Andrew D Price

You have won considerable acclaim for your handling of IP crises – can you tell us about a time where you and your team achieved a big win in this area?

On the heels of our first project for a major non-profit organisation, we handled the biggest trademark crisis in its history: its core brand was under threat by a party that it viewed as a licensee, when no written licence existed. As the dispute involved both brand and business issues, the client surprised us when it elected to handle the mediation alone. At mediation, it signed a ‘bare bones’ agreement that it thought resolved all issues; however, it made its position worse from a trademark law point of view. We stepped in to handle subsequent rounds of mediation and, just as litigation seemed inevitable, negotiated a new agreement that superseded the first one and made the other side a clear licensee retroactively. Separately, when another new client - a large mobile device maker - realised the US trademark application for its ‘crown jewel’ mark had been lingering at the USPTO for three-and-a-half years, we got the application approved in 13 business days. The client urgently needed to register the mark for use in enforcement in social media and e-commerce platforms.

Could you share what Venable is doing to future-proof itself?

Our group has a unique history that has allowed us to continually future-proof ourselves. When I joined Venable 24 years ago, the trademark team was tiny but strong, representing Walmart as it started to go global. We then merged with an IP boutique firm. To this day, we have maintained the business models of both firms: a classic fee-schedule-based model and a pure hourly billing model. In addition, years ago we led the industry in establishing a non-partnership path - trademark counsel - with high-end lawyers at more competitive rates, to complement our partnership path. Today, as the environment has changed and firms confront the ‘Great Resignation’, we need to ensure there is a clear way for our rising stars on the non-partnership path to move to the partnership path. This year we made someone who started on the non-partnership path a partner, and moved another person over to the partnership path from trademark counsel. In addition to developing talent and identifying future leaders, last year we launched our Wellbrand naming solutions service. This gives clients another way to use and think about us: as a team that can do brand name ideation at a lower cost than branding agencies and speed the branding process by avoiding the usual pitfalls that agencies miss.

The current legal services landscape is extremely competitive and high-quality legal work is now considered a minimum. How do you add value for clients in such an environment?

We distinguish ourselves by our creativity. For over two decades, we have emphasised a ‘creativity first’ approach to trademark prosecution, enforcement and licensing, developing our own unique strategies and techniques. Over the years, we have helped clients create workaround brand name options to navigate third-party problems. This is an exciting part of our Wellbrand naming solutions service, which is built to showcase our creativity.

Which recent decisions or legislative developments have had the biggest impact on IP strategy in the United States in the last five years?

Two developments are notable: the Trademark Modernisation Act, which provides a simple and low-cost way to seek expungement or re-examination of a US registration where there is questionable use of the mark in commerce; and the USPTO’s suspension of trademark attorneys connected with large numbers of improper filings. These changes are impactful as they help ensure the integrity of the US registration system, following a major uptick in the number of rogue US filings from applicants in China and other foreign countries. Attorneys will now think twice when they file documents with the USPTO, particularly specimens of use.

As we hopefully emerge from the pandemic, what changes to the industry and/or working practices do you think are here to stay?

Using paper in trademark prosecution is on the way out, even for attorneys like me who relied on paper until the pandemic. Meanwhile, people view the office differently; the key benefit now is seeing people in person, but this is not needed every day, so hybrid work is here to stay. There has also been increased focus on firm culture issues such as diversity and wellness, which also looks to be here to stay.

Andrew D Price

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Andrew Price, co-chair of Venable’s trademark prosecution and counselling group, is a globally recognised IP attorney who helps clients to establish, protect and profit from their brands worldwide. He manages large trademark portfolios, exploits IP opportunities and controls crisis situations for clients of all sizes – from start-ups and celebrities to non-profits and multinationals. Mr Price focuses on brand strategy, as well as clearing, registering, licensing, enforcing and defending all types of trademark worldwide. He is also a creator of the firm’s WellbrandTM naming solutions service.

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