What inspired you to pursue a career in trademark law, and what advice would you give to others considering a similar path?
Trademark law provides exposure to numerous fascinating issues beyond the law, such as brand development, marketing, monetisation, co-branding and, of course, economic globalisation. This allows trademark counsel to actively devise strategies for all facets of brand protection. My international background, knowledge of languages and cultural multilateralism propelled me towards international trademark law. From the outset, I was fortunate to work on broad portfolios of global brands in many industries, including haute couture, pharmaceuticals, beauty products, food and beverages, luxury goods and financial services. I recommend this very intellectually rewarding field to law students and practitioners early in their career.
Many believe that it is up to the courts and the industry to address platform liability for illegal content – in sharp contrast to the European legislative approach (the EU Digital Services Act). What are the strengths and weaknesses of a non-legislative approach?
The EU Digital Services Act and the Digital Market Act exemplify the civil law approach to codification as the primary tool for levelling the economic landscape and creating rules that the market players, such as social networks, must obey. Conversely, the common law system assigns the decisive role to the market players themselves. Instead of the more paternalistic approach of the civil law, which dictates what parties can do within the legislative framework, the common law affords much more leeway. Therefore, case law is the guiding light in the non-legislative common law system. However, that approach arguably has a downside – a lesser degree of certainty, particularly in countries with federalised court systems. In the United States, this creates contradicting decisions by circuit courts, with the ultimate decision-making falling to the Supreme Court. Disputes involving digital instruments (eg, cryptocurrencies) foster ongoing discussions about whether traditional trademark laws, legal theories, clauses and protections apply and which rights enjoy pre-eminence. If the separation of powers between the three branches is upheld and the rules are levelled, legislative and precedential approaches can coexist in globalised markets.
Your clients include foreign companies and individuals doing business in the United States and abroad seeking protection of their US and global interests. How do you adapt your strategy to take account of jurisdictional differences?
Market globalisation shrunk the gap between civil and common law systems. Jurisdictional differences, such as periods of non-use subjecting a registration to cancellation, usually do not materially alter the strategy for trademark protection and enforcement of rights. The peculiarity of US law can be at least partially neutralised for foreign rights owners by seeking protection on the country-of-origin registration basis or via the Madrid Protocol IR mechanism, forgoing the use requirement for registration purposes. Even in common law jurisdictions, trademark registration has advantages and is recommended for devising an effective strategy. Similarly, in civil law countries, use-based rights, without registration, play a bigger role today, as the number of ‘monochromatic’ purely registration (or purely use) jurisdictions is declining.
Trademark pendency has increased substantially at the USPTO recently. What advice are you giving to clients hoping to file?
Whether we attribute the drastically growing trademark pendency before the USPTO to the pandemic, decreasing federal government workforce or rampant fraud committed by opportunistic filers, it is something that applicants need to consider when devising their trademark protection approach. Trademark rights are created in the United States through use and in its absence, securing the early filing date may make or break a trademark conflict’s outcome. As the United States remains a globally attractive market, the sound answer in times of growing pendency is to clear the brand for availability and file soon.
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?
Under the US regime, meeting obligations under the TRIPS agreement, GIs can be protected as either trademarks, collective marks or certification marks, and under the common law doctrine of use without registration. There is no mechanism for registering GIs as such. As tempting as its US introduction may be, creating an extra layer of protection may not bring many benefits, instead burdening the government and, ultimately, taxpayers. The scope of protection not afforded to foreign GIs, which have already entered the public domain and become generic terms in the United States, is an interesting separate issue, as their protection may harm the economy.
Max Vern is a partner and head of the international department at Amster, Rothstein & Ebenstein. He has over 25 years of experience working with brand owners worldwide to secure and enforce their intellectual property. His focus is trademark rights and protecting global portfolios, encompassing domestic and international trademark protection strategy, management and rights monetisation. Mr Vern’s background, extensive experience and multilingual capabilities facilitate communication and understanding of IP owners’ needs.