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December 1, 2018 Vol. 73 No. 20 Back to Bulletin Main Page

Shaping Trademark Policy: INTA’s 2018 President’s Award Winner, Kathryn Barrett Park


Kathryn Barrett Park has been an INTA member for 30 years and an active volunteer on INTA committees since the early 1990s. She served as INTA President in 2003 and has played an instrumental role in advocating for some of the most groundbreaking intellectual property (IP) policy in the last few decades. This included the Trademark Dilution Revision Act of 2006, which was largely drafted by a special presidential task force established during her year as leader of the Association. Ms. Barrett Park testified before the U.S. Congress both on dilution and on the United States Patent and Trademark Office (USPTO) strategic plan and funding. Prior to her presidency, as the INTA Vice President in charge of the then Trademark Affairs and Policy Group, she worked with INTA’s Chief Policy Officer, Bruce MacPherson, and Government Affairs Consultant, Jon Kent (Kent & O’Connor, USA), in leading INTA’s efforts to get the United States to accede to the Madrid Protocol.

Throughout her career, Ms. Barrett Park has held positions both in-house, most recently at the General Electric Company (GE) and before that at the National Basketball Association, and in private practice. She served on the USPTO’s Trademark Public Advisory Committee for a number of years, including as its Vice Chair, leading the stakeholder community in providing crucial input and advice to the USPTO on numerous policy and operational issues. Ms. Barrett Park also took on the role of Chair of INTA’s Political Action Committee (PAC), working to raise the profile of the INTA PAC among U.S. members and to increase engagement. Her leadership on the INTA PAC has been instrumental in helping the Association to engage the U.S. legislature on issues of importance to INTA members. Ms. Barrett Park retired from GE last year, but plans to be back making further contributions to the IP community in the coming year.

For all of these efforts and more, Ms. Barrett Park was awarded with the 2018 President’s Award at the INTA Leadership Meeting in New Orleans, Louisiana, USA, on November 6. She spoke with the INTA Bulletin about what the award—and belonging to INTA—has meant to her.

How did you come to work in IP?
I was an art history major as an undergraduate at Brown University, so when I decided to go to law school, I wanted to find an area of the law that would speak to the interest I had in the visual arts. I was fortunate to have a fabulous IP professor at Columbia University School of Law, John Kernochan, who helped develop my interest. I did an internship at Volunteer Lawyers for the Arts while at law school and took some seminar courses in IP, and I knew this was something that appealed to me.

I joined Satterlee and Stephens LLP as a summer associate and then returned there as a full-time associate, and I had an opportunity to work on a variety of IP cases. And throughout my career at other firms, and later, in-house, I continued to work on IP issues and became a trademark and advertising law specialist.

When did you become involved with INTA?
I got involved with INTA fairly early in my practice. I don’t remember the year of my first Annual Meeting, but I remember attending many Annual Meetings as a young lawyer and being very impressed by the instant community of dedicated professionals in my field and the resource it represented. I thought, “Here are people who speak my language.” Often at law firms, and even in-house, IP lawyers are on an island of their own. Our non-IP colleagues don’t always fully appreciate the issues that we face. INTA is a community where everyone recognizes the importance of brands and the need to protect trademarks.

Why did you decide to join a committee and become active in leadership roles within INTA?
First of all, I knew that when you work with other people you learn so much more than you do passively sitting and listening. If you’re at all motivated to become better in your career, this is one way to go about doing it. Secondly, yes, you can meet clients, but even more importantly, you make connections. It’s a way to establish a reputation. And it feels good to participate, because it’s a place where your work is valued. In my case, by joining an INTA committee I was able to make really concrete contributions to trademark law.

Did anyone urge you to join INTA or otherwise mentor you along the way?
I decided to join INTA on my own as a young associate because I wanted to learn more about the trademark field. There was also a woman partner at the first law firm where I worked, Mary Luria, whom I saw as a role model. Law firms were very male dominated places at the time, and she didn’t feel the need to change her approach to keep up with the men; she had a very successful practice on her own terms, and really stands out as an influence.

What do you consider to be your biggest successes?
There were two substantive trademark law developments that I played a role in. One was the United States joining the Madrid Protocol. INTA had worked for many years to get that to happen, and there was a lot of suspicion in the bar at that time that this would not necessarily be helpful to them or their clients. We were much less geographically connected at the time, and people didn’t understand the complexity of the WIPO practice, but I and others at INTA could see that—if a time were to come where you could do the things Madrid allows for electronically—you would be able to maximize your budget to get trademark protection in multiple countries. From a corporate perspective, that seemed like a “no brainer.” Even if the system wasn’t perfect yet, I knew that you had to be part of it to have any kind of influence on it, so I’m very proud to have been part of that effort.

The second thing I’m very proud of, which made a huge impact on U.S. law, was the Trademark Dilution Revision Act of 2006, which was spearheaded by the presidential task force formed during my year as INTA President. That statute clarified a lot of confusion in the law and is now grounds for trademark opposition and cancellation actions as well.

I was fortunate that, in both instances, I was in the right place at the right time—the issues presented themselves and I was able to be part of a group that resolved them in a favorable way for trademark owners.

What has been the biggest change in practice during the course of your career in IP?
One is the increasing harmonization of trademark laws. Companies are truly global now—that wasn’t always the case when I started my practice. Very few matters these days take place in one locale; there has been a real internationalization of brands.

Two is the advent of new technology. There used to be an intense busywork aspect of trademark law and a lot of dependence on paper and filing clerks. E-filing is available in more places, and those tools have made it easier and faster to do the work.

What advice do you have for those starting out in their trademark careers?
I used to tell my team at GE, “You need to be prepared.” When someone asks you to work on a project, first make sure you’ve really read it and understood it. Make sure you’ve done what you can do thoroughly before you report it out. Preparation is key to success.

Second, and the advice I wish someone had given me, is don’t be afraid to ask people who you admire to schedule 15 minutes and ask how they got where they are. Most people will say, “Sure, I’d love to chat.” It might be someone at your company or law firm, or within INTA—INTA is full of people who would be happy to share their stories and give advice.

Do you have a favorite trademark?
This is a tough one for a trademark lawyer, but the first trademark I can remember recognizing was CHANEL NO 5, because it was my mother’s favorite perfume. She had a bottle that sat on her vanity that I wasn’t allowed to touch. I admired the clean lines of the bottle and was intrigued by words that seemed mysterious (why NO 5?). And of course I loved the grown-up scent. I didn’t know at the time that I was forming an association with the brand CHANEL NO 5 that would stay with me throughout my life.

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. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

© 2018 International Trademark Association