Ann Dunn Wessberg

How does Fredrikson & Byron promote diversity and inclusion, and why is it important to the firm

Inclusion and diversity are core values at Fredrikson & Byron. The expanded Inclusion & Diversity Team drives strategy for our Inclusion & Diversity Committee, the Board and the firm in general, and guides firm leaders in identifying and removing biases in firm policies and practices. We continue to promote education and dialogue on inclusion and anti-racism throughout the firm.

Before joining the firm, you were inhouse counsel for Target – what skills or experiences did you gain there that have helped you in your current role

I learned that in-house counsel have serious restrictions on their time, money and people resources. Their days are full of meetings, with little time to complete the commitments made during these. Their research tools and time are limited, so they often rely on outside counsel to help answer internal questions. So rapid response time by outside counsel is essential. I also learned that the usual responses that law firms often provide, such as search opinions, are too lengthy to be useful. In-house counsel need shorter, action-oriented responses. They cannot operate with delayed phone calls, lengthy e-mail responses and long lead times for work products.

You have developed a Fortune 50-style brand plan, how helpful have you found it in the course of your work

I have found it tremendously helpful to be able to apply what I learned in-house to assist in creating my brand plan. My first job is to become a trusted strategic partner. I begin by providing a complimentary brand audit to get to know the client and their portfolio, and advise of any holes in the portfolio, the need for a watch service or an expansion of it and suggestions regarding use. Throughout the relationship, I read legal updates for ideas from competing and complementary companies to advise on new approaches to managing the client’s portfolio or business. It is essential to provide a full service to companies of all sizes. I advise clients on how to select a strong, distinctive brand that meets with their risk profile, before creating necessary applications with sufficiently broad descriptions of goods and services, which are unlikely to rub up against similar marks. Next, I select the right-sized watch service for the key marks in the portfolio, and comb them promptly for only those that require action to bring essential matters to the client’s attention, before taking the correct strategic enforcement action for the context and client. Finally, I advise on proper use to avoid the client’s marks becoming generic and losing their ability to serve as trademarks.

You have worked in both private practice and in-house for 25 years; how has the trademark landscape changed in that time

The Federal Trademark Dilution Act of 1995 was brand new when I started practicing. The Internet was still relatively recent and domain name enforcement was in its infancy. It took until 1999 for the Uniform Domain Name Dispute Resolution Policy to be adopted by ICANN. Likewise, the Anti-Cybersquatting Consumer Protection Act was enacted that same year in order to bring domain name disputes into litigation. Later, the United States joined the Madrid Protocol, providing a then new tool for international registrations. In copyrights, the Digital Millennium Copyright Act was enacted in 1998. Recently, under the Copyright Act, many copyrights have become eligible for termination, and we are dealing with increasing claims. Now we have the rise of the metaverse and NFTs and are discovering how much needs to be protected in advance for eventualities and how much standard trademark law will be able to deal with new ways of conducting business and recreating.

What are your top three tips for building a successful brand strategy

  • Select a strong, distinctive brand at the outset and search to ensure it is sufficiently unique and noninfringing, while meeting the client’s risk profile.
  • Apply for trademarks as soon as intent to use arises, drafting a careful but broad description of goods/services to avoid other known applications or registrations.
  • Select and monitor a watch service for infringing use and strategically enforce the brand.

Ann Dunn Wessberg

Shareholder
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Ann Dunn Wessberg is uniquely familiar with business challenges that in-house counsel face regarding pressures on people, time and money. She provides advice and counselling on trademark and copyright matters with a Fortune 50-style brand plan she can resize to any company to select, protect, defend and enforce trademarks in order to build strong brands. Ms Wessberg has also served as a trademark and copyright attorney in private practice and in-house for 25 years.

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