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Timothy M. Kenny

Head of IP Brands, United States

Timothy M. Kenny

Minneapolis

T:+1 612 321 2805

Tim Kenny is Head of IP Brands, United States.

Tim focuses on US and international trademark litigation, oppositions/cancellations, policing, counseling, licensing and prosecution and strategic portfolio counseling and management, copyrights and copyright litigation, and unfair competition litigation on behalf of clients of all sizes in a wide variety of industries.

Tim has handled:

  • approximately 110 federal intellectual property cases (approximately 75 of those cases involved trademark, trade dress, non-traditional mark, unfair competition and related matters, and ten of those cases involved copyright issues);
  • more than 130 Trademark Trial and Appeal Board proceedings;
  • hundreds of UDRP proceedings;
  • thousands of trademark policing matters; and
  • coordination of litigation and oppositions/cancellations in multiple countries.
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  • Education

    JD, cum laude, Hamline University School of Law, 1994
    BA, cum laude, Government/International Studies and History, University of Notre Dame (and attended St. Patrick's College in Maynooth, Ireland from 1987 - 1988), 1990

    At Hamline, Tim was editor-in-chief of the Hamline Law Review, a member of the Jessup International Moot Court team and Best Oral Advocate as a 1L. Tim is admitted to practice in the US District Court for the District of Minnesota, in numerous other federal district courts, and the US Courts of Appeal for the Eighth Circuit and Federal Circuit.

  • Representative experience

    Litigation/Brand Protection:

    • Filed a Motion for Temporary Restraining Order in the District of Minnesota for an entrepreneur against one of the world's largest liquor companies for trademark infringement and obtained an amicable settlement within days of the filing
    • Obtained a Preliminary Injunction in the District of Minnesota for an industry-leading food company against two Turkish companies and a U.S. distributor involving infringement of a famous mark
    • Developed and implemented global policing strategy for famous marks of Fortune 500 companies in the consumer products, health care and software/business analytics industries 
    • Obtained a favorable settlement for a well-known Minnesota architect in a copyright infringement suit against a developer who copied the appearance of one of the architect's copyrighted buildings
    • Represented a well-known Minnesota charter school pro bono in a trademark infringement action and prevented a West Coast charter school company from entering Minnesota and starting a new charter school under a confusingly similar name 
    • Obtained orders transferring domain names from cybersquatters to numerous clients through ICANN's UDRP proceedings
    • Obtained a TRO in the Central District of California against a cybersquatter who owned over 300,000 domain names and settled the case by obtaining a permanent injunction and significant monetary payment
    • Developed strategy for protecting non-traditional marks (color, product configuration, trade dress, etc.) for several Fortune 500 and medium-sized industry-leading companies and enforced those marks in U.S. federal courts and TTAB opposition proceedings
    • Prevented entry of a preliminary injunction in the Northern District of Illinois against an industry-leading home decorations company in a case involving complex, inter-related issues of trademark, copyright, contract, and non-compete agreements between an artist and several companies
    • Obtained a favorable settlement for an industry-leading company in the clothing industry and its national retail customer in defense of a trademark case in the District of Minnesota
    • Obtained a favorable settlement for a leading consumer products company in a dispute against another consumer products company over the issue of the registration of the product configuration of a hot cup lid in a proceeding before the U.S. Trademark Trial and Appeal Board
    • Obtained TROs and Preliminary Injunctions in the District of Minnesota for a large diversified technology, multinational company against a number of cybersquatters
    • Co-managed the trademark policing portfolio for a famous house mark of a Fortune 125 highly diversified client
    • Tried Trademark Trial and Appeal Board trials.


    Strategic Portfolio Management:

    • Co-managed a 10,000+ file IP portfolio of a Fortune 100 health care client
    • Manages a 2000+ file IP portfolio on an industry leading decision management and predictive analytics client
    • Managed a 400 file IP portfolio of an industry leading consumer products client
    • Developed strategy and led efforts to have several marks declared legally famous
    • Counseled and assisted industry-leading business analytics company with all legal issues and action items relating to changing its corporate identity and house mark
    • Developed and implemented global trademark portfolio strategy for several large and medium-sized companies
    • Managed transfer and intake of numerous large intellectual property portfolios
  • Admissions
    • Minnesota State Bar
  • Rankings and recognitions
    • Chambers USA, Minnesota: Intellectual Property, Chambers & Partners, 2018
    • Minnesota's Best Lawyers, Minnesota Monthly, January 2013
    • The International Who's Who of Trademark Lawyers, 2009-Current
    • The Irish Legal 100, Irish Voice, 2012-2015
    • Legal 500 US, recommended lawyer, Intellectual Property: Patent Litigation: Full Coverage, The Legal 500, 2007, 2012, 2014
    • Legal 500 US, recommended lawyer, Intellectual Property: Trademarks: Litigation, The Legal 500, 2013, 2015-2018
    • Legal 500 US, recommended lawyer, Intellectual Property: Trademarks: Non-Contentious: Full Coverage, The Legal 500, 2014 - 2018
    • WTR 1000: Top 1000 Global Trademark Lawyers - World Trademark Review, 2011 - 2018
    • The Best Lawyers in America, Best Lawyers, 2010 - 2019
    • Lawyer of the Year, Minneapolis: Trademark Law, Best Lawyers, 2016
    • Trade Mark Law Practitioner, Expert Guides, 2012, 2014
    • IP Star - Managing Intellectual Property, 2013 - 2018
    • Minnesota Super Lawyer, intellectual property,Thomson Reuters, 2008 - 2018
    • Guide to the World's Leading Trade Mark Practitioners, Euromoney Legal Media Group, 2008 - 2012
    • 40 Under Forty Business Leaders, Minneapolis/St. Paul Business Journal, 2008
    • Who's Who Legal USA - Trademarks, 2006
    • Who's Who Legal - trademarks, Law Business Research Ltd., 2014
    • The Lawdragon 500: New Stars, New World, Summer 2006
  • Publications
    • Co-author, "Ticking Time Bomb: How to Diffuse Aggressive Trademark Litigation Tactics from US, Canadian and UK Perspectives," Intellectual Property magazine, December 2012/January 2013
    • "Recent Developments in Intellectual Property Law – Trademarks," ABA Intellectual Property Newsletter, 1998 - 2003
    • "Policing Strategies for Developing and Enhancing Brand Reputation," American Intellectual Property Law Association Mid-Winter Institute, January 23 - 26, 2002
    • "Recent Developments in Intellectual Property Law--Trademarks," ABA Intellectual Property Newsletter, Spring 2001
    • Co-author, "Domain Name Update: .biz and .info TLDs," Legal Update, June 1, 2001
    • "Recent Developments in Intellectual Property Law--Trademarks," ABA Intellectual Property Newsletter, Spring 2001
    • Co-author, "New Domains Pinch Trademark Owners," CityBusiness, February 2001
    • Co-author, "Domain Name Update," Legal Update, December 5, 2000
    • Co-author, "Fundamental Provisions of Trademark License Agreements," Understanding the Intellectual Property License, October 1998
    • "Advertising to Strengthen Your Competitive Position Through Use of Copyright Trademark and Truthful Advertising," Minnesota State Bar Association CLE, 1996
  • Speaking engagements
    • Co-presenter with Kristin Wall (Partner, Norton Rose Fulbright Canada),"Protecting Non-Traditional Trademarks Around the World," Midwest IP Institute, Minneapolis, MN September 19, 2014.
    • Plenary Session:  "The Whiskey War:  A Kieran Collection v. Pernod-Ricard, et al," MN CLE 2012 Midwest IP Institute, Minneapolis, MN, September 21, 2012.
    • "Pressing Trademark Issues and Other IP Topics: Real Life Scenarios and How to Deal with Them," MN CLE 2010 In-House Counsel Crash Course, Minneapolis, MN, May 18, 2010
    • "My Space is Everyone's Space: What In-house Counsel Need to Know About the Employment and IP Challenges of Social Networking Sites," Fulbright & Jaworski L.L.P. Web Seminar Series, April 6, 2010
    • "Strategies for Successfully Navigating the TTAB Rules and Electronic System for Trademark Trials and Appeals (ESTTA)," 2009 American Intellectual Property Law Association Annual Meeting, Washington, D.C., October 15, 2009
    • Co-presenter with Allan Poulter (Partner, Field Fisher Waterhouse – U.K.), "Extending Your Trademark Rights into the U.K. and the Rest of Europe," Midwest Intellectual Property Law Institute, Minneapolis, Minnesota, September 27, 2009
    • Co-presenter with Anna Carboni (Barrister, Wilberforce Chamber – U.K.), Chris Job (Partner, Adams & Adams – South Africa) and Janice Bereskin (Partner, Bereskin & Parr - Canada), Mediation Workshop: "Mediating an International Trademark Dispute," 2009 International Trademark Association Annual Meeting, Seattle, Washington, May 19, 2009
    • "Trademarks and Strategy for Creating Trademark Rights," Speaker and Paper, Trademark Class at Hamline University School of Law, St. Paul, Minnesota, January 28, 2008
    • "Critical Trademark Developments in the U.S. and U.K.," Fulbright & Jaworski L.L.P. Web Seminar Series, December 4, 2007
    • "Senior In-House Counsel Panel, "The Issues We're All Thinking About," Speaker and Moderator, 2006 Midwest Intellectual Property Institute, Minneapolis, MN, September 2006  
    • "10 U.S. Trademark Decisions in 60 Minutes," Speaker and Paper, Intellectual Property Institute of Canada, 2006 Annual General Meeting, St. Andrews By The Sea, New Brunswick, Canada, September 28, 2006 
    • "Enforcement of Trademark Rights," Speaker and Paper, WIPO-USPTO Global Intellectual Property Academy, U.S. Patent and Trademark Office, Washington, D.C., July 18 – 21, 2006
    • "When is a Patent Not a Copyright But a Trademark," Speaker and Paper, Minnesota Paralegal Association 2006 Annual Convention, Minneapolis, MN, June 22, 2006
    • "Developments in Fraud Upon the U.S. Patent and Trademark Office," Host, INTA Roundtable, Minneapolis, MN  April 11, 2006
    • "Top 10 Reason Why You Might Want to Consider Using an Expert in a Lanham Act Case," Speaker and Paper, Trademark Litigation class at William Mitchell College of Law, November 29, 2005
    • "Policing Trademarks in the Internet Age – Outline Enforcement Efforts to Ensure Brand Trust," INTA Trademark Administrators Conference 2005, Chicago, Illinois, September 18 - 21, 2005
    • "Cybersquatting and Domain Name Parking Services," American Intellectual Property Law Spring Meeting, Philadelphia, PA, May 12, 2005
    • "Trade Dress and Other Non-Patent Protection of Products: U.S., U.K., Germany, European Community, Japan, People's Republic of China and Hong Kong," Speaker and Paper, Minnesota State Bar Association CLE, March 8, 2005
    • "Intellectual Property and Best Practices," Speaker and Paper, Hamline University School of Law Alumni CLE, St. Paul, MN, March 4, 2005
    • "Creating Trademark Rights," Speaker and Paper, Minnesota State Bar Association CLE, March 4, 2005
    • "Charting a Course through the Murky Waters of Trade Dress," Speaker and Paper, 2004 Midwest Intellectual Property Institute, Minneapolis, MN, October 2004
    • "Benchmarking: Comparing Your Company's Trademark Policies and Procedures To Those of Other Successful Trademark Owners," Moderator, 2003 INTA Trademark Administrators Conference, New Orleans, LA, September 14-17, 2003
    • "Enforcement: Day-to-Day Trademark Policing," Speaker and Paper, 2003 INTA Trademark Administrators Conference,  New Orleans, LA, September 14-17, 2003
  • Memberships and activities
    • International Trademark Association (INTA)
      • Internet Committee (2010 - 2011)
      • Mid-Level Forum Project Team (2008 - 2009)
      • Non-Traditional Marks Committee, North American Sub-Committee (2008 - 2009)
      • Membership Committee, Young Practitioners Sub-Committee (2006 - 2008)
      • Trademark Administrator Committee, Basic and Advanced Trademark Administrator Education Project Teams, Project Team Leader (2004 - 2007)
      • Meetings Committee, Trademark Administrators Forum Project Team (2002 - 2003)
      • The Trademark Reporter, Editorial Board (1998 - 2001)
    • Midwest Intellectual Property Institute, Planning Committee (2004 - present)
    • Minnesota Intellectual Property Law Association
    • Minnesota State Bar Association
    • Lawyer's Society of St. Thomas More
    • Archdiocese of St. Paul and Minneapolis, pro bono Arbitrator/Mediator (1997 - present)
    • University of St. Thomas Law School, Mentor (2001 - present)
    • Holy Spirit Catholic School, St. Paul, Minnesota
      • Marketing Committee - Chair (2006 - present)
      • Strategic Planning Committee (2007 - present)
    • Holy Spirit Parish, St. Paul, Minnesota
      • Endowment Committee (2007 - present)
      • Budget Committee (2010 - present)
    • Southern Minnesota Regional Legal Services, pro bono lawyer (2008 - present)
      • Centennial Planning Committee (2009 - 2010)