What led you to a career in brand management and what advice would you offer anyone considering a similar path?
In the early 1990s I met with a recruiter who specialised in placing paralegals with law firms. I had some experience as a paralegal in a district attorney’s office, so I got a job managing patent and trademark litigation at an IP boutique. The litigation settled and I was asked to help with patent searches, proofreading trademark certificates and legalising documents. I was eventually asked to manage a small trademark portfolio. I loved trademark law so decided to go to law school part-time at American University. While there I took a paralegal job at the Pattishall McAuliff DC office. Pattishall hired me as an associate on graduation and one of the partners, Bob Sacoff, became my mentor. I credit him with helping me understand how to manage a global trademark portfolio and more.
I took a risk when I decided to leave the DC area to take a job at Walmart, but it was one of the best decisions I ever made, providing the foundation for my in-house career. Working at Walmart also enabled me to get a job at Tyco in Florida so that I could be closer to my mom, who at the time of my move needed major surgery. James Graham, former chief IP counsel at Tyco/JCI, is an amazing leader and we had a great team. My experience at Tyco provided me with the background I needed to get my dream job as chief trademark counsel at 3M.
What advice would I offer on a career path? Do not be afraid to take risks. Do not be afraid to move and experience different cultures. Embrace and learn to love change!
What metrics do you use to measure the success of a global trademark strategy?
I am very proud of the fantastic work that my team is doing to stop the sale and manufacture of counterfeit 3M respirators. With the help of the US Department of Homeland Security, Customs, outside counsel and other law enforcement and government agencies, we have now seized approximately 50 million counterfeit respirators globally. This is a result of significant raids in many countries throughout the world, removing over 37,000 listings on e-commerce and social media platforms, and taking down over 310 domain names used to sell counterfeit respirators or to commit fraud. I think our greatest success is our collaboration with other brand owners, government agencies, law enforcement, Customs and others. Success is not always measured in numbers but in how your efforts protect consumers and build relationships.
What are some of the biggest enforcement challenges that 3M faces in overseas markets, and how do you overcome these?
Brand owners need to understand the tools available to them globally. They also need to find ways to be more proactive and less reactive. Budgets are always a concern and it is impossible to go after every counterfeiter. Developing a global strategy – including collaboration with Customs, law enforcement and trade associations, as well as aggressive online and offline enforcement – is key to building a robust brand protection programme.
3M was involved in some of the first major trademark lawsuits to come out of the covid-19 pandemic. How can brand owners in general, and IP teams in particular, help to raise awareness about the dangers of counterfeiting?
There is a significant need to raise awareness about the dangers of counterfeiting; there is no such thing as a safe counterfeit. A friend of mine bought a counterfeit bicycle part through an e-commerce platform. It broke as he was biking on A1A in Florida. He was thrown off his bike but fortunately did not end up in traffic and only suffered minor injuries. People make the mistake of thinking that buying counterfeits does not hurt anyone. Yet even where a fake is not a respirator or a vaccine, such purchases fund a lot of illegal activity and cause harm.
How do you envisage brand portfolio management practices changing in the next five years, especially in the digital domain?
Brand owners will look at different options for portfolio management, including the use of enhanced technology, increased data analytics, alternative legal services providers, the use of platforms for online enforcement and enhanced domain name enforcement. Brand owners that do not have separate enforcement teams will also need to find ways to reduce the routine portfolio management tasks so that paralegals and attorneys can focus on strategies for enforcement and anti-counterfeiting.
Vice President and Chief Trademark Counsel
Colette Durst is vice president and chief trademark counsel at 3M where she manages a global team of trademark paralegals and attorneys. She also leads the 3M Covid-19 Global Brand Protection Team. Before joining 3M in October of 2018 Ms Durst was legal director – intellectual property at Johnson Controls and led the JCI trademark function with responsibility for managing all trademark-related activities globally for the company and its worldwide affiliates. Before the Tyco merger with JCI in 2016, she led the trademark function at Tyco on a global basis and prior to that she was assistant general counsel at Walmart Stores. Ms Durst started her legal career as a paralegal and then lawyer with the firm of Pattishall McAuliff. She received her JD from the Washington College of Law at the American University.