Russell Pangborn

You have worked in intellectual property for over 25 years, both in-house and in private practice, been actively involved with ICANN and recently navigated a global pandemic. What keeps you moving forward?

I truly enjoy being a trademark geek, and am blessed to have wonderful clients that continue to have trademark and internet policy needs. One of the wonderful benefits of the years I have practiced as an IP attorney is the many friendships I have developed with both domestic and international colleagues in the IP industry. I am also involved with several industry organisations, which gives me the opportunity to travel the world and engage with these fine colleagues in amazing places.

Which three characteristics would you say are necessary to create an outstanding IP practice?

First, just continuously meeting people and developing new clients with interesting issues; second, providing quality work product and truly understanding and representing the interests of my clients; and third, building and maintaining an effective team and work environment. I would like to emphasize the team aspect specifically, which for me, starts with the Seed IP firm culture and more precisely, the personal interactions and valuable contributions of the attorneys and trademark professionals in our trademark group. These are the folks I interact with on a daily basis and I truly appreciate the help they provide.

You have described yourself as a “tech junkie”. Are there any technologies or technological tools that emerged in the past year that you now regularly rely on?

I do consider myself a tech junkie, but my focus is more directed on how new technologies create tensions with trademark and related laws. In the last year, we have seen dramatically increased focus on the metaverse, decentralised domains have really taken off, as well as non-fungible tokens (NFTs) and the mainstreaming of cryptocurrencies. These areas, which often overlap, are creating new strains and opportunities for trademark attorneys. We have kept close tabs on the various strategies employed by brand owners for both using and protecting their important trademarks in these growing areas. It has been fascinating to watch and learn, and gratifying to work with the companies who are actively developing new tools and user experiences in these exciting new categories. I have had the pleasure to collaborate with clients creating hologram projectors, apps for experiencing augmented reality during events (in reality), crypto ATMs, virtual reality experiences, NFTs, and so much more.

I also experienced the darker technical side of the (bit)coin, which has the habit of increasing the complexity of enforcing trademarks in these new areas of technology. While IP owners, law enforcement and cybersecurity companies continue to grapple with dramatic increases in the abuse of domain name systems and other trademark misuse online, the sophistication of attacks and bad actors continues to evolve. I keep abreast of these new technologies so that I am able to advise our clients as they contemplate the protection of their important brands in a technologically evolving market.

A US senator recently submitted a proposal to restructure the IP administrative system in the country by creating a “unified, standalone and independent” IP agency. Do you think this is a good idea and is it likely to happen?

As a quick aside, I learned of this proposal through my regular reading of WTR. Senator Tom Tillis of North Carolina is proposing that the US Copyright Office be combined with the USPTO, creating a singular IP agency. At this juncture, it is simply a request for the formation of an advisory committee and a study. My initial take is that it appears to be a move for funding of the Copyright Office in a similar fashion as the USPTO. As we know, the USPTO funds itself through its filing fees, whereas the Copyright Office is supplemented by appropriations. A move like this would likely redirect the funding mechanism of the Copyright Office to the USPTO’s self-sustaining approach. I anticipate that it is unlikely to happen for several years, if at all. The US IP system, with all its warts, has been functioning effectively as is. Unless it is viewed as low-hanging fruit to get budget transferred away from appropriations, unifying the system as proposed is likely not the most pressing issue of the day.

Members of the ICANN community are currently seeking to increase the focus on the rapid rise of domains outside of ICANN’s control. What is the impact of such a phenomenon on trademark owners, and what can they do now to protect their rights?

Web3 or decentralised domains, also referred to as blockchain domains (eg, Handshake, Ethereum and Unstoppable), are domain names built on a public chain (ie, blockchain) that are neither regulated by ICANN, nor available in the traditional domain name system. Since they are not offered under the ICANN contracted party system, there is no obligation for them to abide by a UDRP that registrars selling domains in existing gTLDs must adhere to contractually. As such, it is very difficult for trademark owners to suitably address trademark misuse in this new digital frontier. Some have created reserve lists and established terms of use for the owners of well-known marks to acquire those domains during ‘sunrise periods’. However, this does not help the majority of trademark holders. Other NFT platforms have takedown processes that may be utilised, but overall, most options remain limited and costly.