20 Aug
2021

Legends of the trademark industry: insights from past WTR Lifetime Achievement winners

Continuing our look back at 15 years of the WTR Industry Awards, today we speak with three past winners of the prestigious Lifetime Achievement Award to garner insights into the evolution of the industry and upcoming challenges for trademark practitioners.

Since 2008, 13 of the trademark industry's most well-respected figures have been lauded with the Lifetime Achievement Award at the WTR Industry Awards. As a title, we have felt that it is important to recognise the personalities that have shaped the industry and provided support to countless other professionals. We have also been keen to learn from them and, to that end, today we are lucky enough to have fresh insights from three of the past winners: Dee Ann Weldon-Wilson, former senior counsel at ExxonMobil Corporation, INTA president and chair of the USPTO’s Trademark Public Advisory Committee, Rhonda Steele, former senior properties manager at Mars and INTA president, and Barbara Kolsun, professor of practice and director of the FAME Programme at Cardozo Law School.

What is your recollection of the WTR awards ceremony at which you won the award?

Rhonda Steele (RS): First of all, I was completely humbled to have even been considered for such a prestigious award. Then I thought, well I’m still quite young, so is someone trying to tell me something?! Seriously, though, I remember receiving the award from Dee Ann Weldon-Wilson – also a previous INTA president and someone who I had worked closely with for many years – and thinking I couldn’t be more grateful. As I looked out at the other attendees before making a few remarks I just couldn’t believe the esteemed company in which I was standing. There were many familiar faces and many new ones but all dedicated to the advancement of trademark-related issues around the globe and across an amazing number of companies involved in a diverse range of industries. As I made my comments the word 'lucky' resonated for me. Above all, I was lucky to have the most amazing team behind me who had shouldered a significant proportion of my role as I had worked my way up and through the leadership at INTA to be its president. I will be eternally grateful to those people, many of whom I still keep in touch with even though I’m now retired!

Dee Ann Weldon-Wilson (DAWW): I was so honoured to be awarded the first WTR Lifetime Achievement Award. Held on a bright sunny day in a beautiful setting in Berlin, the ceremony was in a room filled with experienced and accomplished professionals. It was a great experience to share thoughts and ideas with such an esteemed group of professionals.

Barbara Kolsun (BK): I was very honoured to receive the Lifetime Achievement Award since so much of my career has been in the fashion world and this award reflected recognition for this important industry. I remember the award night very well since I was surrounded by many close friends and colleagues from my years in practice both at law firms and fashion companies. Since receiving that award, I have co-edited my fourth book on fashion law, Carolina Academic Press's The Business and Law of Fashion and Retail, and I have continued to teach fashion law at Cardozo Law School and run our FAME (fashion, arts. media and entertainment) department, which I co-founded. The programme focuses on teaching lawyers how to counsel creative companies and individuals. Needless to say, trademark law is a huge part of my curriculum and book.

Looking back on your career, what do you consider the biggest development in the trademark space, and why?

DAWW: The continuing trend toward internationalisation in trademarks and branding. This trend has inspired changes in the laws of various countries and has caused professionals in all countries to reconsider branding and protection opportunities and strategies. Technological developments continue to evolve and present interesting challenges, but particularly against the background of internationalisation.

BK: The biggest development in the trademark space in my career has been the importance of the protection that trademarks offer fashion brands both in the United States (where copyright protection is minimal and where we have no separate design protection like the European Union has) and abroad. In addition, trademark protection of counterfeits especially in places like China is crucial in this global industry. The issue of eponymous brands (ie, designers using their own names as brand names) has also become important with respect to advising clients who wish to do the same and there is much case law around this.

RS: During my time, I think the biggest development in the trademark space was the protection afforded in some jurisdictions to non-traditional trademarks such as colour, shape, sound and smell. Mars had invested heavily in associating particular colours with its brands and the fact that there was a new avenue to try to protect that investment was a huge advantage. I remember working with Mars’ external Chinese counsel at the time (Rouse) to spearhead a delegation to try to amend the Trademark Law there in order to allow for the protection of colours given that, like many other companies, protecting brands from significant look-alike activity was proving challenging.

The role of brands as social actors has become a hot topic over the past 18 months. To what extent do you think that this is a permanent shift, and what role should trademark professionals play in that conversion?

RS: This one’s not so easy for me to answer as I have been out of the field for six years now. If I think back to some of the conversations that we were starting to have back then and interlace that with my perceptions as a consumer, I do believe that this is a permanent shift. I know that I am more discerning when I’m choosing brands for my own personal use and will lean towards those that acknowledge the impact they are having in society, are transparent about that impact and are working – either independently or with others who have more knowledge and expertise – to reduce any negative impact. I think that trademark professionals have a responsibility to ensure that any rights are appropriately obtained and enforced and that there’s no overreach, particularly when it comes to local culture, traditional knowledge and indigenous history and heritage.

DAWW: Brands and trademark owners have become recognised as social actors as social issues are integrated into more aspects of our lives and actions. Issues should be considered on a regular basis, both in a broader sense and in specific brand considerations such as how third-party use of abandoned marks continues to reflect on your brand, adapting brand use as social issues shift and continuing to assure that brands and marks reflect company values.

Looking ahead, what do you see as the biggest challenge that the trademark community will face in the next five years? 

DAWW: As technology evolves and is broadly accessible, there is an increased ease in incorporating other’s intellectual property into one’s own works. Continuing to redefine the line of what is a compliment, what is acceptable and what is appropriate will provide challenges and opportunities in defining relationships between fans, appropriate background use and allowed social commentary and artistic licence, and appropriate IP protection.

BK: Counterfeiting in the world of online shopping is still a huge issue. Companies as reputable as Amazon are still markets for counterfeits and a challenge for fashion brands.

RS: Based on what the world has been going through over the last 18 months I think that one of the biggest challenges will be budget and ensuring funding for ongoing protection efforts. This would be across both acquisitions of rights and enforcement of rights. Online enforcement will be particularly challenging given the significant increase in the number of people shopping from home (even I’m doing that now!). Budget challenges have always been an issue but relating this back to brand value was usually helpful.

On top of that, another issue that I was starting to grapple with before I retired was relevance. To explain: a lot of the enforcement work that I managed was in China (surprise, surprise!). When infringers copied a pack design that consisted of a collection of different elements (eg, brand name, colour scheme and logo design) they usually chose a name that was completely different, so no infringement of the word marks registered. Even though they may have copied the logo, if the word was different, trying to get a determination of confusion was hard because the words themselves were distinguishable. As colours in and of themselves aren’t really protectable in most emerging jurisdictions, there was also no protection and thus no infringement. Combine all that with the absence of any type of unfair competition or passing-off doctrines and I was finding that in more and more instances I simply couldn’t use the portfolio of registered rights I had because they weren’t being infringed. I therefore started to question how relevant registered rights were! That’s probably a bit far reaching but it was starting to make me rethink how much to invest in registration. It was this type of thinking that saw the diversion of some funds into the type of delegations that I mentioned above. More long term versus short term.

What advice would you give those who are embarking on a career in trademarks?

RS: Go for it! It’s such an interesting area of the law and has so many different facets to it. There’s the traditional protection and enforcement avenues. Then you’ve got the challenges of online and social media. Then there’s commercialisation aspects such as licensing, which brings in commercial contract issues. And then there are emerging and new areas such as AI. I used to say that you never knew each day what would come across your desk and that was true throughout my career. It is a wonderful opportunity to use so many legal skills.

DAWW: People who are starting their career in the trademark field may anticipate a career filled with fulfilment, support and opportunities. The trademark bar has been – and continues to be – known for its helpful supportive professionals who treat one another with dignity. The field is filled with exciting challenges and requires creative thinking and teamwork.

WTR Lifetime Achievement Award winners to date:

  • 2020 – Mary Boney Denison
  • 2019 – Jack Chang
  • 2018 – J Thomas McCarthy
  • 2017 – Anne Gundelfinger
  • 2016 – Frederick Mostert
  • 2015 – Barbara Kolsun
  • 2014 – Miles Alexander
  • 2013 – Kimbley L Muller
  • 2012 – Alan Drewsen
  • 2011 – Jerome Gilson
  • 2010 – Alexander von Mühlendahl
  • 2009 – Rhonda Steele
  • 2008 – Dee Ann Weldon-Wilson

Tim Lince

Author | Special Projects Editor

[email protected]

Tim Lince