Cooperation, imagination and perseverance: insights into Western Digital’s global brand protection efforts
In the first of a series of interviews with leading corporate trademark counsel, World Trademark Review spoke to Cynthia Tregillis of Western Digital Corporation on collaboration in anti-counterfeiting efforts and the challenges of setting up a new brand protection group.
To kick off our series of interviews with in-house experts featured in the WTR 300, World Trademark Review sat down with Cynthia Tregellis, vice president of global brand protection and trademarks at Western Digital Corporation. Tregellis joined the company in late 2012to set up its trademark group from scratch. Starting off as the digital storage company’s sole brand protection attorney, she has subsequently built and presided over the expansion of the in-house trademark team and spearheaded its global anti-counterfeiting efforts.
Building a brand protection group
Much has changed in the six years since Tregillis joined Western Digital Corporation. When she started, she was the sole brand protection attorney – now the in-house trademark team includes eight other members (five attorneys, two paralegals and a case analyst) in California, as well as a three-person group in Shanghai (two attorneys and a senior paralegal).
In California, the group is split into enforcement and portfolio management, while the Chinese contingent straddles the prosecution/enforcement divide. Geographical responsibilities are also divided among team members, with the Shanghai-based practitioners taking the lead in the Asia-Pacific region and California-based professionals focusing on the Americas, Europe, the Middle East and Africa, and South Asia. Such an international perspective is vital given that the team is responsible for acquiring and enforcing Western Digital’s impressive global collection of brand rights, which currently comprises more than 6,400 marks worldwide.
This sprawling portfolio was expanded dramatically in 2016, when the company bought flash memory giant SanDisk – and its 2,500 marks – for $19 billion. Indeed, the trademark team’s rapid growth was partly prompted by this acquisition. “Having added a large number of pending and registered trademarks in 2016, we had to conduct a full analysis of the new portfolio, the status of all its marks; we had to ascertain what needed to be done and whether there were gaps that needed to be filled,” Tregillis explains. “We manage all of our portfolio in-house, so it was important to hire new attorneys and some very strong paralegals.”
Building the capacity of the trademark group was especially important given Western Digital’s decision to manage its portfolio in-house – an approach that Tregillis considers to have had significant benefits. “Something I wasn’t expecting is that we would save time by bringing marks in-house. It’s more work in a way, but it does appear that we are saving time in terms of the number and severity of office actions. We have spent time up front in making sure the identification of goods and services is as clean as possible.”
Whereas in the early days, resource constraints forced her into a more reactive model – responding to problems as they emerged – Tregillis believes that the team’s expansion has been crucial for developing a more proactive approach to brand management.
Collaborating in the fight against fakes
When it comes to brand protection success, collaboration is key. Reflecting this, one of the hallmarks of Tregillis’s proactive approach is relationship building, not just within her own team but also with e-commerce platforms, state authorities and other brands – Tregillis also serves as a board member of the International Anti-Counterfeiting Coalition.
For Western Digital, which has to take action against counterfeits sold via both physical and online marketplaces, the reputational challenge posed by fake goods is particularly acute. Given the nature of the business, Tregillis explains, fake versions of Western’s products are only likely to be purchased unintentionally, increasing the chance of adverse customer experiences. The loss of data stored on a counterfeit hard drive, such as family photographs, can also be devastating.
Close cooperation with e-commerce platforms has become a core pillar of Tregillis’s strategy to tackle this problem. “Our general philosophy is to partner with all of the platforms,” she enthuses. “To meet up with them and try to have a fruitful relationship with them. We are a founding member of Alibaba’s anti-counterfeiting alliance, for example, and have been doing raids with them for the last few years and they have indicated a willingness recently to share important information with us and the other members of the alliance.”
While some brand owners have been critical of Alibaba over the years, Tregillis praises its efforts. “I have seen a definite change in their willingness to work with brands,” she points out. “They always meet with us when we ask for meetings; and, for us at least, their words have always been supported by actions. Importantly, they don’t overpromise; they tell you if they cannot or will not do something.”
She finds that in general, large online platforms are helpful and quick to respond to requests – she also speaks positively of Facebook and Ebay. It is the smaller platforms, with less-developed anti-counterfeiting policies and procedures, that pose the real difficulties for brand owners. “Southeast Asia is still challenging in terms of the platforms,” Tregillis admits. “We are starting to reach out to them, but sometimes you don’t get much in return – but you have to keep trying! Often, they just don’t have the internal resources to help; it’s not that they don’t want to help, so I like to give people the benefit of the doubt.”
Turning to collaboration with enforcement authorities around the world, she notes that developing countries, where local authorities are sometimes not as proactive or well-resourced, pose the most difficulties in terms of brand protection. “There are still challenges in Africa and South America, in terms of getting the authorities to help us. You can write cease and desist letters, but if the infringer just throws them in the bin, it doesn’t make a difference. Getting the assistance of the authorities can be a big challenge.”
Positively, this is no longer the case in China. In fact, Tregillis contends that trademark problems in the country are often exaggerated. “China appears to have improved on many of the issues we dealt with in terms of bad-faith filers. And we are seeing heavier criminal penalties and fines there; the authorities are more willing to do criminal raids… There is a lot of criticism of Chinese counterfeiting law and the penalties for counterfeiting, but this is a worldwide issue, I think, and not specifically a Chinese issue.”
Tregillis places great value on learning through collaboration with other brand owners too. “When I started the programme in 2012, I had to build things from scratch,” she recalls. “So I tried to learn from other industries, to discuss best practices and strategy with them. I learned a lot from brands in the fashion sector, which have been involved in trademark enforcement for much longer – for example going after counterfeiters in civil suits.”
Educating vendors and consumers is also a crucial component of the fight against counterfeiting. “The educational aspect is something we are really looking at doing in the future. We are not an aspirational brand, like Louis Vuitton; we provide products that are necessary to preserve, manage and access a person’s photographs, documents and data, and people may not realise there is a risk of buying a fake version – so we need to inform them.”
“We are also approaching sellers in ASEAN countries – where there is a challenge in terms of the physical and online counterfeit marketplace – and trying to educate them,” Tregillis continues.
Of course, cooperation between Western Digital’s business units is also important, especially for identifying infringing products and monitoring enforcement successes. “We work very closely with our marketing and sales teams, as well as our customer service teams,” Tregillis points out. “I think a lot of people forget about the value of the customer service team for IP matters. They interact with consumers and so have useful knowledge of the marketplace; and they have a lot of data, too, which helps me to show how the trademark team’s work contributes to the business.”
“It’s worth mentioning that the company is very supportive of my team,” Tregillis adds. “All the way to the top, there is an appreciation of the value of a brand, so we have buy-in from senior management. They understand that the brand is everything. We have always received support, but in the last few years this has become stronger and more overt. The president, general counsel, and CMO have worked with me directly on some branding issues. That’s been great.”
She is also enthusiastic about working closely with external service providers and investigators who boost her team’s ability to track down and monitor infringing items, as well as certifying products to help consumers identify fakes. Tregillis reserves particular praise for Underwriters Laboratory, which shares her commitment to education and provides worldwide assistance to Western Digital.
However, building relationships is only one part of Tregillis’s brand protection strategy. Thinking outside the box is another defining characteristic of her approach.
Tregillis points out that Western Digital has enjoyed significant success implementing creative enforcement tactics in India. “Working with wonderful outside counsel, we have employed very creative tactics in India, using consumer protection laws as a more effective means of upholding our brand and tackling counterfeiters and parallel importers. Consumers were being harmed, and we found that Indian courts are very receptive to that argument.”
There is a similar strategic dexterity at play in the trademark team’s approach to portfolio management. “We really try to leverage the portfolio we already have,” she argues. “One of the things we look at is whether or not we can use old trademarks for new products or whether we should sell certain marks. Obviously you have to be careful; if you sell at a blind auction, a trademark might be mistakenly sold to a competitor, or if you have already established goodwill with a mark, you may not be able to use it for a different product or brand.”
Tregillis continues: “We also look to see if we can buy trademarks from smaller brands if that is the right thing. It could be that the business did not need to have coverage in a certain country, but now they want to expand the business and somebody else has a trademark. So, do you allow yourself to be blocked from that market or do you ask what can be done to solve the problem? Sometimes you don’t have a choice if the trademark owner does not want to sell to you.”
When asked for some closing advice on what makes a good brand protection manager, Tregillis emphasises the importance of inventiveness and imagination. “As well as being passionate about what you are doing, you have to be creative and forward-thinking. You must challenge yourself to ask: ‘Could we do it differently?’ and ‘Why are we doing it this way?’ I think the right answers come from the right questions, and my team is very good at thinking of those.”