In your view, what makes a strong trademark team, and how do you build one?
We use consistent and clear communication to engage and build a strong team. This includes regular use of video apps to maintain a collaborative spirit of personal and professional engagement.
Earlier in your career, you spent seven years in Israel as a trademark attorney. How did this experience influence your view of the global IP landscape and impact your approach to acquiring trademark protections for international clients?
In Israel I gained experience in a rapidly growing technology landscape, which gave me some insight into business objectives focusing on the need to build IP assets to raise capital and the need for speed to market. While this is particularly critical for start-ups, these considerations come into play with all clients at different stages.
Trademark pendency before the USPTO has increased significantly recently. Have filing rates taken a hit, and what strategies have you had to develop to deal with this?
It is crucial to set reasonable expectations with regard to timing for applications to be examined and registered. For some clients, volume-related delays at the USPTO have been beneficial. It allows applicants to obtain a filing date, spread the cost of prosecution over a longer period and gain more time before they have to start using the mark.
You are heavily engaged 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?
We work closely with US Customs and online marketplaces to share knowledge and understanding of brand-owner challenges and increase cooperation for protection efforts. All of those involved are particularly helpful when it comes to safety concerns, which is common in the automotive and other industries.
How do you predict the blockchain domain challenge will evolve in the next 12 months, and what steps can brand owners take to prepare themselves?
As with any new frontier such as the internet, new top-level domain extensions and the metaverse, brand owners want to know the practical impact and how to foresee what is required to protect brands in a new environment. To start, they will want to consider defensive registrations of their key brands with the most popular blockchain domains. Although blockchain domains are not governed by the Internet Corporation for Assigned Names and Numbers, the law still applies – but it remains to be seen how effective enforcement measures will work against ether squatters. Some things brand owners can do outside of blockchain domain registration is educate consumers as to which blockchain domains are genuine and advocate for providers to adopt policies to reasonably protect brand owners.
Robyn Lederman has over 25 years’ experience as trademark counsel. She manages global trademark portfolios for multinational brands and works with companies to develop strategies to build value and strength in their trademark portfolios. Ms Lederman spent nearly a decade practicing law overseas and is highly effective in protecting and enforcing clients’ trademark rights worldwide. Now, active in her community, she spends time guiding entrepreneurs and start-ups on the practical impact of trademark law.