• Event in Chicago focused on the cost-effective management of trademarks
  • The role of legal in brand reputation crisis response plans highlighted
  • Corporate counsel urged to adapt expectations to local market nuances

Our latest event Managing Trademark Assets, which took place in Chicago last week, was focused around the theme of ‘the cost-effective management and communication of international portfolios’. In this article we present just a few of the practical takeaways and discussion points from the day, including how to approach crisis communications and the creative tactics that can be employed to foster a cross-enterprise understanding of trademarks.

In anti-counterfeiting efforts, the enemy of your enemy is your friend – In the session titled ‘Fighting counterfeits on a finite budget’, one recurring message was the benefit of pooling resources with other brand owners – even if they are your competitors. Theresa Conduah, managing counsel at Toyota Motor North America, explained: “We talk with competitors about known counterfeiters – if we are being counterfeited chances are that they are.” In 2016, this collaboration led to the creation of a non-profit Automotive Anti-counterfeiting Council, in which automakers and their partners share information on known counterfeiters. Kelly Williams, senior director, managing counsel, trademarks at Under Armour, concurred that collaboration is important, and can facilitate shared learning. She noted: “We are willing to open the door to conversation with competitors. For instance, we recently had conversations with New Balance. They have had recent success in China against parasite brands and by trading stories at a high level we found that two of the companies they sued are also on our radar. It’s not instinctive to talk to competitors but in anti-counterfeiting work there is commonality there.” The key takeaway here is that, while in competition as brands, when faced with common enemies meaningful collaboration can increase the chances of success and create a formidable challenge to counterfeiters.

Managing political risk: The Brexit experience – One of the day’s sessions focused on the management of risks and challenges emanating from the political environment. Given the nature of the topic, last year’s UK referendum, in which the electorate voted to leave the European Union, supplied a recent example of how to prepare for the unexpected. Michael Kelly, corporate counsel, intellectual property, at Amazon.com recalled: “There is no perfect solution to dealing with unpredictable situations – the best advice is just to try to be prepared. The most concrete example I have lived through is Brexit. In run-up it was widely believed it wouldn’t happen. That was the position of the media and outside counsel. But we still worked to a ‘what if’ scenario. We are still waiting for it to shake out but we are faced with a situation where countries in which we thought we had protection, we wouldn’t. We have clear front-runner brands that we want to make sure we are taking as much of a defensive approach as we can on. So we started to file back-up applications. It’s not an earth shattering solution but it is a concrete step you can take to mitigate risk. When vote did happen we felt good about those choices.”

Managing political risk: When your brand becomes the story – In issue 65 of World Trademark Review we presented in-depth analysis of the risk management and communications strategies that need to be employed when brands become embroiled in political campaigning and discussion. One of the examples we used in that piece centred on Skittles, which became the focus of the debate on immigration after Donald Trump Jr retweeted an image of the product and the message: ‘If I had a bowl of Skittles and I told you that just three would kill you, would you take a handful? That’s our Syrian refugee problem.” Providing a glimpse into the internal process that resulted, Sharon Sorkin, senior counsel, marketing properties at Mars Wrigley Confectionery, recalled: “It came up very quickly and was suddenly the news of the day. We had to take a multi-faceted approach. After all, was it a legal issue? A business affairs issue? The decision was ultimately made that it wasn’t a legal issue due to the first amendment dimension. But we knew we had to respond.” The company therefore took “the high road”, issuing a media statement that noted: “Skittles are candy. Refugees are people. We don’t feel it is an appropriate analogy. We will respectfully refrain from further commentary as anything we say could be misinterpreted as marketing.” For the legal team, though, the hard work didn’t end there, subsequent challenges highlighting the need to adapt policing plans in the wake of unexpected developments. Sorkin explains: “What was interesting was – as it was transpiring that day – someone adopted a ‘Skittles PR team’ Facebook page and started posting as if they were us reacting to Trump Jr’s tweet. We took that down right away as we didn’t want to be part of the conversation and they were impersonating us. Sometimes you get thrown into the spotlight and you just need to respond.”

The first step in a crisis plan may be to handle your in-box – Developments more in the purview of the legal team can also spark a media frenzy that needs addressing. We previously carried analysis of Under Armour’s major victory against the Chinese sportswear company Fujian Ting Fei Long Sports Products Co, which had used confusingly similar logos to Under Armour for its Uncle Martian branded sports footwear. While, in terms of infringement, Kelly Williams, senior director, managing counsel, trademarks, describes as “the tip of the iceberg in China”, it did instantly grab mainstream media attention even before the legal action was launched. She explained: “We went headlong into enforcement when social media discussion started up around Uncle Martian going live with a big fashion show, using an Under Armor-like logo. This was huge – my email inbox lit-up. We were getting notices from across the organisation, as well as from friends and colleagues outside the company.” The team’s first step, then, was to formulate an internal email plan to ensure that the sheer flow of emails about the Uncle Martian launch has handled, and that the company knew that the trademark team was aware of the issue. In a crisis, handling internal communications are as important as messaging to the wider world.

Ensure colleagues “get it”, even if that means utilising creative teaching methods – A long-discussed challenge for corporate counsel is how to ensure buy-in into – and understanding of – the trademark function. Linda Heban, vice president and chief trademark counsel at Harley-Davidson Motor Company, noted that constant communication is important, observing that “often if there is a misunderstanding it is because colleagues they don’t understand trademark law in practice. It’s my job to make sure they get it”. Sometimes this requires a creative approach and, reflecting on how her team facilitates cross-enterprise understanding, she explained: “I have tried to demonstrate to business folks that we are on the same team – showing that we do good work that helps the company and communicating our successes. For instance, when we have a big bust, we will do a story on the company intranet. We have also run do quizzes in the cafeteria. A few weeks ago we put a genuine and fake jacket on display, and asked if people could identify which was fake. People loved it – there was always a crowd around it. We also get involved in new employee induction – we do a 30 minute dog and pony show. This is all designed to communicate that we do good work and are on the same team. If they can see that they will tend to be more willing to listen.” Sometimes, though, that barrier will remain in place and counsel have to accept that a middle ground may not be found: “Some people get it – they understand there are legal risks. Others are more difficult – they feel like they will do what they want to do, and will listen to advice only because they have to. With these I try to be direct and short – here is the answer, and why it is the answer. There will always be people resistant – especially when telling them something they don’t want to hear.”

Sometimes corporate counsel have to adapt to local reality – Enlisting the help of other stakeholders requires both an understanding of their pain points and ensuring that they also understand the reality of the legal work trademark counsel undertake. The same is true in the relationship with law firm practitioners – both sides needing to meet halfway in order to effectively collaborate. For instance, Hannah Fernandes, partner at Brazilian firm Daniel Legal & IP Strategy, noted that often in-house professionals often face difficulties adjusting their expectations to reflect local nuances: “We still deal with clients who are resistant to what is going on on the ground. So our task is to get them to consider their goals according to local reality - to view success on the basis of what is success from a Brazilian perspective.” Similarly, there is a need tor law firm practitioners to understand the reality of in-house practice, with Heban observing: “When working with those outside the US there are challenges like time zone, different cultures, etc. I would say that the only time when I have had to reset expectations is when outside counsel has unrealistic expectations on what an internal person can do. I had one instance where our external counsel drafted a 40 page declaration but no person in the company had the knowledge required to sign. I had to say ‘I’m not going to educate someone on how this other company’s business model works’. They can’t testify to the intricacies of a counterfeiter’s business.” Clearly, in a bid to establish truly meaningful partnerships, meeting in the middle – and understanding respective business parameters is a must.

Fame is a benefit, but also a burden – One way to enhance protection for trademarks, and enable more predictable enforcement, is to achieve well-known status in key jurisdictions. However, there are caveats. Jomarie B Fredericks, deputy general counsel and chief IP counsel at Rotary International, noted that ‘fame’ is a particularly beneficial aid for those operating with limited budgets but with fame comes imitators: “Famous marks are more likely to be targeted by pirates – even in markets and on products that the rights holder is not active in.” She adds that you also have an increased duty to police beyond your core classes, and then need to engage in vigorous enforcement without creating a reputation as “a litigious bully”. And this, of course, does all have budget implications: “Global policing across 45 classes and common law usage takes time and money, but if you want to protect the well-known status of a mark and protect it from dilution, it is an obligation.” Crucially – sometimes fame should not be relied upon. Vladimir Trey, partner and chief of the trademark department at Gorodissky & Partners, observed: “Achieving well-known status is worth the effort and expense, but in some jurisdictions like Japan it is still worth combining protection for a well-known mark with individual protection in all 45 classes.”

And finally – The conference quote of the day, courtesy of Relani Belous, senior vice president, general counsel at Penthouse Global Media, Inc: “There is more to trademark work than just securing a mark. It is like buying a dog. You also have to think about feeding it and future vet bills. You also need to think about the time needed to walk it each day, vet bills and whether it needs shots, and what you will do if you go on holiday.”

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