Nicole K McLaughlin | Global Brand Review

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What aspects of your job do you like the most and why?

I like to be a real business partner, not just a mercenary. Sometimes I think I work in-house for multiple companies and get great satisfaction from helping clients make business decisions involving their brands. By learning about my clients’ businesses, which span many industries, I have become trusted to help with branding business decisions. This includes helping them create trademarks, market brands, develop packaging, write promotional material and create trade dress. I also love to source and protect their intellectual property, but helping them make business decisions and see them come to fruition is the most rewarding. When I’m in a store with a big smile on my face, it’s usually because I’ve seen a brand on the shelf that I’ve helped develop and protect.

What are the biggest challenges your customers face and how do you overcome them?

By far, online threats are the biggest challenge for my clients: define them, find them and fight them. These are constantly evolving and can range from domain name issues and impersonation of a brand owner’s website or social media page to use of the same brand or name. similar mark in advertising the sale of counterfeit or counterfeit products. Customers don’t always understand that brands and trademark law are territorial, even in today’s global economy. They struggle to develop an online application strategy that is efficient, flexible and profitable. To achieve this, I develop a personalized and proactive enforcement plan that meets their business goals and protects their intellectual property rights, while balancing practical and financial considerations. This includes: using third party vendors to monitor and identify threats; assess threats on a case-by-case basis; educate and train customers and their employees; establish realistic application goals; implementation of the plan; and evaluating a measured response.

There is no one-size-fits-all solution to tackling online threats.

How can brand owners work with external parties such as e-commerce platforms and regulatory authorities to better protect their rights online?

Online threats, especially the sale of counterfeit or counterfeit products, have many touchpoints from the time the product is manufactured until it is delivered to the end consumer. These include suppliers, manufacturers, shippers, payment providers, online marketplaces and social media. At any of these points, a brand owner can stop the final sale of counterfeit or counterfeit products. To do this, it needs to collaborate with as many resources as possible, including e-commerce platforms and government or regulatory authorities (e.g. legislators, customs and law enforcement). Only by working with these third parties can brand owners make real progress in stopping bad actors.

As more industries are affected by technological convergence, how do you think the technology-related transactional landscape will evolve in the years to come?

Technological convergence presents opportunities for companies involving new and emerging data sources. The way companies use this data will create revenue opportunities, such as expanding existing industries, starting new businesses, or developing new sources of revenue. I expect this convergence to intensify considerably in the years to come, especially in the new and traditional media and telecommunications industries, which will lead to more regulation and oversight and raise digital privacy concerns. , data security and antitrust.

What effect will the Trademark Modernization Act 2020 have on brand owners seeking to protect their rights in the United States?

The act changes the game. Intellectual property owners seeking any type of preliminary or temporary injunction before the courts now have a uniform right to a presumption of irreparable harm in the event of a finding of infringement or success on the merits. Previously, many IP owners were not entitled to this presumption, depending on the jurisdiction, and it was difficult to prove irreparable harm. In addition, the law will allow intellectual property owners to sue two new ex part post-registration procedure: expungement and reconsideration at the USPTO for non-use. These will be less expensive and take less time than the between the parties procedure. The law will also allow third-party intellectual property owners to submit evidence directly to USPTO examiners for review during the exam, in the hope of convincing the examiner to issue a denial. This should save trademark owners time and money if they don’t have to oppose an application because the USPTO has denied registration. Using a monitoring service has become even more critical, as IP owners can monitor pending requests for problematic marks and take action quickly.

Nicole K McLaughlin

Partner
[email protected]

Nicole K McLaughlin is a partner at Duane Morris, where she is chair of the Trademarks, Copyright, Entertainment and Advertising practice group. She has extensive experience in all facets of domestic and international trademark enforcement, purchasing and portfolio management including authorization searches and reviews, online infringement, domain name issues. and cybersquatting, intellectual property licensing, product packaging and trade dress protection, and overall strategic branding.


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