Taft Stettinius & Hollister LLP - USA
How have you seen day-to-day trademark work change over the course of your career?
The advent of the Internet not only created new substantive issues, such as cybersquatting and the online sale of fakes, it also created ‘internet time’. When I first started practice, email was new, faxes were ubiquitous and everyone’s expectations regarding turnaround were very different. Since infringements occur on ‘internet time’, it seems only fitting that those of us who practise in this space have adapted to a faster pace of work.
You enjoy a global reputation in domain name-related matters. What are the biggest challenges that brand owners face protecting their IP rights in the digital space and how can these be overcome?
Innovation is the biggest challenge facing brand owners online. Each day seems to bring new domain names, new alternative root domain names, dark web spaces, alternative currency tied to blockchain options, new product sales platforms and new social media platforms. It seems that by the time brand owners get one thing figured out, in rolls the next big thing. Brands must adapt or be eaten. I hope that my career stands for the idea of operating at the leading edge of marketplace innovation, learning it, adjusting strategy and ultimately writing about it and teaching those coming up behind me.
What is the secret to building long-lasting relationships with clients?
Try your best to only work with people you like. If possible, try your best to only work with people you love. When you become friends with your clients you find that there is no mountain too high for you to climb nor any river too deep for you to cross in order to make their life easier. You also find that beloved clients stick with you. From genuine care flows long-term client relationships and long-term happiness in the practice of law. I do not know of any other, or any better, formula.
You played a critical role in ICANN’s adoption of Specification 13. One interesting debate surrounding ‘.brands’ has centred on companies that use terms with geographic connotations (eg, Patagonia and Amazon). What are the key considerations for brand owners that may face this issue?
I predict that ‘.brand’ TLDs (or ‘.brands’ as they are known in the industry) will become an important method for brands to deliver their goods and services in a more secure way. Only the brand owner, its affiliates and its licensees may have a domain name from a ‘.brand’ registry. Whether the brand owner is delivering services such as banking or airline reservations, clothing that the consumer digitally prints at home, autonomous cars that coordinate with large traffic networks or household appliances that connect to the Internet (and could burn down a house if hacked), brands will need secure communication methods in the immediate years ahead. However, ‘.brands’ are currently only available through ICANN and the ICANN culture is non-innovative and tilted towards the sale of second-level domain names. There were some participants within the ICANN community that attempted to derail ‘.brands’ entirely once they realised that they could not make money on the sale of second-level domain names. ICANN also draws participants from all over the world, some of which do not hold an appreciation for free speech. As a result, any brand that is considering applying for a ‘.brand’ should begin actively participating in the ICANN processes, either directly or through counsel. Brands should not assume that the ICANN community will get it right. In fact, assume the opposite. Engagement is the only way to ensure that the Internet remains useful and safe for the consumers that trademarks are meant to protect.
How do you expect recent global events to affect the brand protection landscape in the next few years?
The recent pandemic will accelerate what was already a big shift toward remote working. It is hard to imagine that most of Generation X and younger individuals will want to revert back to the commuter slog that consumed large parts of our day. Online workers will need online platforms to accomplish sophisticated tasks. New platforms bring new brands and more possibilities for abuse by unscrupulous third parties. Brand protection strategies will continue to ramp up to meet these challenges. Brands will be more and more resource-challenged. Advice will need to be even more concise and practical.
Paul McGrady represents large brands and SMEs in the United States and around the world, providing legal expertise in the adoption, licensing, prosecution and enforcement of trademarks. He has a global reputation in matters related to domain name disputes, domain name transactions, ICANN policy development, the creation of TLDs and online copyright and brand identity disputes. He also practices in, and is the author of books related to, the unique niche of enforcement, transactions and counselling in IP and employment law aspects of social media.