Michael G Kelber

What has been your most memorable case, and why?

My most memorable case centred on a distinctive-looking paintball. In a first case, nearly 20 years ago, the client had just acquired the rights to this unique paintball, but had no registration for the trade dress. Following a favourable ruling on our preliminary injunction motion, the case settled and we immediately filed to register the trade dress. Fifteen years later, after the trade dress was registered and incontestable, two new competitors - one on each US coast - infringed the trade dress. With a registration in hand, we received favourable preliminary injunction rulings in both cases. Not only was the litigation successful, but it showed how important strategic planning and registration are for protecting our clients’ rights.

With clients in a wide range of industries, including consumer electronics, restaurants, software, entertainment and a variety of technology-focused industries, what are the three key skills that brand owners look for in a top-level IP firm?

Regardless of the industry, IP firms must possess the skills that translate into delivering top-notch client service. Clients expect clear, proactive communication and practical, actionable advice. To achieve this requires, first, a keen awareness of the client’s marketplace to identify problems and mitigate risks on the horizon. Second, it requires the ability to translate complex and often uncertain legal risks into business-oriented recommendations and strategies. Third, clients expect options that are tailored to their specific business strategies and objectives.

Which emerging trends or technologies are having the biggest impact on your clients’ IP strategies?

The past year introduced an explosion of Blockchain-related technologies, and with them emerged many threats to, and opportunities for, IP ownership. Blockchain has enabled the development of NFTs, cryptocurrency and smart contracts, which have created novel IP legal issues. As part of this explosion, businesses are looking to employ the promise of Web 3.0 and the metaverse. IP clients in the tech space are developing new tools, and retailers are lining up to leverage them for their businesses and marketing. As a result, we are spending a lot of time helping our clients, on the one hand, to implement these technologies to enhance their brands and sales, and on the other hand, to thwart others who are threatening their intellectual property in new ways.

The USPTO has recently been at war with rule-breaking trademark practitioners. Could the USPTO’s actions have an impact on US trademark practitioners in general, as well as on clients?

I would stop short of describing the uptick in disciplinary actions against trademark practitioners or their clients as a “war on practitioners”, which seems somewhat premature. The actions appear to follow from the agency’s efforts to stem the flood of shady trademark applications. That effort began when the USPTO rolled out stricter rules that required foreign applicants to engage US representatives for their trademark applications, and it also started auditing specimens to ensure that applications are legitimate and filed in good faith. These actions have been positive as there has been a huge uptick in foreign applications that are filed to infringe or otherwise ‘squat’ on brand owners’ rights. This nefarious activity has recently resulted in increased prosecution and enforcement costs for legitimate trademark owners, so the USPTO’s enforcement efforts have, thus far, been a positive for brand owners.

NFTs are currently one of the most talked about - but least understood - assets. Which novel legal issues does the rise of NFTs create, and how can brand owners tackle them?

Our firm is involved in several significant cases that grapple with the line between IP rights and artistic freedom of speech. Copyrighted and trademarked materials are being used to create NFTs, often without the permission of the rights owners, which prompts battles over when it is appropriate for a fan or artist to use these rights and how to draw the lines. We are re-evaluating the tension between creativity and innovation and the public’s right to use another’s work. These problems echo the use by Andy Warhol in his famous series of paintings of Campbell’s soup cans. The frenzy over NFTs is prompting rights owners to protect themselves, lest they lose control over their brands. Hopefully, more clarity will be established as cases proceed through the courts.

Michael G Kelber

Partner and co-chair, IP practice group
[email protected]

Michael G Kelber, co-chair of Neal Gerber Eisenberg’s IP practice group and a member of its Executive Committee, helps enterprises and entrepreneurs strategically develop and protect extensive global IP portfolios. He has prepared and prosecuted thousands of successful US and foreign trademark and patent applications and has served as lead counsel in trials before state and federal courts throughout the country. He represents clients in all phases of complex trademark, copyright and patent disputes.

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