LONG BEACH TOWNSHIP - A few months after Bill Kelly Jr. died in the World Trade Center on Sept. 11, 2001, his family and friends sat down to plan a charity that would bear his name.

As they talked, his sister Casey Hamilton sketched out a logo in crayon: a four-leaf shamrock bearing the image of the American flag, with the stars in the upper left quadrant. It seemed like a perfect fusion of Kelly's Irish heritage and America’s post-9/11 resolve.

Since that day the Bill Kelly Jr. Memorial Fund has awarded nearly $900,000 in scholarships to students attending his alma mater, the University of Scranton. The shamrock-flag logo is ubiquitous at the nonprofit's primary fundraising event, a golf outing that takes place each October at the Jersey Shore. A few years back, however, Hamilton starting hearing things that didn’t make sense.

“People would say, ‘Oh, we saw your hat at Dick’s Sporting Goods,’” Hamilton said. “And I would say, ‘What are you talking about? We don’t sell to them.’”

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What they saw was a product of Black Clover, a Utah-based apparel company that also uses a four-leaf shamrock as its logo. Some of its gear features an American flag shamrock that, at a glance, looks virtually identical to the Bill Kelly Jr. Memorial Fund’s logo. Concerned about confusion and the diminishment of the charity’s brand, members of the Kelly family asked Black Clover to stop marketing the image.

“It’s a 9/11 charity, so I thought they would be like, ‘Oh, we’re really sorry,’” Hamilton said. “We figured they would just stop, to be quite honest.”

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It didn’t happen, and now the Bill Kelly Jr. Memorial Fund — which is headquartered in Long Beach Township at the family’s longtime home — is suing Black Clover for trademark infringement. Surprisingly, on the eve of the charity's 18th annual golf outing, the apparel company is digging in for a fight.

“It’s like having someone walk on hallowed ground, like walking across his grave almost,” Hamilton said. “That’s kind of what it feels like.”

Legal battle lines drawn

“I don’t know how (Black Clover) came about making the logo,” said Stephen Roth, an attorney representing the fund. “What I do know is even after we told them the logo was causing confusion, they still continued to sell the logo.”

Roth, an attorney at the Westfield-based firm Lerner, David, Littenberg, Krumholz & Mentlik LLP, said although the Kelly family did not trademark the logo until 2018, “it’s not like a patent, where you have nothing until you get it registered. It’s the registration of a mark that you already have rights to.”

He added, “The issue is: Did Black Clover use the mark after the Billy Kelly Foundation used it? There’s no dispute about that. They clearly did.”

The lawsuit seeks a permanent injunction against Black Clover’s use of the American Flag shamrock, plus “an accounting to determine the profits Black Clover has made in connection with all products sold and services rendered under use of the American Flag Shamrock trademark, and an award to the Fund of all such profits.”

Said Roth, “Under settled trademark law, the damage period goes back six years prior to the date of the lawsuit." He also said any such award would be put directly into the scholarship fund.

In an interview with the Asbury Park Press, David Gold, an attorney with Hackensack-based Cole Schotz P.C. who represents Black Clover, described the company's use of the American flag shamrock as an “ornamental use of its own, unique design” that is allowable under trademark law.

He added, in an email:

“Black Clover fully respects and appreciates what the Fund does and stands for, and indeed does a good amount of community outreach itself. That said, it would frankly defy logic to assume, as the Fund has alleged, that Black Clover nefariously singled out the Fund for its own financial gain.

“Black Clover has not engaged in any wrongdoing, and we believe both the facts and the law bear that out.

“When the layers are peeled back from what is an emotionally charged dispute on both sides, we have a fairly straightforward set of legal issues that should not be litigated in the press, but the court, which is fully equipped to address those issues in accordance with well-settled law.“

The Asbury Park Press reached out to Rutgers Law School professor John R. Kettle III, director of the school’s Intellectual Property Law Clinic, for an objective view of the matter.

“Trademark law, bottom line, is a consumer protection law,” Kettle said. “It protects consumers from being misled as to the source or origin of goods or services. All you have to show in trademark law is establish a likelihood of confusion. You don’t have to establish actual confusion. If it’s likely that people might think an apparel company is using a logo that is the same source as a foundation’s, then that’s actionable.”

On that basis, he said, “I can see the merits. A trademark owner has to take reasonable steps to prevent confusion in the marketplace. If they don’t — if they allow others to use their trademark without quality control, then they could be deemed to have abandoned it.”

The fact that the fund did not register the trademark until 2018, he said, should have no impact on the case.

“Trademark law is based on senior vs. junior,” he said. “Whoever used it first gets the territory.”

Kettle said these types of cases are not unusual, but most of them settle before reaching a courtroom.

“Once (an incidental infringer) is informed of it, they run the risk of being willful trademark infringers, which can give much more severe damages or remedies to the trademark owner,” he said.

Yet here they are, in U.S. District Court. An initial conference is scheduled for Oct. 17 in Trenton.

“It’s unfortunate we had to take it this far,” Roth said.

Far-reaching impact

Six days before the conference, on Oct. 11, the 18th annual Bill Kelly Jr. Memorial Golf Classic will take place at Greate Bay Country Club in Somers Point, Atlantic County. Roughly 300 people are expected to attend, including a friend from high school who was a new kid in town when Bill walked over to him in the cafeteria.

“He invited him to their lunch table, and from that moment on the kid loved Billy,” Hamilton said. “That’s what he was known for. He would reach out and draw people in and make them feel comfortable. That’s why, 18 years later, all these people still come and play golf.”

Bill’s parents, Bill and JoAnne Kelly, get donations from all over the country from those who can’t attend but want to contribute to the fund.

“There is a woman who for 18 years has sent $10 every year,” Bill Kelly Sr. said. “I got a check in the mail this morning from a gentleman in Idaho who said, ‘Can you please send me a shirt?’”

He’s sending it, a gray pullover with an unmistakable logo on the left breast: an American flag shamrock.

For more on the Bill Kelly Jr. Memorial Fund, or to contribute, visit www.billkellyjr.com.

Jerry Carino is news columnist for the Asbury Park Press, focusing on the Jersey Shore’s interesting people, inspiring stories and pressing issues. Contact him at jcarino@gannettnj.com.