Ford had primarily outsourced all its trademark functions. What challenges have you faced bringing the trademark function back in-house – and how did you overcome them?
It has been an incredibly exciting time to be part of the Ford trademark team and re-imagine the way in which our team delivers trademark services to the business. The biggest challenge we have faced since I came on board was finding ways to embed our team into business conversations and build trust with our marketing clients. With the new model, we can embed ourselves more deeply with the clients, which means we can help influence decisions and identify risks at an earlier stage, and help shape branding decisions not only from a ‘risk of litigation’ standpoint but also from a ‘building strong brands’ standpoint. We shifted our advice to an intelligent risk-taking model that tries better to take into account legal and practical business risks to further build trust with clients and bring a business-enabling approach to their issues.
What metrics do you use to measure the success of a global branding strategy?
We look at a variety of metrics, but most trademark professionals will tell you that hard metrics, such as the number of searches, applications and oppositions, are not always the best markers of success. The soft successes are often worth celebrating and focusing on too:
- What type of rich discussions have you had with clients about trademark strength and properuse?
- When did taking a risk allow the business to accomplish a goal it would have otherwise missed?
- How many marketing campaigns or new names have gone out the door without receiving a cease-and-desist letter?
What is tricky about our work is that it is often on the front end of business activities. If those activities go off without a hitch, we have succeeded - but that success is difficult to measure. We cannot count all the third parties that did not sue us because of our robust clearance, or we cannot prove how many infringers did not emerge because of our trademark registrations. Our ultimate measure of success is knowing that we have helped our clients accomplish their marketing objectives while avoiding infringement claims or large amounts of brand interference by third parties.
As more and more industries are affected by technological convergence, how do you expect IP licensing and strategy in the auto sector to change over the coming years?
The automotive and mobility industry is already very much aligned with the technology industry. In some ways, the convergence has already happened. As trademark practitioners, that means we must think about our work in a new way and consider new competitive sets when conducting clearance and advising clients. We must also become better versed in new classes of goods and ensure that our wide team of outside counsel is also well versed in these areas. We must also stay curious and willing to learn new areas and challenge ourselves in fields that may not be comfortable, such as the metaverse.
What does effective IP leadership look like to you, and how should those at the top help build the next generation of brand professionals?
Effective IP leadership means first and foremost leading by example. You must be willing to get your hands dirty and help solve problems. You must be considerate of people’s professional and personal goals, and get to know what each person wants out of their career so you can help them achieve those goals. You must also be flexible. Gone are the days when once you reached a leadership position you got to set the rules of the road; leading means leading through collaboration and empathy. Effective IP leadership also means that you must consider the changing IP landscape and be willing and flexible to learn new technologies and new ways of doing things; you must always be adaptable to change.
Chief trademark counsel
Saron Sorkin has served as Ford’s chief trademark counsel since 2019. Prior to joining Ford, she served as global trademark counsel at Wm Wrigley Jr Company (now Mars Wrigley Confectionery). Ms Sorkin is passionate about the role that trademark distinctiveness plays in brand building and is committed to bringing a ‘getting to yes’ mindset to her counselling. She resides in Ann Arbor, Michigan, is married to Dan, a forensic psychologist, and is mom to Charlie (10) and Mia (8).