Young Practitioners Committee Update: A Meaty Conversation

Published: April 15, 2019

Doni Robinson Jayaram Law, Inc. New York, New York, USA

Margot Wilson McDonnell Boehnen Hulbert & Berghoff LLP Chicago, Illinois, USA

Approximately 40 INTA members gathered at the offices of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, USA, on January 17, for the Young Practitioners and Trademark Administrators Reception. The event, whose theme was “A ‘Meaty’ Conversation-Food and Beverage Industry Issues for YPs,” focused on trademark issues arising in the food and beverage industry.

The panel featured Sharon Sorkin (Mars Wrigley Confectionery, USA), Jessica Bahr (Constellation Brands, USA), and Eric Moran (McDonnell Boehnen Hulbert & Berghoff LLP, USA). The moderators were Anessa Kramer (Honigman Miller Schwartz and Cohn LLP, USA) and Ann Palma (McDonnell Boehnen Hulbert & Berghoff LLP, USA).

Moderators presented a hypothetical legal case, asking panelists to consider a mark for alcoholic candies called “Booze Chews.” Attendees were walked through the process of clearing, prosecuting, and enforcing the mark. Panelists also discussed potential issues that might result in the advertisement of goods associated with the mark. Young practitioner Raven Zeer (Honigman Miller Schwartz and Cohn LLP, USA) commented that the workshop was “a great way to provide real world context to the trademarking process.”

Ms. Sorkin explained how, in the in-house context, clearance can be considered in two buckets: (1) owning the mark; and (2) registering the mark. In the fictional case, she considered the “BOOZE CHEWS” mark to be “borderline” because the mark would most likely be considered descriptive. While protection can be limited in such a crowded field as the alcohol and food industry, she posited that she might ask the client, “What else can you add to the word?” This suggestion prompted the young attorneys to consider how to present possible solutions to their clients, rather than simply telling them “no.”

The panelists explained that the initial evaluation in the context of the industry landscape is essential when evaluating a client’s risk tolerance. A client may be willing to go to market with a descriptive mark so long as it is not infringing, panelists explained. As such, it is important to speak with clients as early as possible about their budgetary restrictions and economic tolerance for challenges.

All of the panelists highlighted the importance of understanding the brand as well as the audience. This understanding may also influence the advice attorneys give to their clients. For example, when delivering “bad news,” it’s crucial to understand how the client may react to it. As a matter of course, panelists agreed that it’s never a bad idea to consider proposing alternatives as well.

The discussion progressed to consider advertising implications of the mark, including misuse, social media influencers, and hashtags. On this point, young practitioner RiKaleigh Johnson (Greer Burns & Crain, USA) asked the panelists how they advise their clients on controlling social media. Ms. Sorkin explained that her company has developed specific internal guidelines and “trademark boot camp” courses to enable developers to make informed decisions up front. All social media content should be created in advance, and either approved by the general counsel, or be in line with the procedures that have been established, she pointed out.

The panelists shared ways to strategize with the client when considering the implications of the brand, including a variety of watch services. They also gave recommendations for how to sort through the results of clearance searches. For example, even though a lawsuit may seem to make sense in the context of an infringement analysis, attorneys must also consider the implications filing that lawsuit would have on the client’s brand-including the effect on public relations that could result from sending cease and desist letters. Ms. Kramer explained that she has received requests for “Netflix-style letters” (referring to the now viral cease and desist letter Netflix sent to a local Chicago pop-up bar based on Netflix’s Stranger Things series). While infringers may pop up everywhere, she noted, the best lawyers understand which ones to go after, taking the client’s objectives into consideration.

Young practitioner Francyn Brown (Irwin IP LLC, USA) remarked, “All the panelists provided tips and advice from a real-life perspective, rather than being too academic.” Similarly, Ms. Palma mentioned she was pleased that the audience asked challenging questions to which the panelists provided thoughtful answers based on each panelist’s different perspective and experiences.

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.

© 2019 International Trademark Association