Keith Medansky

What aspects of your work do you enjoy the most, and why?

Trademark law is a wonderful puzzle with intricate twists and turns that differ from country to country. The law is always evolving and adapting to new technologies and ways to market products. I have practised long enough to have seen the application of trademark law to websites and domain names in the early 1990s through to the development of AI and Web 3.0 today.

I am fortunate to collaborate daily with a team of sophisticated clients and brilliant, thoughtful, engaging colleagues and be at a firm that enables me to work closely with talented people from every part of the world.

If you could make one change to the US regime on GIs, what would it be and do you think that it is likely to happen?

Speaking only for myself, I think the current system of relying on trademark law and certification marks and collective marks is the best way to assure consistency with basic trademark law principles and accommodate fair-use concerns. Personally, I am sceptical of sui generis protection for GIs in the United States. That said, I suggest easing the requirements to prove that a designation serving as one is distinctive.

Trademark pendency times at the USPTO are increasing substantially. What steps are you taking to approach this, and what advice are you giving to clients hoping to file?

Given the delays, it is important to manage client expectations. It is also critical to conduct thorough availability searches and anticipate any grounds that may give rise to the refusal of an application. Finding out about a problematic reference months after filing an application may mean it is too late to easily make changes. In addition, I recommend that applicants carefully consider whether it is wise to use the Madrid System to file priority applications when US application timelines can stretch beyond eight months. It is better to have at least received a first office action before deciding whether to use the Madrid System for a priority application.

You are recognised for your wealth of experience in trademark litigation. What are your top tips for keeping litigation costs down in the current economic climate, especially as more people are taking cases to court?

It is vital to carefully evaluate your case at inception and throughout the process so that strategy and expectations can be adjusted. Resources invested at the start of a case can often result in a faster and cheaper resolution. Likewise, there is no shame in settling a case. Never let pride or the excitement of the fight get in the way of reaching a good resolution.

For lawyers, the most important recommendations are careful budgeting and clear communication with clients as cases evolve. I am also a big believer in small litigation teams with the right person assigned to the right task. Where possible, leverage technology to simplify discovery and organising and managing cases.

You were recently honoured by the Kaplan Educational Foundation as a Champion of Equity and Inclusion. In your view, what could the industry be doing to improve opportunities, hiring processes and diversity?

I strongly believe that cultivating lifetime relationships is the best way to develop talent, including diverse talent. Partners need to take a real interest in their associates and their careers. There is more to training a lawyer than just teaching the mechanics of how to take a deposition or draft an agreement. A partner needs to model ways to develop and serve clients holistically, including how to deliver advice and nurture client relationships by including junior lawyers in meetings, pitches and project teams. As lawyers become more senior, partners should include them in business strategy discussions. There is no substitute for showing a genuine interest in our colleagues’ careers and lives. Overall, in my opinion, taking the time to build meaningful and enriching long-term relationships that span careers is the best way to improve diversity in our profession.

Keith Medansky

Partner and Co-chair, Chicago’s IP Practice
[email protected]

With over 30 years of experience and ranked in the elite by multiple publications, Keith Medansky is truly a luminary of the trademark field. He has built and managed global brand protection programmes for some of the world’s largest businesses. Mr Medansky is routinely called upon to assist clients in their most complex transactional and dispute matters and is looked to as a trusted advisor in the areas of trademarks, copyrights and advertising law.

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