Kinsley

Nicole Kinsley

Counsel
Boston

I advise clients of all types and sizes on proper care and feeding of trademarks.

Nicole Kinsley represents clients ranging from individuals to multinational corporations in trademark, copyright, and false advertising litigation, and in day-to-day trademark matters.

Nicole provides a full range of trademark services, advising clients with respect to selection, clearance, prosecution, and enforcement, and management of worldwide trademark portfolios.

Nicole also represents clients in disputes, from investigation and demand letters onwards. She regularly litigates in federal court and before the USPTO’s Trademark Trial and Appeal Board.

Nicole has an active pro bono practice, assisting charitable and arts organizations with their trademark and copyright needs, and representing victims of domestic abuse. Nicole is also the President of the Harvard Law School Association Parody & Drama Society Alumni Network. 

Education

  • Harvard Law School, J.D., 2011
  • Amherst College, B.A., cum laude, 2008

Bar and Court Admissions

BAR ADMISSIONS
  • Massachusetts
  • New York
COURT ADMISSIONS
  • U.S. Court of Appeals for the First Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Massachusetts
  • U.S. District Court for the Eastern District of Michigan

Experience

DISPUTES
  • Obtained jury verdict of copyright infringement and maximum available damages in case involving greeting card designs. 
  • Obtained dismissal after hearing of declaratory judgment action against education company.  
  • Obtained dismissals of copyright litigations brought against film and television studios on merits and jurisdictional grounds.
  • Represented numerous clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, leading to favorable decisions and settlements.
  • Successfully enforced clients’ rights through trademark, copyright, and right of publicity demand letters.
  • Successfully defended clients in responding to demand letters, convincing senders not to pursue litigation.
  • Negotiated favorable resolutions of numerous disputes, helping clients avoid litigation where possible.
  • Represented plaintiffs and defendants in false advertising proceedings before the National Advertising Division.
NON-DISPUTES TRADEMARK WORK
  • Advised clients regarding strategies for trademark selection.
  • Conducted trademark clearance and advised clients regarding risk avoidance.
  • Secured clients’ trademark rights through aggressive and creative prosecution strategies, including overcoming refusals from USPTO and foreign trademark offices.
  • Developed and maintained worldwide trademark portfolios including hundreds of applications and registrations in many jurisdictions.
  • Advised and guided clients through rebranding efforts, including in the context of complex mergers.
  • Conducted due diligence on trademark portfolios of potential acquisition targets. 
  • Represented pro bono non-profit client in negotiating acquisition of trademarks and copyright from formerly affiliated entity.  

Publications

  • “Trademark Infringement and Related Claims,” MCLE’s Business Torts in Massachusetts (2016 ed., with Jenevieve Maerker and Daniel McFadden)

Speaking Engagements

  • Speaker, “Trademark Transactions for the Generalist In-House Counsel,” Foley Hoag Webinar (April 13, 2021)
  • Speaker, “IP Basics,” Boston Bar Association (October 10, 2020)
  • Speaker, “Trademarks for the Generalist In-House Counsel,” Foley Hoag Webinar (May 19, 2020) 
  • Guest Speaker, “Asserting and Enforcing IPR to Protect the Brand,” Northeastern School of Law Branding Law and Practice course (April 24, 2020)
  • Speaker, “Legal Ethics for In-House Attorneys Handling Copyright, Trademark & Advertising Matters,” Foley Hoag Webinar (March 11, 2020) 
  • Speaker, “2019 Developments in Copyright Law,” Boston Bar Association 20th Annual Intellectual Property Year in Review (January 23, 2020)
  • Speaker, “Top IP Cases in 2019 In-House Counsel Need to Know,” Foley Hoag Webinar (January 15, 2020)
  • Speaker, “Intellectual Property Strategies for Startups,” MassChallenge (August 22, 2019)
  • Speaker, “Practicing TM, Copyright, IP & Related Areas of Law” panel, Boston Patent Law Association (October 17, 2018) 
  • Speaker, “Trademark, Copyright, and Patent 101,” Lawyers’ Committee for Civil Rights Under the Law (April 19, 2018)