Catherine "Cathy" O'Connor's practice centers on helping clients with legal issues relating to brand protection, including intellectual property, advertising and marketing matters. 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 and the Trademark Trial & Appeal Board. Her work includes managing international trademark portfolios, 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 assists clients with advertising law issues and legal compliance for contests, sweepstakes and related promotions. She also manages IP due diligence in corporate transactions, as well as the drafting and negotiation of IP license and related 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. She has written and spoken extensively on IP and related topics.
Her pro bono work includes assisting non-profit organizations 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, cosmetics, software, construction and banking
Provides strategic guidance on IP protection to established companies, foundations, 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 clients on legal issues relating to advertising claims for television, internet and other media
Represents clients in disputes at the Trademark Trial & Appeal Board, including drafting successful motion for summary judgement regarding lack of bona fide intent to use the applied-for mark
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
Chosen for inclusion in The Best Lawyers in America (Woodward/White, Inc.), Litigation – Intellectual Property, 2023
Selected to the list of Connecticut Super Lawyers (Thomson Reuters), Intellectual Property, 2019
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