Jomarie B Fredericks

As you settle into your new role as president of INTA, what does effective leadership look like to you?

I think the most effective leaders lead by example. INTA gives each of us the opportunity to lead in our professions, personal lives and volunteer work. When I speak on behalf of INTA, I am cognisant of the fact that I represent the association and its membership. It is a responsibility that I take seriously and I keep it in mind whenever I appear on INTA’s behalf.

In your view, what could the industry be doing to improve opportunities, hiring processes and diversity?

As part of its aim to build a better society through brands, INTA is working to advance DEI within the IP community. The DEI Presidential Report has now been published. It analyses INTA’s current status and footprint in the DEI space and provides recommendations on how we might improve and expand efforts and outreach. As a result, INTA established its DEI Council and now has a DEI officer. INTA is committed to greater representation and advancement of women in intellectual property and we are working with our international community to foster more inclusion, connections and opportunities for women worldwide. Moreover, we have our Women’s LeadershIP initiative, which champions the development of strong leadership skills for all women in the IP field to empower them to advance their careers.

As in-house counsel for a large international company, what are some of the biggest challenges that Rotary International faces in overseas markets, and how do you overcome these?

Rotary has been international since the very early 1900s. Striving to be a truly global association has always been a priority, since we have a presence in over 200 countries and territories, even though our headquarters is based in the United States. It helps that we have more than eight international offices, so outreach to our membership can be done on a local basis. Through our licensing programme, we have licensees across the world helping to provide quality products for our membership with accurate brand presentations. However, with 40,000 member clubs and over 1.4 million individual members, ensuring that the guidelines are disseminated and communicated effectively is always a challenge. We are fortunate in that we have experienced staff working with volunteer teams worldwide that help in this effort and, of course, our local counsel who are our partners in these efforts.

How do you envisage brand portfolio management practices changing in the next five years, especially in the digital domain?

Consumers are increasingly embracing the online space and the pandemic accelerated that movement. Traditional forms of brand protection may no longer meet companies’ needs as they try to keep up with consumer trends. Brand loyalties may be shorter lived. Trademark registration, which can take one or two years to be accepted, stays in effect for 10 years and then can be renewed in the future so long as certain conditions are met, may no longer be the right model. What should future IP rights look like? Formal separation of patents, trademarks and copyrights may no longer give us the required protection and flexibility; we may need to be nimbler. As we look toward NFT protection and debate issues raised by AI-generated content, our practice may transform in just a few short years.

Your INTA Presidential Task Force is focusing on the relationship between intellectual property and media, and how the media reports on IP issues. What changes are you expecting to see in this space?

The Presidential Task Force is looking for ways to raise awareness about intellectual property and elevate it in the minds of consumers. We are starting with the media because it has a first line of communication to the public. Not all journalists have the luxury of specialising in a particular subject matter; the majority may be working on several stories covering several different topics on any given day and may have a limited amount of time to dig deep and learn the intricacies of any of those topics, including intellectual property. Finding ways to work with the media and produce materials that the media may find helpful is a priority. We are also exploring how to better and increasingly engage PR and marketing departments in this area. We could truly broaden our reach to the public if PR and marketing professionals were also helping us in these efforts.

Jomarie B Fredericks

Deputy General Counsel, Chief Intellectual Property and Brand Counsel
[email protected]

Jomarie Fredericks is deputy general counsel and chief IP and brand counsel for Rotary International. She is the 2023 president of INTA and an advisor to the USPTO. Her practice includes international trademark, copyright, licensing and corporate law. Ms Fredericks received a BA and MS from the University of Illinois at Urbana-Champaign, a JD from the Illinois Institute of Technology Chicago-Kent College of Law and an LLM from the University of Illinois Chicago Law School.

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