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WEEKLY NEWS - MAY 20, 2009

This article is part of MIP Week, a weekly email newsletter written by the editors of Managing IP magazine. Take a one week trial to Managing IP and find many more related articles.

Interview: Teresa Wiant, Weyerhaeuser

Eileen McDermott, Seattle

Teresa Wiant is senior IP counsel at Weyerhaeuser, one of the largest forest products companies in the world. Wiant spoke with Eileen McDermott about what it’s like to protect the IP of one of the old world businesses which is transforming itself for the future

What is the company’s business model?
In the Northwest, we’re operating in a traditional industry. We have a huge amount of timberland, wood product production, pulp and a number of subsidiaries in the home building business.

How long have you been with the company and what does your role entail?
I joined the company in 1997 as IP counsel. I’m the only attorney who does trademark work. I do domain name work, ad review, and some patent work. About 40% to 50% of my workload is trademark.

How large is the IP department?
Right now we’re four attorneys, two paralegals and one support staff. We’ve been larger than that before, but we’ve also been smaller.

How large is your IP portfolio?
It fluctuates, but it’s around 400 US registrations and about 2,000 globally.

How has the economic climate impacted your strategy?
We’ve lost staff and all of the budgets are slashed, so there’s been a lot more picking and choosing what to focus on. If something’s on the edge where we’re not sure whether we want to renew it or not, we’ll consolidate it with other marks instead of renewing. So there’s a lot more streamlining now. We’re a B2B type of business in a lot of ways, so we felt the dip in the economy long before other sectors felt it. I think filings will definitely be down this year.

Have outside counsel been amenable to reducing fees?
We have asked outside counsel for different fee structures and there seems to be more acceptance of that now. We’re always watching for what makes the best economic sense.

What are the main challenges you face in protecting the company’s trademarks?
It’s difficult to gauge how many countries to include in our filing strategy, as the businesses often expand and contract in markets. It’s challenging because of the type of business this is.

Are you often involved in litigation?
We have a number of oppositions pending, and litigation happens, but it’s rare. We may have one or two cases every few years, usually related to infringement.

What challenges do you face on the prosecution side?
We have some traditional goods but we have still had trouble having the trademark examiners to understand the definitions in our industry. For instance, we had a box business until last year and the Trademark Manual has never reflected the difference between cardboard and corrugated packaging.

Do you use the Madrid System at all?
Yes, we’ve been using it for quite a while, because we do all filing in-house using foreign associates. It’s a cost-savings measure for us. We haven’t deviated from that and we haven’t had a problem with the home country registration issue that people often talk about with Madrid. We have about 20 Madrid filings pending right now. It would be nice if Canada was a member.

What are you most looking forward to at the Annual Meeting this year?
I’m looking forward to the sessions. I go to a ton of them, particularly the ones that have to do with transactions and registration practice. I’ve been attending the INTA Annual Meeting since the 1997 Meeting in San Antonio, Texas and I’m really looking forward to it being held in Seattle this year.

Weyerhaeuser fun facts


• The company began more than 100 years ago with 900,000 acres of timberland, three employees and a small office in Tacoma, Washington.

• Weyerhaeuser operates in 10 countries, employing about 19,000 people, primarily in the United States and Canada. The company’s four major business segments span nearly all aspects of the forest products industry, including Cellulose Fibers, Real Estate, Timberlands and Wood Products.
 



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