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Catherine Dugan O'Connor

Partner

F: (203) 399 5892
Overview Experience Insights News Education and Credentials Recognition and Community

Overview

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.

Experience

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

Insights

News

Education and Credentials

Education
St. John's University School of Law, J.D., summa cum laude, 1995, executive notes and comments editor, St. John's Law Review
University of Connecticut, B.S., cum laude, Business Administration (Marketing)
Admissions
State of Connecticut
State of New York
U.S. District Court, District of Connecticut
U.S. District Court, Southern District of New York
Affiliations
Fairfield County Bar Association, Co-Chair IP/Internet Committee, Co-Chair
Connecticut Bar Association
American Bar Association
International Trademark Association (INTA), Enforcement Committee

Recognition and Community

Recognition

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

No aspect of these advertisements has been approved by the highest court of any state. See Awards Methodology.