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PDFRobert Kenney has more than 35 years of experience in intellectual property legal matters including trademark clearance, prosecution, counseling and portfolio management and patent, trademark and copyright litigation.
Bob has helped clients in a broad range of fields acquire, protect and profit from their important intellectual property rights as well as teaming with clients for licensing and intellectual property acquisition. He is particularly focused on helping clients build and protect their valuable brands. His approach is to understand his clients’ business and tailor strategies that support the best business outcome for clients, avoiding expensive litigation wherever possible and striving for results that best t his clients’ long-term business interests.
Bob is also an experienced litigator, representing clients throughout his career in federal courts across the United States as well as in the U.S. International Trade Commission (ITC). He has similarly represented numerous clients in trademark matters before the Trademark Trial and Appeal Board of the U.S. Trademark Office.
In addition to handling all aspects of trademark practice, including acquisition and enforcement, Bob provides anti-counterfeiting counseling and enforcement, and is a member of the International Trademark Association's Unreal Campaign Committee, which educates students on the dangers of counterfeit goods.
Bob is also an experienced educator in relation to intellectual property matters and has lectured on issues from brand protection, trademarks, licensing, designs and intellectual property litigation in U.S. courts and the ITC to groups throughout the world. His clients have included multinational and Global 500 companies as well as mid-sized businesses and individuals in fields such as consumer electronics, pharmaceuticals, chemicals, apparel, home goods and kitchen products, travel services, wines and spirits and automotive parts.
Experience
- Represented a software platform provider in a trademark infringement matter in U.S. federal court and obtained a favorable settlement.
- Defended a toy manufacturer against claims of trademark, trade dress, and copyright infringement in a trial that resulted in findings of non-infringement on all claims.
- In a case before the International Trade Commission for patent infringement, obtained for client the only dismissal of the 10 defendants. Avoiding the significant cost of this litigation to his client’s business.
- Obtained default judgment for violation of the settlement agreement, to client’s great satisfaction, when, after a settlement in the U.S. District Court for the Eastern District of Virginia, the opposing party violated the agreement.
Articles & Presentations
- Is a Common Word added to a TLD Like ‘.com’ Inherently Generic? Who Decides?; article in IP Watchdog; December 18, 2019;
- A Discussion of Scandalous/Offensive Marks, HouseMARQUES, Issue 88;
- Protecting Unregistered Trademarks Under Common Law and Unfair Competition, World Trademark Review, October/November 2017;
Speaking Engagements & Recognitions
• Named an IP Star by Managing IP for 2020
• Speaking Engagement: Annual Trademark Day; Stockholm, Sweden; January 2020
• Quoted in article related to Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., United States Supreme Court decision in Bloomberg Law, May 14, 2020
• Speaking Engagement: International Collegiate Licensing Association (ICLA) Summer Convention; June 2018
• Named an IP Star by Managing IP for 2018/2019
• Named a WIPR Leader for 2016 and 2017
• Webinar: Trademark Registration and Use in Commerce: Things You Need to Know, March 14, 2017
• Quoted on Possible Impact of Trump Presidency on IP Law in Law360
• Quoted on 2016 Olympic Trademark Issues in Bloomberg BNA’s Patent, Trademark & Copyright Journal®
• Webinar: Disparaging Marks: The Redskins, The Slants and the USPTO, May 11, 2016
• Quoted on Redskins Appeal in Bloomberg BNA’s Patent,Trademark & Copyright Journal®
• Recognized by Who’s Who Legal 2015
• Quoted on Redskins Trademark Decision in Bloomberg BNA’s Patent, Trademark and Copyright Journal®
• Quoted in Washington Business Journal on Redskins Trademark Decision
• Named an IP Star by Managing IP in 2013, 2014, 2015 and 2016 Speaking Engagement: Norwegian Industrial Property Office, October 2014
• Quoted in Westlaw Journal Computer & Internet
• Quoted in Bloomberg BNA’s Patent, Trademark & Copyright Journal on Aereo Case
• Quoted in World Intellectual Property Review on Facebook Hit with “Trademark Bullying” Claim
• Quoted in LSIPR on Federal Circuit Decision Regarding “Prevail” Trademark
• Quoted in World Intellectual Property Review on Effect of Government Shutdown on the ITC
• Quoted in World Intellectual Property Review on ITC Clears Netflix of RoviPatent Infringement
• Quoted on Webb Trademark Case in World Intellectual Property Review
• Quoted in ABC News Online Regarding Justin Bieber Lawsuit
• Quoted in Westlaw Journal on Amazon Case
• World Trademark Review Blog Featuring Robert J. Kenney on Recent Supreme Court Nike Decision
• Quoted by Law360 in Supreme Court Nike Ruling Article
• Quoted in Law360 and BNA Electronic Commerce and Law Report on New Generic Top-Level Domain Names
• Quoted in Managing Trade Marks Article on Louis Vuitton v. Warner Bros Case
• Quoted in Washington Business Journal Regarding Copyright Violation
• Named in Top 25 Trademark Attorney Rankings by World Trademark Review 2011
• Speaking Engagement: Social Media and Trademarks at Global IP Convention 2012
• Speaking Engagement: BSKB’s 2011 U.S. Trademark Bootcamp