Internet and Telecommunications Team of the Year: Google

David Huang (left) and Jan Liu (right) of Lexfield Law present the award to the Google team

At the beginning of 2017 Brand Finance ranked Google as the most valuable brand in the world. While observing that the search giant operates a complicated brand architecture (eg, multiple brands are explicitly endorsed by the Google master brand, such as Android and Chrome, whereas others sit more independently within the Google stable, such as YouTube), Brand Finance contends that this approach has actually strengthened the company’s underlying brand equity.

This multi-brand approach also means that the team tasked with protecting the company’s IP assets faces a variety of challenges. “Google has been offering hardware products for several years,” reflects Annabelle DanielVarda, legal director, trademarks, “but in 2016 we established a hardware organisation and have been developing a broader range of hardware products, such as Google Pixel, Google Pixelbook and Daydream View. About a year ago, YouTube launched a refresh of its user interface and branding, including the YouTube logo, which had been largely unchanged for 12 years. The growth in hardware and the accompanying new branding, as well as the YouTube brand refresh, have both been areas that have certainly kept us busy on the prosecution front.”

Over the last year, the team has also been active on the enforcement side: “After many months of preparatory work we recently filed three lawsuits against scammers purporting an affiliation with Google,” DanielVarda reports. “We also assisted the Federal Trade Commission in its action on similar grounds. It is rare for Google to be the plaintiff in a trademark litigation, however, in this instance we felt strongly about pursuing these actions to protect our users against harmful scams. The growth in our hardware business has also kept us busy on the enforcement front, especially as to counterfeits. We’ve been focusing on continuing to build out our anti-counterfeiting programme.”

The team behind this effort consists of 13 professionals – eight attorneys and five paralegals. In terms of location, 12 are based in the San Francisco Bay Area and one team member is based in the New York office. As to how oversight of nearly 13,000 active filings and registrations are managed, DanielVarda explains: “There is an attorney and paralegal team assigned to each product area. They are responsible for largely all aspects of the portfolio worldwide, including clearance, prosecution, enforcement and client counselling. The attorneys are also responsible for our trademark and anti-counterfeit policies from a platform perspective.”

With respect to the prosecution approach, DanielVarda attests that, while “for companies with a global presence, it is sometimes easiest to file broadly as to geographic scope and goods and services IDs”, this is not always the best strategy. “From a resource perspective and maintaining manageable portfolios, it’s a better strategy to be pragmatic about where you need actual protection for a specific product and brand, both from an offensive and defensive posture. This approach also helps curb congestion on registries.”

While attorneys focus on particular products, there is also a common approach adopted across the team. “The key factors for us are taking a balanced enforcement approach and focusing our efforts on damaging misuses of our brands,” DanielVarda explains. “Google’s portfolio includes several brands that are well-known throughout the world and enjoy over a billion users, including Google, Gmail, Youtube, Android and Chrome. This results in a huge number of third-party uses of our brands. To best leverage our resources and to avoid overreaching enforcement, we focus on the uses that cause confusion or could harm our users.”

This philosophy has remained consistent, but she observes that the team does “adjust how we apply the strategy and the distribution of our resources based on what brands are most impacted and where we’re seeing infringements, as these factors continue to evolve”. For example, a current area of increased focus is building and executing the strategy for combating counterfeits – this is a result of the expansion of Google’s hardware business.

For DanielVarda two factors are critical to success in these endeavours. One is effective collaboration, whether that is across the IP team or with other company stakeholders. In addition, she concludes, “it may sound clichéd, but it’s the people! We have an incredibly talented and dedicated team of attorneys and paralegals. They all have a great deal of expertise in the field of trademarks and a passion for the mission and products of Google.”

Other nominees:
  • AT&T Services

  • Deutsche Telekom AG

  • Sky International

  • Verizon Communications

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