Fashion, Cosmetics & Luxury Goods Team of the Year: Kate Spade & Company

The last three years have been a period of flux for Kate Spade & Company – and consequently for the IP team. “I joined the company when it was Liz Claiborne Inc, which owned a portfolio of numerous famous brands,” explains vice president and intellectual property counsel Geri Lynn Elias. “Over the course of the last three years, we have sold off all of the brands except for the Jack Spade and Kate Spade New York family of brands, as well as our jewellery brands and some others. We therefore sold Liz Claiborne, Dana Buchman, Kensie, Juicy Couture, Lucky Brand and many more, and changed our company name from Liz Claiborne Inc to Fifth & Pacific Companies Inc, and then to Kate Spade & Company. All of these transactions and name changes were clearly IP related and we had to overcome clearing the names as well as all of the due diligence and reverse M&A on the deals. Settling into a new company, which is very different than the one we started as, has been a great challenge because of different cultures and the way the businesses were run.”


Kate Spade & Company’s Geri Lynn Elias is presented with the award by Andrew Price and Justin Pierce from Venable

The company’s IP team comprises New York-based Elias and a senior trademark specialist, Chinyere (‘Chichi’) Ndukwe, who is based in New Jersey. The two collaborate closely with the security team – Shawn Brosnan, Max Luciano and Evan Arfuso – who handle IP enforcement alongside a network of investigators, customs and external vendors, as well as working on cases which are then handed over to Elias if not resolved.

As the team is relatively small, partnerships with other business units have proved critical in ensuring a consistent approach to how company brands are used. “Building relationships internally is not easy as, generally, the legal department is seen as a negative and the department that squelches creativity,” Elias acknowledges. “However, I make it a mission to foster and build relationships and help the teams understand that we are not here to say no; we are here to help them in their creative quests and we can only advise them on the risks so they can make informed business decisions.

Part of this effort involves regular internal training seminars across all business functions, giving employees the knowledge to serve as the company’s eyes and ears in the market. Happily, thanks to this concerted drive to “educate, educate, educate”, Elias notes that “marketing and the board do generally take our legal advice and are sensitive to important/critical legal issues”.

Asked what makes her team so successful, Elias concludes: “Chichi and I have worked together for over five years and we have a very strong professional relationship. I think that having team members who you trust and who you know work hard and are passionate about what they do, coupled with our each having almost 20 years of experience, enables us to work together to achieve the best results for the company. Additionally, I come from a family of fashion – my mom was a designer and my father worked his way up the corporate ladder of a women’s wear company to eventually become president and owner. My background has enabled me to gain the respect and trust of the business teams – particularly design, merchandising and marketing – which generally has them getting me involved earlier in the process and avoids issues before they arise.”

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