Seed Intellectual Property Law Group LLP - USA
What led you to pursue a career in IP law and what has been the key to your success?
I was actually studying to become a tax attorney and an opportunity presented itself for me to join an IP boutique. I was not sure that I was qualified because it was my mistaken belief that only patent attorneys qualified. After discussions with attorneys at the firm, I realised I had an opportunity to specialise in trademark, copyright and IP litigation. I never looked back.
I have had many wonderful opportunities since then, allowing me to gain experience in private practice, in-house, leading a business and engaging in government affairs and policy development. These experiences led me to my current position as a partner and chair of the trademark practice at Seed IP Law Group, where I help clients navigate all types of trademark and related IP issues.
How did your in-house experience at Microsoft Corporation and Intel Corporation help you to hone long-lasting skills?
Working at companies like Microsoft and Intel provides invaluable experience. Having been a US-focused practitioner before joining Intel, the exposure there immediately expanded my experience globally. My move to Microsoft further expanded on that experience, allowing me to engage in policy development, strategic business engagements and government affairs relating to intellectual property. It is a rare opportunity to work for companies that are industry leaders with multiple famous brands, and having the wherewithal to develop, promote, protect and enforce those brands around the world.
These companies were also at the forefront of technological changes that affected the way people live and access information, and helped to facilitate legislative changes in virtually every region where they do business.
Gaining experience as an in-house counsel at these tech giants gave me business and legal tools that continue to help me differentiate myself in the profession. I am able to call on my experiences at those companies to strategically help Seed IP’s clients, big and small, as they face unique trademark challenges in today’s marketplace.
What would you say are the biggest differences in managing a trademark team in-house and in a law firm environment?
Managing a trademark team in-house is quite different to managing a practice area within a firm. In-house, the team needs to align with the company’s business needs. In large companies, there is a need to be highly sensitive to the resources allocated to the practice and to creatively structure the team to maximise coverage of the trademark practice to the key areas of interest to the company. This means that you constantly need to assess and reassess the number of attorneys, paralegals and other non-attorney team members in the department, as well as their roles and responsibilities. In some cases, there may be a need for certain members of the team to specialise, for instance, in US or international enforcement, or in operations. In other cases, you may need an attorney to be well versed in client-facing counselling while simultaneously managing a portion of the team. There may also be geographical needs, which often lead to managing a portion of the team remotely (eg, a regional lead in Europe, Asia and Latin America).
As the manager of an in-house trademark team, your responsibilities span from addressing the international trademark needs of the company to ensuring that the work-life balance of your team is appreciated and addressed.
In a law firm environment, trademark group management goals and challenges are quite different. The various attorneys that make up a firm’s practice have clients that differ in size, industry and risk tolerances, among other things. Also, Seed IP is US-based so the practitioners counsel primarily on US law and risk assessments. From a firm practice standpoint, we leverage each other’s experiences as we develop firm-wide best practices for the common areas of a trademark practice, but most attorneys manage their own practices and client engagements. Of course, having practitioners with in-house experience is helpful, as it guides our firm practices in helping to spot issues and understand the pressures unique to in-house practitioners.
A large part of your practice focuses on online issues, particularly internet policy and domain name strategy. What are the biggest challenges that brand owners face in the digital space and how can they better protect their rights from online infringement?
There are several big challenges online right now. There has been an explosion of covid-19-related scams and phishing schemes. Additionally, counterfeiting problems continue to exist on many major online marketplaces; top of mind are the difficulties in identifying bad actors in the domain name space since the implementation of the EU General Data Protection Regulation (GDPR). As a direct effect, domain name registrant data has effectively gone dark. Registries and registrars argue that knowing whether a domain name owner is a natural person and/or from Europe is beyond their capabilities, so they choose to redact all WHOIS information (ie, the registrant information). In the continuing battle against domain name infringement, cybersquatting, phishing, cybercrime and other domain name system abuse, the inability to quickly access registrant data makes it much more challenging to protect internet users against online fraudsters.
Internet policy initiatives to address these issues are being vigorously debated, but to date, very little relief is in sight. Meanwhile, because of the over-application of the GDPR by registries and registrars, the very law that was intended to protect the data privacy of EU citizens has instead served to preserve the anonymity of bad actors to the detriment of those citizens.
What are the key characteristics that clients look for in a top-level IP adviser?
Clients want concise, strategic IP advice that aligns with their business and strategic plans and recognises their comfort level with risk – all at a reasonable cost. If there is a substantial amount of work with a given client, IP advisers are often asked for creative billing arrangements that will be cost-effective for both sides and that provide predictability from month to month. Closely partnering with the client on both the substantive work and creative billing arrangements is highly valued.
How have client demands changed over the past 12 months and what impact has this had on your practice?
Client demands have changed dramatically in the face of the global pandemic. In some instances, Seed IP clients have diverted their primary businesses to manufacture products needed to battle covid-19 and, in turn, have halted much of the day-to-day IP work. In other instances, our clients have experienced an explosion in business due to increased demand for their products and services arising from the circumstances of the pandemic. Luckily, the impact on my practice has been nominal. In every case, we make a point to stay highly communicative and do whatever is needed to assist clients and team members through these strange times.
Technology law and online IP enforcement are rapidly evolving fields. How do you stay up to date with the latest industry developments while also ensuring a high-quality service for clients?
Indeed, these are rapidly evolving fields. To keep pace with developments, I stay active in industry organisations, organise and attend continuing education events directed to the latest developments in trademarks and internet policy, and follow several industry blogs. Seed IP attorneys regularly provide legal updates on case law and other client developments.
I am an active member of INTA and participate on the organisation’s internet committee. I regularly engage in internet policy efforts within the ICANN community and am an active member of ICANN’s Intellectual Property Constituency. These organisations focus largely on internet policy development and online issues and keep me apprised of cutting-edge legal and policy issues.
I am a regular speaker at industry events and annually co-host an advanced symposium on trademark law and its challenges, with a focus on the tensions created by technology in the trademark field. I co-founded this event with the executive director of the McCarthy Institute, Professor David Franklyn. In organising these events, we naturally seek out top experts in the field to participate on panels or give keynote speeches analysing and debating the most pressing issues in the trademark field.
You served multiple terms on the INTA board of directors and as a member of the INTA executive committee. Why is engagement with IP associations important for the professional development of trademark practitioners?
I am a huge proponent of INTA and the opportunities and services that it provides for brand owners, practitioners and service providers. INTA is the largest brand owner organisation in the world, providing a platform for engaging with and learning from practitioners worldwide, and tools for influencing global trademark laws and policies.
I started attending INTA in the mid-1990s to meet other trademark practitioners and learn about the industry through its educational programmes. Over the next two decades I came to realise the leadership and policy development opportunities that the organisation presented, as well as the collegial relationships that have evolved into close friendships.
When I was in-house at Intel and Microsoft, two companies with world-renowned brands, engaging with an organisation that strategically focused on brand owner rights was essential. INTA members faced similar issues and the opportunities for industry benchmarking was invaluable. Participating on the board, as an officer and on the executive committee was extremely rewarding and reinforced my support for the organisation and its objectives. I was honoured to participate at a leadership level and to help identify issues and provide direction for the organisation. I truly had my finger on the pulse of global trademark issues at the time and was in a position to help guide INTA as it sought to build stronger trademark laws, expand recognised trademark rights in various jurisdictions, engage with governments and intergovernmental organisations to further the causes of INTA’s brand owner members, engage with the media and work with brilliant trademark attorneys from around the world in furthering IP issues of importance to my clients.
With ICANN scheduled to review the UDRP this year, is there anything that you would like to change about the way that domain name disputes are decided?
The UDRP process has historically been a success story for trademark owners. I worry that any ICANN review process could result in some watering down of its effectiveness. I and others who are actively engaged in ICANN will certainly have lively discussions about the process.
The elephant in the room continues to be the lack of quick access to domain name registrant data since registrars and registries now redact that information. Any discussions aimed at improving rights protection mechanisms in this space must address the need to have access to accurate data for legitimate purposes, including dealing with trademark infringement and domain name system abuse.
What upcoming trends do you expect to see shaping the brand protection landscape in the next five years?
Much of my focus continues to be on the intersection of technology and trademarks, and I believe that the most pressing issues will remain those arising online. In these strange pandemic times, we are forced to adjust our practices to engage from afar, even with our firm colleagues. Zoom meetings and Microsoft Teams calls have been helpful; we all must learn to engage with these and other new online tools to continue to be effective. In such an environment, keeping the Internet safe from scams and attacks is more important than ever. We have our work cut out for us.
Russell C Pangborn
Russell Pangborn is a partner at Seed IP Law Group in Seattle WA. He specialises in trademarks and internet policy and is the chair of the firm’s trademark practice. He was previously global head of trademarks at Microsoft and a senior trademark attorney at Intel. Mr Pangborn served on the INTA board of directors and executive committee, and is now on the internet committee. He is also a member of ICANN’s Intellectual Property Constituency.