What aspects of your work do you enjoy the most, and why?
Having just celebrated 25 years at Venable, I have three answers. First, I am focusing more on helping others further their careers. It is rewarding to see colleagues grow into exceptional lawyers. Early in my career, I mentored a promising paralegal for 10 years. She graduated from law school summa cum laude and is now a successful in-house trademark attorney.
Second, I enjoy tough matters; finding an angle or leverage to push through an application, win a dispute or achieve a great settlement.
Third, I love being creative. Our Wellbrand naming service, where we create brands that clear a preliminary trademark search and avoid pitfalls (eg, lack of distinctiveness), has given me a perfect platform for this. A major non-profit organisation recently used it to help with its rebranding.
What steps is your firm taking to improve your hiring process to increase DEI in the workplace?
Venable’s leadership is committed to increasing and sustaining DEI by expanding efforts to integrate DEI across its business practices. Last year, we were awarded the Mansfield 5.0 Rule Certification, which focuses on increasing diversity in firm leadership roles.
Venable’s recruiting department set a goal to broaden our diversity pipeline when recruiting for entry-level positions mainly filled by our summer associate class. Last year, we hosted showcases for candidates to highlight our diverse lawyers in leadership. Over 700 students attended – we nearly doubled our traditional interview pipeline with prospective candidates from diverse student organisations.
We partnered with the Leadership Council on Legal Diversity (LCLD) to host eight LCLD scholars; several returned as first-year associates. In 2021, we also launched our 2L Diversity Fellowship programme. Venable was awarded LCLD’s Top Performer and Compass awards in 2022 for its commitment to DEI.
Trademark pendency has increased significantly in the United States. Have filing rates taken a hit, and what strategies have you developed to deal with this?
While pendency and lower filing rates have affected everything, we remain especially busy. We seem to be back to the early covid-19 era when clients were focused on enforcing existing rights. We are filing fewer applications, but we are doing more enforcement and deal work.
You have extensive experience working in China. What is your opinion on the USPTO’s attempts to crack down on fraudulent applications originating in China, and how could the office improve its efforts?
I recently received an e-mail saying, “I am a trademark freelancer, and frequently file trademark applications for clients on USPTO. I am writing to inquire about the possibility of retaining your services as a representing attorney to sign the applications.” This made me think of China. One problem remains: many are trying to game the system. The USPTO needs to figure out how to get one step ahead of bad actors, and there is no easy solution.
What are three pieces of advice for non-profits attempting to build and protect their IP portfolio?
First, non-profits fight about trademarks as much as – or more than – for-profit organisations. Gone are the days when they thought they should all just get along because they were “doing good”. Today, these organisations understand brand value and the need to enforce brands to keep them strong since it can have a financial impact.
Second, these organisations often say they do “certification”. In many cases, however, this is individual credentialing (eg, Andrew Price, PMP) and not true certification under the trademark term of art.
Third, non-profit organisations should act early in protecting brands and pick ones that are distinctive. They should no longer rely on descriptive names and bet on waiting to acquire distinctiveness over time. When they rebrand, they should think creatively and strategically to pick names that are inherently distinctive and clear and file for them before use.
Andrew Price is a globally recognised IP attorney who helps clients to establish, protect and profit from their brands worldwide. He manages large portfolios of trademarks, exploits IP opportunities, and controls crisis situations for clients of all sizes – from start-ups and celebrities, to non-profits and multinational corporations. Mr Price focuses on brand strategy, as well as clearing, registering, licensing, enforcing and defending all types of trademarks worldwide. He is also a creator of the firm’s Wellbrand naming solutions service.