Internet & Telecommunications Team of the Year: Google

It’s been a busy year for the Google trademark team, as legal director Terri Chen reflects: “We have devoted a lot of time to ensuring that our portfolio adequately reflects our constantly changing business and increasing number of products/services. Enforcement is always a challenge, requiring many resources. As a top internet brand, we of course see a high volume of infringements of our core marks, including GOOGLE, YOUTUBE, CHROME and ANDROID, which range from routine cybersquatting to sophisticated scams to oppositions to counterfeit products around the world. In addition, as courts have confirmed the legality of keyword advertising – especially in the United States and European Union – and our other products have grown, such as Google Play and YouTube, we’ve devoted more resources to ensuring that our removal policies and complaint processes on those platforms make sense.”

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The Google team with Fieldfisher’s Leighton Cassidy (far right)

The team, which includes a mix of attorneys and paralegals, is primarily based in Mountain View, California and handles trademark matters globally, overseeing a portfolio some 10,000 filings strong. Structurally, it works cross-functionally with a number of groups at the company. “We believe that communication is a two-way street and have found that understanding the business objectives leads naturally to being able to address concerns and getting things done,” notes Chen.

She echoes this point when elaborating on what makes for a successful prosecution strategy: “One of the most critical aspects of this is staying in tune with the business and product teams. Understanding their road maps helps us build a strategy ahead of time and take precautionary steps, such as getting coverage in key jurisdictions where there are known enforcement issues.”

Such close relationships with other business functions are critical in an organisation which is continually developing its product and service offerings, and which often finds itself at the cutting edge of trademark law. “Google is involved in an incredible range of products, services and commercial areas, which impacts our strategies on counselling for clearance, prosecution and enforcement,” Chen explains. “While we started with search and advertising, we have evolved to be in the browser, operating system, social, hardware, self-driving car, virtual reality and life sciences spaces as well. We’re also seeing counterfeit challenges as we have moved increasingly into the hardware space with phones, tablets, notebooks and now thermostats and smoke detectors with Nest; so we are definitely devoting more resources to that as well. In addition, we see a diverse range of legal issues in our practice, such as intermediary liability, where the law is not always settled; and we are looking at new issues that have never before been in a court.”

This diverse array of challenges has also required a thoughtful approach to enforcement. “We strive towards being strategic and balanced,” Chen continues. “There will always be third-party uses of your marks, but you cannot and should not go after all of them. Instead, focus on making sure that you prioritise those that could cause true harm to users or to the brand. Taking a balanced enforcement approach involves recognising the fact that not all uses are infringing, and that sometimes not taking action will have a better outcome in the long run.”

On the secret to the team’s success, she concludes: “We’ve focused on building the right mix of people who bring diverse areas of expertise to our team. We are genuinely passionate about what we do and believe in the company’s products and services. It also helps that we enjoy working with each other!”

Other nominees:

Alibaba

GoDaddy

Telefónica

Unify

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