Software and Online Services Team of the Year: Facebook

Cooley’s Nick Bolter (centre) with the Facebook team

For the trademark team at Facebook, in addition to keeping up to date with the latest legal developments worldwide and ensuring that the company’s brands – which include Instagram, Oculus VR and WhatsApp – are protected globally, an inward-looking perspective is critical to success. “One of the biggest challenges for us has always been keeping up with the fast pace of change at our company,” explains Kat Johnston, director and associate general counsel, intellectual property. “For example, we did a comprehensive review and update of the scope of goods and services across all of our business units, making sure everything is consistent and forward looking, which resulted in a master list of hundreds of items. One of the important results of that project is a calibrated plan for certain areas of technology where we need to be advocating for the advancement and technological sophistication of language accepted by trademark offices around the world.”

This reflective approach, coupled with deep insight into the business objectives, stands the team in good stead – not least when it comes to keeping pace with the company’s further expansion into hardware and consumer electronics, and media and entertainment content offerings. Johnston reflects: “Over the years we have adapted to moving fast and being incredibly pragmatic when it comes to software launches. At this new phase, we are continuing to innovate by combining those adaptations with additional focus and investment so that we can provide the best possible guidance and support for the business.”

The 11-strong team tasked with these endeavours consists of four paralegals and seven attorneys, organised by business units and portfolios. For instance, one attorney-paralegal team is assigned to support Instagram and another combination of attorneys and paralegals manages the work related to the company’s augmented and virtual reality initiatives. “This model helps us develop close relationships with our business clients and provide clear points of contact for our cross-functional partners,” Johnston observes.

This then informs prosecution and enforcement efforts. For the former, she describes: “We strive for a balance between pragmatism and persistence. Having a deep understanding of our business allows us to focus on pushing the envelope where it will have the most impact, and having confidence in our team and the strength of our brands allows us to not waste resources on efforts that will not significantly advance our vision.”

Turning to enforcement, she identifies six factors that will set up trademark teams for success: know your business; know your clients; invest in your team; understand why you are doing this work and why it matters; focus on impact; and ruthlessly prioritise.

Finally, all of the above only works if you can draw on the meaningful support of peers and colleagues. Asked what she thinks makes Facebook’s team so successful, Johnston concludes: “It is easy to be enthusiastic when we have the privilege of supporting and guiding the passionate and brilliant teams at Facebook and some of the Internet’s strongest brands. My goal is to hire smart, energetic people who can work as a team and then to provide them the platform to be strategic and innovative.”


Other nominees:
  • Adobe Systems

  • Facebook

  • Hewlett Packard Enterprise

  • Rovio Entertainment

Unlock unlimited access to all WTR content