What is your greatest professional achievement to date?
I am proud to have helped establish, transform, grow and lead Baker Botts’s branding, advertising and copyright (BAC) team thanks to the legal expertise of my co-chair, Suzi Hengl, other leading attorneys including Julie Albert and a bench of dedicated lawyers, paralegals and staff. I am privileged to work with this diverse, unified and interdepartmental team. We work hard and leverage our interests and experience to partner with our clients and provide a holistic approach to counselling and representing their valuable brands. By tapping into available resources regardless of where our talent resides and considering the impact of related laws on client needs, our group devises practical solutions to resolve matters, answer questions and close deals - all on an accelerated, cost-effective basis.
Trademark times are increasing substantially at the USPTO. How are you managing this, and what advice are you giving to clients hoping to file?
While circumstances, including the pandemic, have impacted prosecution timing, the USPTO has been working to address delays, including shortening response times or requiring extension payments. Our BAC team closely monitors USPTO developments in real time and partners with clients to ensure timely reporting and responses to office actions. We recognise that identifications covering evolving goods and services, including AI, blockchain and NFT technology, can be challenging to incorporate into existing standard identifications. Therefore, we work with attorneys, business leadership and marketing team members to understand these innovations and facilitate strategies for related trademark prosecution. From IP clearance through litigation, we know our clients’ business and marketing strategies. We work together to develop and implement ideal solutions to build, manage and enforce an IP portfolio that best reflects and protects their goodwill.
You have won acclaim for your work with brands in your practice. How are you handling the growing rise in online counterfeiting and the post-pandemic bounce-back of offline counterfeiting – and what do these strategies look like?
As part of our holistic BAC practice, we look beyond just trademark registrations to leverage tools and enforcement mechanisms, such as recording trademark registrations and other IP rights with US Customs and Border Protection and conducting training for Customs agents. Our familiarity with advertising laws and our copyright expertise can also provide value in enforcing trademark rights at the border. While counterfeiting has always been around, it tends to correspond to the economy and can fluctuate quickly. Accordingly, we recommend taking a proactive approach with clients – helping them to educate their teams and customers through marketing, advertising and promotions to ensure that consumers know what makes their products unique and valuable.
What impact are global events (ie, the pandemic and economic crises) having on how you work with clients?
While our BAC group has always been a cross-office practice, our traditional geographical barriers have fallen as clients embrace digitisation. We have also seen how weathering health and economic changes can impact the time and resources needed to maintain a healthy trademark portfolio. Given our global practice, we have been uniquely equipped to advise clients on strengthening the goodwill embodied by their valuable trademarks by constantly evaluating and attending to non-financial factors (eg, social and environmental developments), working to modernise trademark practices and, in some cases, refreshing trademarks and rebranding to better reflect social priorities and norms.
How have your clients’ needs evolved over the course of your career, and how has your firm adapted to manage them?
With the onslaught of the internet, mobile devices and now the metaverse, during my career I have seen clients’ worlds expand exponentially. Many clients who once had local or regional businesses now offer products and services to a global marketplace of consumers with diverse attitudes, wants and needs, and may be subject to a litany of new legal regimes and guidelines. In this context, our BAC group’s business-minded approach comprises a deep understanding of global trademark practices but also considers key issues like advertising, marketing and copyright. Additionally, our group often works closely with other Baker Botts attorneys who can offer expertise in related fields, including patent law, environmental law, antitrust, matters related to the Federal Trade Commission and consumer protection and product liability.
Paul Reilly co-chairs Baker Botts’s branding, advertising and copyright practice. Along with co-chair Suzi Hengl and the team, Mr Reilly provides valued clients, from global corporations to local businesses, with a holistic approach to trademark, copyright, advertising, licensing and unfair competition matters. Such matters include clearance, prosecution and enforcement, transactions, diligence and IP litigation in state and federal courts across the United States, before the US Trademark Trial and Appeal Board and in other forums