Ann Dunn Wessberg
In your practice at Fredrikson and Byron, you have a strong focus on protecting brands in the retail and consumer goods space. Can you share some of the most eye-catching developments in this space in the last 12 months and what makes them stand out?
I think the most interesting developments in this space are the ways that brands are trying to protect their marks in the metaverse. Many brands submit trademark applications to protect their brands in ‘virtual worlds’, while others simply treat the metaverse as a zone of natural expansion. So far, in disputes, brands have not required special registrations to enforce a brand in the metaverse, but it is still unsettled and hard to determine how far a brand’s registration in the real world will stretch into the metaverse. While this strays more toward copyright, eye-catching developments are taking place with the use of AI to create saleable art products and the extent to which – and to whom – liability will flow if there is infringement. Will the creators of AI-generating platforms or the creators that use them be liable, or will the end use be considered fair use?
If you could change three things about prosecuting trademarks before the USPTO, especially given the current backlog, what would they be and do you think they are likely to happen?
The first thing has already been done: to decrease the time to respond to office actions. Second, I think foreign applications into the United States need to show actual use; many marks are not actually used in the country and are gumming up the register and preventing registration and actual use by others. The third is more of a tip than a change: for practitioners and brand owners, I would advise filing all of one’s applications for the year in a six to eight month period. While the USPTO examines applications with a ‘first in, first out’ strategy, there is an exception. All pending applications in the name of the same applicant are typically assigned to the same examining attorney for examination at the same time, regardless of the respective application’s filing date (and so long as the application has been processed or uploaded to the electronic system by the time the earliest-filed application is assigned). So, consolidate your filings for one client as much as possible.
You frequently speak on trademark and copyright issues for the International Trademark Association (INTA). How has your involvement with the organisation and its network influenced your view of brand protection?
I have learned a great deal through my involvement with INTA – especially in my early years – through its programming. As my involvement has matured, I have gained good friends and excellent colleagues with whom I enjoy working with mutual clients and collaborating on committees.
Many are looking to the United States to set standards for platform liability for infringing and counterfeit goods. What impact do you expect the country’s actions to have in this area in the next year?
I believe that large platforms need to be held more accountable for the fortunes that they gain on infringement and counterfeiting. The large platforms are in the best position to help stop the flow of such goods as they gain the most from their continued availability. They also have access to the information to shut down such infringing and counterfeiting use.
What is your greatest professional achievement to date?
My greatest professional achievement to date was recruiting and building an incredible trademark team at Target. We established great workflows and relationships with the business, bringing us in early as partners. We moved away from the ‘Department of No’ and implemented a policy of ‘Getting to Yes’ when we could by making suggestions that could allow the business to do most of what they wanted. We also hired and empowered incredible people working at their highest potential, doing engaging and enriching work. The team has done a brilliant job of carrying on that tradition.
That is also where I developed easy-to-understand clearance reports to recognise infringement risks and whether or not they were manageable – similar to the ones I use with clients today. Understanding how limited in-house counsel time and resources are, I also developed an easy-to-implement plan to clear, protect, watch and enforce trademarks, which I also now use with my clients today.
Ann Dunn Wessberg
Ann Dunn Wessberg has served as a trademark and copyright attorney in private practice and in-house for over 25 years, and is uniquely familiar with the business challenges in-house counsel face. She tailors her solutions to busy executives who need to navigate risk, providing advice and counselling on trademark and copyright matters with a Fortune 500-style brand plan she can resize to any company to select, protect, defend and enforce trademarks to build strong brands.