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What Do You Do When You’re a Company’s First Trademark Lawyer?

Mona A. Lee, DW Partners, Seoul, Korea, Co-chair of INTA Bulletin Features—Policy & Practice Subcommittee

Originally published in INTA Bulletin Vol. 64 No. 20 (November 1, 2009).

“What do you do when you’re the first trademark lawyer at a company?” Some have never thought about the answer. Others have thought about the answer because they harbor a secret desire to fill such a position. Still others have had to answer the question because they were indeed the first trademark lawyer at their company. For this last group, the answers are quite interesting.

The “To Do” List

“You make a ‘to do’ list. Mine was 10 pages long!” says Barbara Kolsun, Executive Vice President & General Counsel of Stuart Weitzman, LLC, and a veteran “first” who is currently in her third “first” position, after being “first” with Kate Spade and 7 For All Mankind. Other “first” lawyers, including Rebecca Gibbs, Chief IP Counsel, American Eagle Outfitters, Inc., and Christian Gordon-Pullar, Chief Executive Officer, Standard Chartered Strategic Brand Management Limited, also employed the venerable “to do” list.

Finding and Filling the Gaps

And what was at the top of Barbara’s list? Making sure that Stuart Weitzman had protection where it needed it. That meant reviewing what registrations the company had and “filling in the gaps.” It also meant trimming the portfolio of its excess fat. This seems to be a common “top” item. As Robert Hart, Senior Corporate Counsel (formerly Chief IP Counsel) of Harman International Industries, Inc., explains, “Discovery of the trademark portfolio scope of coverage was the primary task. At Harman, the business units handled their own trademark matters, so I had to literally find the trademark files, which were scattered across seven countries. In some instances, Harman had trademark registrations where the files were lost years before I arrived. As we discovered the extent of our portfolio, issues were prioritized accordingly.”

Getting Organized

For some, like Robert and Rebecca, filling in the gaps also involved implementing a database/docketing system and hiring support staff to maintain it. And when there is no budget for hiring, what do you do? “You bring in a small army of interns from a local law school to help,” responds Barbara, “and mine were phenomenal. We not only created a trademark database, we also literally purchased shelves and binders and starting filling the binders with all of the company’s agreements. We also made a due diligence binder that briefly summarizes every one of those agreements.”

Managing the International Work In-House

For both Robert and Rebecca, getting organized laid the foundation for bringing all of the international work in-house so that they directly instructed international associates. In connection with that process, both made it a point to quickly get to know all outside counsel, including international associates.

Learning the Company’s Business and Its Future Direction

In the midst of addressing the most urgent matters, “firsts” also made it a priority to learn the company’s business and proposed future direction. Often, this involved setting up meetings with “key players” within the company. Such meetings help to inform the many decisions that “firsts” must make as to what marks should be registered (or what registrations should be abandoned) for what goods and/or services and where.

Becoming a regular participant in senior management meetings also helps “firsts” to “learn about the company’s products, its competitors, new markets and any proposed changes in the strategic direction of the business with respect to branding. Participation in such meetings supports proactive problem solving,” says Robert. Also helpful, he finds, is “attending relevant trade shows, to observe industry trends and keep an eye on one’s competitors.” All of this allows for future planning.

Moving from Reactive “First Aid” to Proactive Brand Management

Being a “first” often means conducting triage upon arrival and giving “first aid” where needed. After that, “firsts” have the opportunity to engage in active brand management. Such management can take many forms, a few of which are mentioned below.

Drafting Company Policies

Rebecca and Christian began their brand management by drafting policies covering everything from getting a mark pre-approved to ensuring that the right terms are included in trademark licenses and other related agreements in the future.

Holding In-House Educational Seminars

Another form of brand management is educating businesspeople about trademarks, including trademark law and procedure, and the important role trademarks play in the business of the company. If you’re a “first,” it is quite possible that many of the businesspeople in your company are not as well informed about trademarks as they should be. Holding in-house seminars is a way for “firsts” to explain in concrete terms, using real-life examples, why policies they have drafted need to be read and followed, and why a trademark budget is necessary. Those examples may even include instances where the company unknowingly was infringing the trademarks of third parties, as well as examples of infringement by third parties of the company’s trademarks.

Rewarding Experiences

Overall, “firsts” enjoy the freedom that comes with being first—“to chart one’s own path,” as Robert puts it, and, in Rebecca’s words, “build one’s own department from the ground up.” For “firsts” of younger companies, the reward might even be in having the very first marks register and being part of the company’s growth.

The Path to Becoming a “First”

While there may be a somewhat “typical” path to becoming an in-house lawyer—working at a law firm for a few years, then moving in-house—it is not clear whether there is a typical path to becoming a “first.” At least for Barbara, Rebecca, Robert and Christian, that involved working in-house for several years and then moving to another company to be the first general counsel or first chief intellectual property counsel.

Is There Anything That “Firsts” Might Have Done Differently?

Robert advises that he would have ensured he had signatory authority for every business unit for all matters involving trademarks, such as the authority to sign powers of attorney. “Chasing after someone in senior management for a routine signature gets old fast, especially if that person is located on another continent.”

Words of Wisdom

Barbara’s advice is, “Broaden your knowledge and experience as much as possible. As a ‘first,’ so much is required beyond IP prosecution.” Rebecca adds, “Be organized. Have a clear understanding of what needs to be done from the ground up. Don’t get discouraged too easily, and remain flexible. My one-year plan quickly turned into a three-year plan.”

Favorite Quotes

When asked, “What is your favorite quote?” some “firsts” offered the following:

Rebecca: “Focus on what you can control. Figure out ways to work around what you can’t. Otherwise, just put it in your hand, and let it go”—on how to deal with the challenges of life and of being a “first.”

Robert: “Prepare for the worst, hope for the best”—on his approach to being a “first.”

The Author: “There’s no thrill in easy sailing when the skies are clear and blue, there’s no joy in merely doing things which anyone can do. But there is some satisfaction that is mighty sweet to take, when you reach a destination that you thought you’d never make”—on how “firsts” must feel when they become a “first.”