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 Joe Ferretti (PepsiCo, Inc., USA) presented the award this year to Theodore (“Ted”) Davis (Kilpatrick Townsend & Stockton, USA) and Gerhard Bauer (Germany) at the INTA Leadership meeting in Washington, D.C., on November 7. After the meeting, the INTA Bulletin
spoke with Mr. Davis about the lessons he has learned over the course of his career.
More information on the award and a description of Ted’s achievements are available in the official announcement.
What has changed most for your practice area over the course of your career?
Technology has changed my practice the most. I started practicing at a time when computers were the exception rather than the rule and of course now they are the rule, not the exception. We also have access to a lot more tools now than we had back in the day—all of which have improved practice dramatically.
Has there been a downside? I’m not sure. There is perhaps a long-term threat to trademark lawyers and to lawyers generally posed by artificial intelligence: if the practice of law is about predicting what courts may do, we may soon get to the point at which artificial intelligence can do a better job of predicting that than a classically trained lawyer can. That may be a threat to some and an opportunity to others. There is a potential downside to people who don’t see that coming.
What is the funniest or strangest case that has come up in your time working for The Trademark Reporter?
There are some disputes that just will not die and produce reported opinions year after year after year. But those tend to be pretty conventional. I think the most unusual series of cases I’ve had to address are those arising from efforts by an individual who was frequently characterized as a trademark troll back in the 1990s—Leo Stoller. His attempts to lock up a large number of trademarks throughout the United States for a variety of goods and services spawned all sorts of litigation and reported opinions. Mr. Stoller generally wound up losing. This went on for a number of years and also produced opinions within the USPTO which were covered by my co-authors in The Trademark Reporter
at the time.
What advice do you give to people just starting their careers?
It’s important to get your name and yourself out there as soon as and as often as you can. Billing a lot of hours can only get you so far in the long run, although it may be necessary in the short term. Ultimately your goal is to end up with your own self-supporting practice. The only way to do that is to get out and build the relationships that will facilitate that.
Any organization can help you do this. It may not necessarily be an IP or legal organization. You never know what’s going to pay off—it’s very difficult to predict in advance, so it’s important to be open to any invitation.
What was the best piece of advice that you received during your career and who did it come from?
It came from a number of my colleagues (now partners) at our law firm. It was to write articles early on in my career. That got me some exposure I would not have received otherwise. Of those I wrote, probably the one that stands out is the first one, which received INTA’s Ladas Award and got a certain amount of good press. It was on a provision of the Lanham Act called Section 2(a), specifically a prohibition against the registration of immoral, scandalous, or potentially disparaging trademarks. That provision has just been declared unconstitutional by the U.S. Supreme Court, and I had the opportunity to write the very first article on that provision.
What do you think is the biggest challenge that brand owners will face in the next five years?
The biggest challenge is predicting what the biggest challenge will be! Society and the law are so dynamic now that it is very difficult to spot emerging issues five years off. No one would have expected the explosion of trade dress litigation in the early 1990s. Few people would have predicted the disruption to trademark law that the Internet caused. So, predicting what the next issue will be five years out is inherently difficult.
What has been the biggest highlight of your career?
Receiving the President’s Award is one—it is a great honor. But INTA has also given me the opportunity to co-author a number of amicus briefs filed with the U.S. Supreme Court. The Court takes so few trademark cases that the opportunities to participate in a case as lead counsel or counsel for one of the parties are very rare. But I have had the chance to participate in a number of cases over the years thanks to my membership on the INTA Amicus Committee.
The standout would have to be the Supreme Court opinion in TrafFix
[TrafFix Devices, Inc. v. Mktg. Displays, Inc.
, 532 U.S. 23 (2001)] in which we had the opportunity to interact with the now Chief Justice of the U.S. Supreme Court, who represented the defendant in that proceeding. I got the sense the Court may have read the brief that INTA submitted. INTA filed a brief in support of neither party, and the Court’s opinion turned out to be rather consistent with the position we asserted.
What do you do when not practicing law?
I read a lot—mostly historical biographies and other non-fiction history. Favorite eras are the Victorian era in the UK and the Progressive era in the United States. I also enjoy travel. My family and I will be spending U.S. Thanksgiving visiting Stonehenge. We have also taken recent trips to Istanbul and Vienna, as well as a photo safari in Tanzania in the recent past.
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