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December 15, 2016 Vol. 71 No. 21 Back to Bulletin Main Page

David Fleming, 2016 President’s Award Winner

INTA’s President’s Award is designed to acknowledge the profound appreciation of the global trademark community to individuals who, over the course of a career in trademark and related IP law, have made a lasting impact on INTA and the Association’s mission. INTA President Ronald van Tuijl (JT International, SA, Switzerland) and INTA member Jomarie Fredericks (Rotary International, USA) presented the award to this year’s winner, David Fleming (Brinks Gilson & Lione, USA) (pictured right), at the INTA Leadership Meeting on November 15.

Mr. Fleming’s peers chose him for his dedication to guiding the Association during his 2014–2015 tenure as INTA Counsel and for leading the Governance Review Task Force to streamline INTA's Bylaws and to create a flexible Code of Policies, among other contributions. He has served on INTA committees consistently since 1998, including the CEO Search Committee, and was first elected to the Board of Directors in 2010. Over the years, Mr. Fleming has also co-chaired meetings such as the 2007 Annual Meeting and participated for years as an oral argument judge in the Saul Lefkowitz Moot Court Competition. 

During his tenure as Counsel, Mr. Fleming provided insightful guidance on a number of firstitime challenges for the Association, ranging from major changes made to the New York State non-profit law for the first time in over 40 years and their impact on Board procedure, to the application of changing laws with regard to INTA’s China Representative Office.

Mr. Fleming spoke with the INTA Bulletin about his road to trademark law, how the practice has changed, and gave his advice for young lawyers.

What (or who) led you to practice trademark law?
I started my practice as a commercial litigator. As my career progressed, I focused on trademark matters. When I joined Brinks Gilson, I had the privilege of working with Jerry Gilson, one of the giants in our field, as well as many other talented trademark lawyers in our firm, in-house with our clients, and at other firms.

What (in addition to your colleagues) is the best thing about working in the trademark field?
The field is fascinating because it touches on so many aspects of commercial activity. We support brands that are key assets for our clients, often on a worldwide basis. We focus on consumer perception and protection of consumers from confusion, while learning about our clients’ businesses in a wide range of industries and technical areas. We are involved with development of the law through the cases we handle in court and sometimes through legislative advocacy. And we work to apply trademark law principles to rapid technological changes.

What has changed most for your practice area over the course of your career?
What I notice most is the pace of change, not just in the trademark area, but in the practice of law generally. Developments such as the growth of the Internet and social media have changed the ways our clients reach their consumers. And technological developments, from fax, to email, to the use of extranet portals and real-time web-based interaction, have dramatically changed how we work with our clients.

What advice do you give to people just starting their careers?
I tell people to get involved in professional groups, such as INTA, as soon as possible. These extracurricular activities help to provide experience, develop skills, and create relationships that enhance our practices and our lives.

Do you have a favorite trademark? What is it and why?
I don’t really have a favorite trademark. I’ve worked with many companies that have famous and popular brands, and it’s impossible to pick one that is my favorite. I can’t pick a favorite, but I can remember marks that made an impression on me as a young kid. For example, my father was a commercial artist and frequently did illustrations for advertisements by major brands. One of the earliest I remember is the GREYHOUND logo, which Dad included in travel posters of Niagara Falls and the Pacific Northwest that he created for the company.

What do you do when not practicing law?
My wife and I have always liked to travel. My work with INTA has allowed us to travel widely and to make friends around the world. Although I must add that more and more of our discretionary travel these days is to places where our grandchildren are living.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association