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INTA Bulletin


December 1, 2014 Vol. 69 No. 22 Back to Bulletin Main Page

Get Advice from INTA’s 2014 Award Winners


At the 2014 Leadership Meeting in Phoenix, Arizona, USA, INTA President Mei-lan Stark presented the 2014 President’s Awards to Virginia Taylor (Kilpatrick Townsend & Stockton, USA) and Cynthia Rowden (Bereskin & Parr LLP, Canada), recalling how both women had personally mentored her at various points in her career. Ms. Taylor and Ms. Rowden then joined a panel of the Volunteer Service Awards Winners, who took the stage to share their insights on balancing busy careers with committee and advocacy work for the Association. In the interviews below, they provide their advice to young trademark practitioners, recount their personal paths to trademarks and give us a glimpse into their lives outside the trademark realm.

President’s Award Winners

Virginia Taylor, Kilpatrick Townsend & Stockton, USA

What (or who) led you to practice trademark law?
Like most law school graduates of my era (in the late 1970s), I never had a trademark course in law school. When I graduated from Emory University, I was hired by the firm, then known as Kilpatrick & Cody, and was assigned to Miles Alexander’s (Kilpatrick Townsend & Stockton, USA) practice group, so I became a trademark lawyer through sheer good luck.

What (in addition to your colleagues) is the best thing about working in the trademark field?
Aside from my many great colleagues and friends, in both my firm and others, I think the best thing about trademark practice is that it is very rewarding to have the opportunity to become engaged at a very early stage in the directions that clients want to go with new business strategies, new products and new geographical markets, and to help them accomplish their goals successfully.

What advice do you give to people just starting their careers?
I encourage young trademark lawyers to get to know as many other practitioners in the field as they can, both locally and around the world. The most wonderful thing about trademark practice is the number of really lovely and interesting people practicing in the area and how generous they are with their expertise. I also tell them: don’t consider your adversaries to be enemies.

What’s your favorite trademark?
It would be very hard to choose one because I have many favorites, but I do have a favorite trademark in art; it is the Bass Ale Red Triangle Label mark in Manet’s A Bar at the Folies-Bergère.
What do you do when not practicing law?
I enjoy my children and grandchildren and I love gardening, traveling and spending time at my beach cottage on the Georgia coast.

Cynthia Rowden, Bereskin & Parr LLP, Canada

What (or who) led you to practice trademark law?
I actually started out thinking that I would practice family law, although after a very small number of real-life experiences, I figured out that I needed to be in a practice where it is relatively uncommon for clients to cry in your office. In my articling (or student trainee) experience, I saw some trademark files and thought that the practice of trademark law might be interesting. At the time, it was almost impossible to get a trademark lawyer job unless you also had a science or engineering undergraduate degree, since Canadian IP firms hired lawyers with technical degrees to do both patent and trademark work. I had studied economics and history, which disqualified me from practically all IP firms at the time. Bereskin & Parr stood out for its willingness to hire me to do just trademark law. I would have liked to have been a fly on the wall to listen to them debate whether there was enough trademark work to hire someone who would not also be practicing patent law. I’m forever thankful that the firm took a chance on me.

What (in addition to your colleagues) is the best thing about working in the trademark field?
It is different every day, and the problems are ones that have direct implications on the goods and services we see sold, advertised and promoted all the time. The practice involves skill and experience, but also requires an understanding of how both business and consumers make decisions. It is fast paced—which may not always be a good thing, but means that there is always a variety of things to do. It involves analyzing, persuading, advocacy and marketing skills, only some of which relate to strict legal training. The law also evolves quickly, which, if it is well thought out and practical, is good; but unfortunately, we also see many legal changes that don’t seem to be in the interest of business or consumers. Luckily, my practice exposes me to clients and colleagues all over the world, which also means that we have a chance to see international trends and developments. The international nature of the practice also means that there is a fair amount of travel, much of which is very interesting. I’ve been able to work with so many people all over the world, both on committees for INTA and related to work, and have made some wonderful friendships. In the end, those mean the most.

What advice do you give to people just starting their careers?
Say yes! Try new opportunities, join organizations and get involved when they ask. Try to think like a business person; the study of law involves a lot of “on the one hand, this … but on the other, that,” but the kind of work we do, with marketing teams and their advisors involves working with business people, and you need to think and talk like them. Lawyers are like elephants—they never forget, and life is too short to make enemies, even when you work on contested matters. Treating your colleagues at other firms with respect will always be the best policy.

What’s your favorite trademark?
That is like saying, “Who is your favorite daughter?”, and I always refuse to get tricked by my kids into answering that. There are lots of very clever marks, and some very strong marks that cautious trademark lawyers would have probably advised against if they were consulted before use started.

What do you do when not practicing law?
I enjoy gardening, cooking, traveling and spending time with my family. I’ve studied French and Italian (and forgotten way more than I learned), and on busy or challenging days, dream of living in a small town in southern Europe where I can drink wine, eat bread and cheese without ever gaining weight and only worry about what we’ll cook for dinner.

Volunteer Service Award Winners

Advancement of Trademark Law

Theodore Davis, Kilpatrick Townsend & Stockton, USA

What (or who) led you to practice trademark law?
I’m likely one of the few INTA members who owes his or her chosen career to INTA itself. I arrived at law school early, and, while wandering the halls several days before orientation began, I saw an announcement on a bulletin board that a graduate of the school the previous spring had received the Ladas Memorial Award for having published the best trademark-related article of the year. A reprint of the article was hanging from the board, and I took it down and read it. From that point on, I knew I’d practice trademark law.

What (in addition to your colleagues) is the best thing about working in the trademark field?
The best thing about working in the trademark field is a collegiality that I doubt exists in many other practice areas. A good deal of that is fostered by the opportunities that INTA provides for working with, and getting to know, other trademark professionals, which results in a better and more cost-effective litigation experience if and when you find yourself adverse to them later. I also have benefitted in immeasurable ways from the generosity of others active in the area, including senior members of the trademark bar, my own contemporaries, and the INTA staff, the last of which in particular has made significant contributions to my practice.
 
What advice do you give to people just starting their careers?
Stay the course and don’t get discouraged by the bumps in the road, which you’ll encounter with disproportionate frequency at the beginning of your career. Look out for others and they’ll look out for you.
 
What’s your favorite trademark?
You mean other than Kilpatrick Townsend & Stockton®, right?
 
What do you do when not practicing law?
I enjoy traveling outside the United States and reading historical biographies.

Verena von Bomhard, Hogan Lovells (Alicante) S.L. & Cia., Spain

What (or who) led you to practice trademark law?
Alexander von Mühlendahl, then recently appointed Vice President of OHIM, and Henning Harte-Bavendamm, then partner at Droste Hamburg. They were discussing Spain just after Alex had moved to Alicante. I (who was working at Droste in the environmental and administrative law department) happened to sit right beside them and looked interested. Henning asked if I did trademark law and I said, “No, but I speak Spanish.” That sealed my destiny. Henning pulled some strings and I became the associate who got to open the office of then Droste in Alicante, in January 1996 (after some trademark law training, of course).

What (in addition to your colleagues) is the best thing about working in the trademark field?
That you can talk to anyone in the world and land on common ground. It is a truly global field of law, and one that is fun to talk about; people know what brands are. It’s far more tangible than taxes, and more likeable than divorces. And trademark people are fun. Just look at INTA!

What advice do you give to people just starting their careers?
Pursue your passion. Work for clients and on matters that you can identify with. Try to work as much as possible with people you reallylike, as that makes it just so much more fun.

What’s your favorite trademark?
SpaceNet, my brother’s very successful Internet service provider (ISP) firm in Munich, Germany. It is Germany’s oldest private ISP firm, founded in 1993. He designed the logo himself, which is remarkable, bearing in mind that he is a mathematician.
 
What do you do when not practicing law?
Anything outdoors: biking, hiking, climbing, kayaking—as long as it does not involve running.

Advancement of Committee or Subcommittee Objectives

Mark Feldman, DLA Piper, USA

What (or who) led you to practice trademark law?
When I was born, my parents named me “Mark.” My license plate is CIRCLE R.

More seriously, I am a registered patent attorney and my first job was in an IP boutique where I was lucky enough to be assigned a balanced workload of patent and trademark litigation and prosecution. After a number of years, I went in-house to Searle Pharmaceuticals as “senior trademark attorney” and have been 100 percent trademarks ever since. My patent partners give me a lot of grief for handling trademarks when I am licensed as a patent attorney, but I tell them I’ve seen the light.

What (in addition to your colleagues) is the best thing about working in the trademark field?
I have the greatest job in the world if you have a short attention span!

What advice do you give to people just starting their careers?
Push for as diverse a practice as possible, with multiple mentors, and keep trying new things. Especially as a newbie, get exposed to litigation if you want to be a transactional lawyer, and work on some transactional matters if you want to be a litigator. The benefits of this experience will last a lifetime.

What’s your favorite trademark?
NutraSweet. I was in-house when the
NutraSweet trademark was born in 1985. It was incredibly exciting to launch a famous mark for a rare branded-ingredient trademark.

What do you do when not practicing law?
When I’m not practicing law, I’m off to court—the tennis court—where I play singles for several hours a week. I also do lots of gardening during the season. Anyone can plant in rows, but my “jungle” look balances color, height and timing—it’s a great joy.

Michael Hawkins, Noerr Alicante IP, S.L., Spain

What (or who) led you to practice trademark law?
Part of my legal training was alongside a very friendly team of IP lawyers in a big international law firm in London. That certainly contributed to me choosing IP as a broader field. However, it was the pan-European nature of trademark law in the EU and the opportunity to live and work in Alicante, Spain, that led to my specializing in trademarks particularly.

What (in addition to your colleagues) is the best thing about working in the trademark field?
The fact that it is so international. Apart from the privilege of being able to travel extensively, the issues we face as trademark practitioners are generally universal, meaning we are on the same wavelength as people from very different cultures and legal backgrounds. I love the fact that my average day involves communicating with people across the globe, even if it does occasionally make my working day very long!

What advice do you give to people just starting their careers?
Be humble, listen and ask questions. Most importantly, however: do what you say you’ll do. It is surprising how many people don’t.

What’s your favorite trademark?
There are so many! I would have to say Zoetis (the world’s largest animal health company), partly because it is so distinctive in a world of increasingly weak marks and partly because I helped search it.    
What do you do when not practicing law?
Long walks with my partner and dog, enjoying good food, the latest bestselling thriller or U.S. TV import!

Advancement of the Association

Mona Lee, Hanol Law Offices, South Korea

What (or who) led you to practice trademark law?
When I began studying law, I was intrigued by the notion that intangible property, also known as intellectual property, could be protected. During my first several years of practicing law in Delaware, I was mostly exposed to patent law (in addition to corporation law). However, when I moved to Seoul, I had the opportunity to delve into the area of trademark law, which I enthusiastically welcomed. I was attracted to trademark law because it seemed to incorporate all of the things in which I was interested—branding, marketing, art, design, style, image, commerce, international cooperation, impacting the world economy, capturing people’s minds, conveying a message to the public, making promises, garnering trust, moving people emotionally and being a part of their everyday lives. What is there not to like about trademarks?

What (in addition to your colleagues) is the best thing about working in the trademark field?
Since it is already a known fact that the most collegial people in the world work in the trademark industry, I would have to say that the best thing about working in the trademark field besides my colleagues is the feeling that you are connected to the rest of humanity through your work. You can walk down the street and see the marks that you have registered and/or protected and feel the pride of knowing that you had some small part in bringing that mark to the public. When you wake up in the morning and brush your teeth with COLGATE or CREST toothpaste and rinse with LISTERINE or SCOPE mouthwash, you know that millions of others are doing the same. Every item you touch, every service you receive, has a trademark associated with it, and if it is an effective trademark, it can swell you up with feelings of familiarity, comfort, security, and even joy. The power of trademarks is amazing!

What advice do you give to people just starting their careers?
I say, work as hard as possible, to learn as much as possible, and gain as much experience as possible, early on, while that window of opportunity is open to you. There is no substitute for hard work, and there are no shortcuts in life. And if you are the only one in the office late at night, remember that you are investing in yourself and making yourself more valuable by laying a solid foundation that will serve you well for years to come. That said, living a “good life” means becoming a caring citizen, and we are not born that way.
 
What’s your favorite trademark?
I am tempted to answer “INTA’s logo,” but I will refrain for fear of reprisal and accusations of corniness. I guess one that I really like, which may be more of a slogan or a tagline than a trademark, is LG’s “Life is Good.” For all of the difficulties that life can hold, on balance, the great majority of us seem to choose life over death. I suppose that is proof that life is indeed good.

What do you do when not practicing law?
When I am not working for my firm (and trying to enrich the lives of my team members), I am working for INTA, and if there is any spare time after that, I try to be a good mother, travel, read lots of books, watch good movies, drink good wine, expose myself to fine and performing arts, meet with fellow Rotary Club members, daydream about retirement and pretend to play golf.

Paul McGrady, Winston & Strawn, USA

What (or who) led you to practice trademark law?
I started my career in-house at True Value Hardware. One day, my general counsel called me into his office. He pointed at some boxes and asked, “What’s in those?” I looked and said, “Trademark files.” He said, “Congratulations, you are now a trademark lawyer.”

What (in addition to your colleagues) is the best thing about working in the trademark field?
Trademarks are a loophole in the legal field. You get to work with great, creative clients with global brands and fun ideas, but your work is ultimately to protect consumers from confusion in the marketplace.

What advice do you give to people just starting their careers?
Begin building your personal brand. Brands, of course, are made up of all sorts of elements, including:


1.    A consistent quality level
2.    Terrific customer service
3.    Customer trust
4.    Visibility in the marketplace

What’s your favorite trademark?
Paramount. I’m a huge Star Trek fan.

What do you do when not practicing law?
The McGrady family are travel addicts. We view our home less as a quiet oasis and more as a launching pad for our next adventure.

Pro Bono Services Provided by Individuals

Loreto Bresky (Alessandri & Compania, Chile)

What (or who) led you to practice trademark law?
During my last year at university, a new elective class opened called “Intellectual and Industrial Property.” It caught my attention and I enrolled. I really enjoyed the course—it covered a mix of different fields and interacted with artists, creators, researchers and the business world. I started my career in corporate law, but early on I had the opportunity to work in IP and I took it. Eventually, I came to specialize in trademarks. Working with the marketing department and participating and contributing my vision in the launch of new trademarks is something that I have fun with. Also, litigation and defense of trademarks is challenging and gives me a lot of professional satisfaction.

What (in addition to your colleagues) is the best thing about working in the trademark field?
I like the combination of law, marketing, design/art and creativity. It is a broad area with a lot of opportunities. Also, attending congresses and seminars gives me the chance to meet different kinds of people from different cultural backgrounds, and that is very rewarding.

What advice do you give to people just starting their careers?
My advice is to be conscious of and focused on what you want to achieve; foresee your career and work hard. Also, it is important to start networking, and I would recommend looking for a mentor.

What’s your favorite trademark?
Difficult question, but if I have to choose, it might be Chanel—it signifies elegance and simplicity. Coco Chanel was really revolutionary; she changed fashion, liberating women from rigid and flamboyant structures to practical and chic. The black dress is an important contribution, I am sure that a lot of women have one in their closet. I have one of them.

What do you do when not practicing law?
I used to dance flamenco. It is very passionate. Now I just enjoy dancing. Also, I love cooking and entertaining—French food is my favorite.


Pro Bono Services Provided by Organizations

The award for Pro Bono Services Provided by Organizations was presented to Katten Muchin Rosenman LLP (USA), which was represented by Brian Winterfeldt during the 2014 Leadership Meeting’s opening ceremonies. Katten Muchin Rosenman LLP became one of the first law firms in the United States to employ a full-time partner to lead its pro bono program in 1993. The firm encourages its attorneys to take on pro bono projects, and it has worked with a number of different organizations over the years. In recent years, the Katten Internet Practice has been advising the dotHIV Initiative on its new generic top-level domain application for .HIV. The firm’s Internet practice also manages the trademark portfolio for The Tranquil Space Foundation and The Trevor Project, which provides crisis intervention and suicide prevention to Lesbian, Gay, Bisexual and Transgender youth, and manages many trademark portfolio matters for the United Cerebral Palsy Association.

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. 


© 2014 International Trademark Association