Collaboration and consumer safety: insights from 3M, WTR’s 2021 North America Team of the Year

Counterfeits are the scourge of brands the world over but in some industries the threat that they pose to public health and safety elevates the work of brand protection professionals to a new level. This has certainly been the case for the 3M team, which has had to escalate efforts to combat fraud, price gouging and counterfeiting of products such as facemasks throughout the covid-19 pandemic.

The team has done so with great success. In fact, the numbers tell their own story.  With regard to respirator fraud alone, by early August 2021 the team and its partners had:

• seized almost 52 million counterfeit respirators;
• removed more than 22,900 fraudulent e-commerce offerings;
• removed more than 22,400 false or deceptive social media posts;
• taken down more than 335 deceptive domain name addresses;
• been granted 20 temporary restraining orders against infringers;
• initiated almost 40 lawsuits; and
• been agreed or awarded damages in 20 cases (3M having pledged that all damages recovered will be donated to covid-19-related non-profits).

Looking back on 2020, Colette Durst, vice president and chief trademark counsel at 3M, tells WTR: “I think the team’s biggest achievement was building the Global Covid-19 Brand Protection Team. The team has members in each region and from all parts of 3M, including intellectual property, general counsel, the US litigation team, the personal safety division, government affairs and global security.” As part of this collegial effort, “everyone on the trademark team helped out in one way or another with our efforts to protect consumers from counterfeit 3M respirators”.

One company initiative was to enlist consumers themselves in the effort. Local covid-19 fraud hotlines were set up around the world to help the public detect fraud and avoid counterfeit products. These collective efforts paid off – over 14,700 reports were made to the fraud teams.

However, consumers were just one of many partners that the 3M team collaborated with last year. Its network extended to other brand owners, law enforcement, outside counsel, government agencies and, Durst explains, “through the IPR Center we entered into a partnership with George Mason University which has played a key role in helping us ‘connect the dots’ with our global cases” .

These relationships continue to pay dividends in the fight to protect consumers. What is more, they are all connected. In June 2021 3M worked with the US Marshals Service in the Eastern District of Kentucky to stop the sale of more than 1 million suspected fake N95 respirators. The case originated when potential customers contacted 3M’s fraud hotline to check the authenticity of sales documents relating to the entity in question.

The pandemic also brought internal pressures. When considering how she and her colleagues ensured that operations ran effectively and uninterrupted at a time of inevitable disruption, Durst reflects: “The team adapted to working remotely incredibly well. We are a global team so working remotely was easy. We actually worked more effectively remotely, especially with the increased workload.”

That workload extends beyond tackling covid-19-related fraud and counterfeiting. Durst’s team is tasked with online and offline enforcement and anti-counterfeiting work, prosecution and clearance, counselling, supporting M&A activity and general business agreement work.

The portfolio that it oversees is extensive. As of early 2019, 3M boasted more than 28,000 trademark applications and registrations – a number that has increased significantly after a series of gap-filling projects. With more than 60,000 products – many of which are affixed with both the 3M brand and another mark – canny portfolio management is a must.

The team that oversees these activities mirrors the company structure. 3M comprises four business groups: the safety and industrial business group (SIBG), the transportation and electronics business group (TEBG), the healthcare business group (HCBG) and the consumer business group (CBG). A lawyer and a paralegal are assigned to each. Durst expands: “We have one attorney handling our TEBG and three divisions within the SIBG. This is because our personal safety division is a very large and active division. The medical solutions division is also very large so we are looking to add more support to the HCBG.”

Travis Bachman manages the CBG portfolio and works closely with Petra Kallenbach on online enforcement. This is a key focus area. “We continue to expand our online enforcement to increase our efforts against the misuse of our brands, the sale of counterfeit 3M goods and more,” Durst notes. “We engage vendors to manage our online and domain name enforcement, but it takes quite a bit of work to develop the strategy behind what we do.”

Reflecting on the past 18 months, she states that corporate brand professionals “need to be open to change and even embrace change”.

“We saw so much change in 2020 but as someone who has worked in-house for many years, I have to say the only thing that is constant with working in-house is change,” she observes. “If you cannot embrace change and adapt to change, working in-house is probably not the right place for you.”

By extension, collaboration is key to ensuring that change is managed and the best outcomes are achieved for the company and consumers. “Being in-house is very different from a law firm,” Durst notes. “Even though the lawyers on my team have different ‘business clients’, 3M is our client. We need to agree on our overall global strategy and share information to achieve our goals. I am fortunate that the lawyers and paralegals on my team collaborate very well.”

Shortlisted:

• 7/11
• Apple 
• Chapter 4/Corp
• Johnson & Johnson

Other 2021 winners:

• Asia-Pacific Team of the Year
• Europe, Middle East and Africa Team of the Year
• Latin America Team of the Year
• In-house Leader of the Year