Brooks Kushman PC - USA
Which aspects of your work do you enjoy most and why?
I most enjoy brainstorming with clients and colleagues to come up with creative strategies for the difficult trademark issues that our clientele encounter and to find a viable path to avoid or overcome these. The best outcomes are when solutions are not obvious but end up being relatively simple and effective. These moments combine the best of what we do, using both creative and legal thinking to achieve business objectives.
How do you work with clients to establish the most cost-effective solution for their IP needs?
There are a few key points that reflect cost-effective IP solutions, which support service users’ budgets. First, use a proper level of professional staff; some of the most efficient and stellar services that we provide come from our extensive and knowledgeable trademark paralegal group. Second, team up with a network of law firms outside the United States that are like-minded and attentive to cost-sensitive budgets and responsiveness. Third, prepare foundational templates for repeat actions, without skimping on quality or detail. This – along with other measures – has served our patrons well.
How can brand owners work with external parties such as online platforms and regulatory authorities to clamp down on counterfeiting?
There is a plethora of resources available today for brand owners to address global brand protection needs. Platforms that aid in the take down of counterfeit goods on online marketplaces and websites can be handled in-house by brand owners or in conjunction with outside trademark counsel. Initially, these services require a good amount of participation to identify counterfeit versus genuine products but over time these platforms generate more targeted results, meaning that brand owners spend less time reviewing potential counterfeit finds. Another element to building a successful brand protection programme is to record trademark registrations with US Customs and Border Protection authorities. These authorities welcome educational programmes and brand protection guides to help them more readily identify counterfeit goods. The information is shared nationally on the customs network, which increases the chance that counterfeit goods will be seized. A relationship with these authorities is invaluable and can lead to government-initiated criminal enforcement – an excellent deterrent. Brand owners should also consider potential engagement with Amazon programmes and litigation tactics to enforce against numerous defendants at once.
Which technologies/technological tools do you rely on most for your day-to-day role?
I rely heavily on global trademark search platforms with access to most of the trademark offices around the world. These are extremely useful, not only for preliminary clearance, but also to get an overview of the global landscape for a particular mark or owner. Access to global trademark databases through a specialised platform helps to assess a patron’s position and ability to enforce in relation to other trademark owners. This type of platform can also be used as a tool for benchmarking purposes and to get a sense of whether marks are inherently registerable. Of course, the Internet provides an invaluable resource for searching, investigating, converting currency and obtaining trademark filing estimates – all of which we are called on to do regularly.
Which recent US cases do you expect to have the biggest long-term impact on your clients’ IP strategies?
There were several interesting Supreme Court decisions in 2020, and they may each have an impact on various clients at some point in their filing and enforcement strategies (eg, the ability to register a ‘generic.com’ domain name as a trademark; recovering profits from a trademark infringer without proving intent; and circumstances under which colour marks can be treated as inherently distinctive without showing acquired distinctiveness). However, it was ultimately not a court decision that had a significant impact on the trademark world. After decades of litigation and a decision in favour of the Washington Redskins in the US District Court for the District of Columbia, the Washington Redskins announced that it would drop the team name and logo. Although Harjo did not win the legal battle , the court of popular opinion and pressure from sponsors won at the end of the day. Brand owners must consider how trademarks will be perceived in society and even if a registration is possible, it is more important to avoid offending a specific group of people.
Co-Chair Trademarks, Shareholder
Robyn Lederman has over 25 years of experience as trademark counsel. She manages global trademark portfolios for multinational brands and works with companies to develop strategies to build value and strength in their trademark portfolios. Ms Lederman spent nearly a decade practising law overseas and is highly effective in protecting and enforcing her clients’ trademark rights worldwide. She is active in her community and spends time guiding entrepreneurs and start-ups on the practical impact of trademark law.