Catherine "Cathy" O'Connor's practice centers on helping clients protect their valuable IP rights. She assists clients in all stages of the trademark registration process, from clearing proposed marks to representing clients before the U.S. Patent & Trademark Office. Her counseling work includes managing international trademark filings, negotiating co-existence agreements, advising clients on copyright issues, and enforcement and defense of IP-related claims. Drawing on her background in IP law and degree in Marketing, Cathy regularly assists clients with legal compliance for contests, sweepstakes and related promotions, with an emphasis on social media-based programs. She also drafts, reviews and negotiates IP license agreements. Cathy has significant experience litigating complex IP matters, including patent infringement cases as well as disputes involving trademarks, trade secrets and copyrights.
Cathy spent time in-house at a major toy company, where she worked closely with global IP counsel and marketing personnel on licensing and promotion matters.
Her pro bono work includes assisting clients with license review, trademark prosecution and responding to cease and desist letters.
Before joining the firm, Cathy served as law clerk to the Honorable Denny Chin, U.S. District Judge, Southern District of New York.
Represents clients in trademark matters in a variety of industries including consumer goods, manufacturing, construction, banking and travel
Provides guidance on IP protection to established companies, start-ups and individuals
Assists clients with legal compliance for contests and sweepstakes, including structuring promotions, advertising review and drafting official rules and winner documentation
Advises marketing company on legal issues surrounding coupon delivery products and related agreements
Represented online publisher against defamation and privacy claims, successfully arguing motion to dismiss several claims
Worked with client to develop and implement strategy for policing trademarks on the Internet and to secure transfer of domain names accused of infringing client's trademark
Defended company accused of copyright infringement, negotiating settlement of two related cases
Worked on teams defending patent infringement claims in various industries including consumer goods, software, flavoring ingredients and manufacturing
summa cum laude1995executive notes and comments editor, St. John's Law Review
cum laudeBusiness Administration (Marketing)