Which aspects of your work do you enjoy most and why?
I enjoy being a true business partner – not just a hired gun. Sometimes I think that I work in-house for multiple companies and get great satisfaction from helping clients to make business decisions involving their brands. By learning about my clients’ businesses, which span numerous industries, I have become trusted to assist in making branding business decisions. This includes helping them to create trademarks, market brands, develop packaging, write promotional materials and create trade dress. I also enjoy procuring and protecting their intellectual property, but assisting them in making business decisions and watching those decisions come to fruition is the most gratifying. When I am in a store with a big smile on my face, it is usually because I have seen a trademark on the shelf that I helped to develop and protect.
What are some of the biggest challenges facing your clients, and how do you overcome these?
By far, online threats are the biggest challenge for my clients – defining them, finding them and combatting them. These are constantly evolving and can range from domain name issues and impersonating a brand owner’s website or social media page to using the same or a similar trademark in advertising to selling counterfeit or infringing goods. Clients do not always understand that trademarks and trademark law are territorial – even in today’s global economy. They struggle with developing an online enforcement strategy that is effective, flexible and cost appropriate. To assist with this, I develop a customised and proactive enforcement plan that satisfies their business goals and protects their IP rights, while balancing practical and monetary considerations. This includes: using third-party vendors to monitor and identify threats; evaluating threats on a case-by-case basis; educating and training clients and their employees; establishing realistic enforcement goals; implementing the plan; and gauging a measured response.
There is no one-size-fits-all solution when it comes to combatting online threats.
How can brand owners work with external parties such as e-commerce platforms and regulatory authorities to better protect their rights online?
Online threats, especially the sale of infringing or counterfeit goods, have many touch points from the time that the product is manufactured through to when it is delivered to the end consumer. These include suppliers, manufacturers, shippers, payment providers, online marketplaces and social media. At any of these points, a brand owner can stop the ultimate sale of the counterfeit or infringing goods. To do so, it must collaborate with as many resources as possible, including e-commerce platforms and government or regulatory authorities (eg, legislators, Customs and law enforcement). Only by working together with these third parties can brand owners make any real progress in stopping bad actors.
As more and more industries are affected by technological convergence, how do you expect the technology-related transactional landscape to evolve in the coming years?
Technological convergence presents opportunities for companies involving new and emerging sources of data. How companies use this data will create revenue opportunities, such as expanding existing lines of business, generating new businesses or developing new revenue streams. I expect that this convergence will increase significantly in the coming years, especially in new and traditional media and telecoms industries, which will lead to more regulation and oversight and will present digital privacy, data security and antitrust issues.
What effect will the Trademark Modernisation Act 2020 have on trademark owners looking to protect their rights in the United States?
The act is a game changer. IP owners seeking any type of preliminary or temporary injunction in court are now uniformly entitled to a presumption of irreparable harm upon a finding of infringement or success on the merits. Previously, many IP owners were not entitled to this presumption, depending on the jurisdiction, and proving irreparable harm was difficult. Additionally, the act will allow IP owners to pursue two new ex parte post-registration proceedings: expungement and re-examination at the USPTO for non-use. These will be less costly and time consuming than the current inter partes proceedings. The act will also allow third-party IP owners to submit evidence directly to USPTO examiners for consideration during examination, in the hopes of convincing the examiner to issue a refusal. This should save trademark owners time and money if they do not have to oppose an application because the USPTO has refused registration. Enlisting a watch service has become even more critical, as IP owners can monitor pending applications for problematic trademarks and take action early.
Nicole K McLaughlin
Nicole K McLaughlin is a partner at Duane Morris, where she is chair of the trademark, copyright, entertainment and advertising practice group. She has extensive experience in all facets of domestic and international trademark enforcement, procurement and portfolio management, including clearance searches and opinions, online infringement, domain name and cybersquatting issues, IP licensing, product packaging and trade dress protection, and overall global strategic branding.