil are listed as “Rising Stars.” Read more.
The Best Lawyers in America 2022
We are pleased to report that Best Lawyers — the oldest and one of the most respected peer reviewed lawyer recommendation services — continues to recommend Frankfurt Kurnit. Read more.
NFL Washington Football Team’s Trademark Bids Rebuffed
Frankfurt Kurnit in Chambers 2021
For the seventeenth consecutive year Chambers and Partners included Frankfurt Kurnit practice groups & attorneys. The 2021 guide praised our Advertising, Entertainment, Intellectual Property, and Privacy & Data Security practices. In addition, 13 of our attorneys are ranked individually. Read more.
Frankfurt Kurnit in WTR 1000 2021
Frankfurt Kurnit is included in World Trademark Review 1000 – The World’s Leading Trademark Professionals for 2021. WTR says, “Frankfurt Kurnit has a fine-grained understanding of the intricacies of complex brand-related matters in the media, entertainment and advertising space, and a well-developed prosecution, enforcement and licensing toolkit to keep companies – especially those whose business success depends on strong brands – in the best possible shape.” Read more.
Avoid New Trademark Email Scams
The U.S. Patent and Trademark Office (“USPTO”) is the subject of some new and sophisticated email rackets. Read more.
The Irish Legal 100 - 2020 Edition
Thirty-five Frankfurt Kurnit Attorneys Named to Super Lawyers New York Metro List for 2020
The list includes: Christopher R. Chase, Victoria Cook, Lisa E. Davis, Catherine M.C. Farrelly, Michael P. Frankfurt, Hayden Goldblatt, Jeffrey A. Greenbaum, John B. Harris, Richard B. Heller, Richard Hofstetter, Nicole Hyland, Candice Kersh, Rick Kurnit, Brian E. Maas, Richard Maltz, Jeffrey Marks, Kimberly Maynard, Mark Merriman, Ronald C. Minkoff, Brian G. Murphy, Edward H. Rosenthal, Terri Seligman, Thomas D. Selz, Barbara E. Shiers, Wendy Stryker, Linda Wank, S. Jean Ward, Craig Whitney and Maura Wogan. Marcie Cleary, Christina Jenkins, Sasha Levites, Tyler Maulsby, Adam Osterweil and Rachel Santori are listed as “Rising Stars.” Read more.
USPTO Wades into Flood of ‘COVID’ Trademark Applications
Virtual Round Table: Brands in a Time of Crisis
Catherine Farrelly spoke during the “Brands in a Time of Crisis” Marques virtual discussion. Watch to the virtual round table on the MARQUES website. (free to members; €50 for non-members) View Article
The USPTO’s COVID-19 Extensions of Time: What Trademark Attorneys and Brand Owners Need to Know
The United States Patent and Trademark Office has responded to the COVID-19 pandemic by allowing trademark applicants and owners to extend certain deadlines falling between March 27th and May 31, 2020 until June 1, 2020. Read more.
Frankfurt Kurnit in Chambers 2020
For the sixteenth consecutive year Chambers and Partners included Frankfurt Kurnit practice groups & attorneys. The 2020 guide praised our Advertising, Entertainment and Intellectual Property practices. In addition, 13 of our attorneys are ranked individually. Read more.
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), Kim Maynard & Maura Wogan (Intellectual Property Litigation) Candice Kersh & Terri Seligman (Media and Advertising). Marcie Cleary & Sasha Levites (Entertainment Law), and 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-one Frankfurt Kurnit Attorneys Named to Super Lawyers Metro List for 2019
Super Lawyers magazine lists thirty-two 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-three Frankfurt Kurnit Attorneys Named in Super Lawyers Magazine for 2018
Super Lawyers magazine lists thirty-three 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
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 WTR 1000 2017
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-five Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2016
Super Lawyers listed thirty-five 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-three Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2015
Super Lawyers listed thirty-three 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-one Frankfurt Kurnit Attorneys Named “Super Lawyers” for 2014
Super Lawyers listed thirty-one 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.