How long have you been with the company, and what is your background?

I joined Bose Corporation’s legal department in June 2007. Before coming to Bose, I was General Counsel at The Colibri Group, a manufacturer of jewelry, clocks and smoking accessories, which is now out of business. Prior to that, I was a trademark attorney at The Gillette Company in Boston for about six years. I was a law clerk to Judge Cedarbaum, Federal District Court Judge for the southern district of New York right out of Columbia law school, and then worked at the law firms of Wilson Sonsini Goodrich & Rosati in Palo Alto and Cooley Godward [now Cooley Godward Kronish] in San Francisco at the beginning of my career.

What does your role with Bose entail on a daily basis?

I manage Bose’s global trademark portfolio. With help from Bose’s trademark paralegal, I conduct trademark clearance searches, prosecute trademark applications, and renew registrations on a global basis. I oversee trademark oppositions and infringement litigation around the world. A growing part of my work is anticounterfeiting work. I have conducted customs trainings and worked with customs throughout the world to identify counterfeit goods for seizure, and I oversee enforcement actions against counterfeit sellers throughout the world. I am also responsible for reviewing advertising and packaging for trademark and false advertising issues.

What is the company’s business model/ history?

Bose Corporation was founded in 1964 by Dr. Amar Bose, a professor of electrical engineering at Massachusetts Institute of Technology (M.I.T.). The company is driven by engineers, and many of the innovative products that Bose has produced were a result of engineering triumphs in problem solving. Bose is a privately held company that reinvests 100% of its profits back into the company. Many years were spent developing the waveguide technology incorporated in BOSE WAVE sound systems, which allow rich sound from a very small speaker enclosure. This development won the “Invention of the Year” award from the Intellectual Property Owners Association. The company is committed to finding innovations that improve people’s lives. This commitment extends outside the audio field. This year, Bose introduced the BOSE RIDE truck seat suspension system, which reduces whole body vibration for drivers of tractor trailer trucks.

How large is your trademark/IP group?

Officially, there are just two of us, myself and our paralegal, Jessica Doherty, who will also be attending the Annual Meeting. Our work is supported by people in other groups within the company, particularly our anti-counterfeiting work. Another paralegal from the general legal group assists us with monitoring counterfeit listings on online marketplaces and we work closely with corporate security personnel on investigations involving counterfeit goods. We also regularly have student interns who assist with our counterfeit monitoring and investigations.

Do you have any sound or other non-traditional marks?

We have several registrations for product designs. We have obtained trademark registrations in the United States and other countries for some of our product configurations and features. The distinctive shape of the BOSE WAVE radio/music system is protected by trademark registrations in the United States, European Community, and a number of other countries. Bose also has registrations for the distinctive design of its SOUNDDOCK digital music systems (which allow for docking of Apple IPOD devices) and the black and white striped cord of its in-ear headphones.

What changes to the trademark system would you most welcome?

It would be nice if more countries were members of the Madrid Protocol. We have saved money by being able to extend our US registrations to other countries covered by the Madrid Protocol. It would be a tremendous savings of time and money if Canada, Mexico, and other countries in Latin America would permit filings via International Registrations.

What are the other biggest enforcement-side issues for you?

The biggest enforcement challenge for Bose is counterfeiting. Shortly after my arrival three years ago, we discovered the existence of counterfeit Bose in-ear headphones, and then discovered counterfeit QUIETCOMFORT ACOUSTIC NOISE CANCELLING headphones several months later. These counterfeit products are sold by unauthorized dealers, particularly in the online marketplace, in counterfeit packaging and are such good copies that it is difficult for consumers to distinguish them from genuine product. In many cases, they are sold at a price that is lower than that of genuine product, but not so low that consumers would be tipped off that the product is counterfeit. Further, while counterfeiting of handbags and watches is a fairly well known occurrence, many consumers are unaware that electronics products are counterfeited. Counterfeit headphones pose a serious threat to the BOSE brand because they are a lower priced item that may be a customer’s first experience with the brand. The counterfeit headphones are inferior quality, which may give first-time users a false impression that Bose products are not high quality. We have seen other products counterfeited, including 301 speakers, and even microphones, which are a product that Bose does not itself produce at the present time.

How do you deal with these problems?

We take a multifaceted approach to the counterfeiting problem. We have strategies in place to try to address the problem at various points in the distribution chain. We undertake investigations and raids in China (where the goods are manufactured), but find that these actions typically do not have a great deal of impact on the supply of counterfeit goods. We work with Customs officials in many countries to try to intercept international shipments of counterfeits. We conduct trainings for customs agents, provide leads regarding importers of goods and identify whether goods are counterfeit or authentic. We also take actions to try to prevent distribution at the point of sale. We request removal of listings for counterfeit goods on online consumer marketplace sites, such as eBay, Amazon and Craigslist, as well as B2B sites like DHgate and Alibaba. We request the removal of advertising for websites selling counterfeit products from Google and other search engines. We follow up with cease and desist letters, and have filed several lawsuits against parties who did not comply with our requests. In a handful of cases, we have gotten law enforcement involved and counterfeit sellers have been arrested and prosecuted. We frequently team up with other brand owners on enforcement work, as it is common for counterfeit sellers to deal in multiple brands of counterfeit goods. Joint enforcement actions allow us to reduce costs while having greater impact against the counterfeit sellers.

How/why did you come to work with trademarks and what do you like most about it?

Before I went to law school, I spent a year working as a paralegal at Debevoise & Plimpton. Partner Bruce Keller gave a talk to the paralegals one day about the kind of work he did. This was in the days before PowerPoint, so he brought props with him. He had done some work for a company that produced dinner plates, and held up his client’s plate together with an infringing plate – this was a copyright case, not trademark. He said that he knew he would win the case when he showed the judge the two plates and the judge asked where the other set was. It was Bruce’s talk that got me interested in IP. So I studied as much as I could in law school, and sought out this work in my first position at Wilson Sonsini, where Andrew Bridges welcomed me into his trademark practice group and taught me to be a trademark lawyer. It is a bit unusual for a new associate to go straight into this area fresh out of school. I love trademark practice because I love working with brands and advertising. If I hadn’t gone to law school, I’m sure that I would have gone into advertising or marketing.

How long have you been attending the Annual Meeting?

I haven’t missed an Annual Meeting since I first became involved in INTA in 1996.

Are there specific sessions you’re interested in?

I never miss the annual update of U.S. case law. I’m also interested in the session on vicarious liability for sales of counterfeit goods on auction sites.

What would you recommend Annual Meeting attendees do while in Boston?

I’m not from Boston originally, but I’ve lived here for more than 10 years now, so I guess I can now say that I’m “from” here. If the weather cooperates, I would say that a stroll through the Public Garden should not be missed. If the weather doesn’t cooperate, I’d recommend a visit to the Isabella Stewart Gardner museum or the Museum of Fine Arts. If you like to eat, a visit to the North End is a must. I love the Museum of Science, too. It is great that the Grand Finale will be there!

The In re Bose decision

The trademark community welcomed the Federal Circuit’s decision in favor of Bose last year, which reviewed the standard for pleading fraud before the TTAB. The case was closely watched, as many trademark practitioners had criticized the Board’s criteria for establishing fraud since its 2003 decision in Medinol v Neuro Vasx.

In Medinol, Neuro Vasx filed a petition to cancel Medinol’s mark NEUROVASX, alleging that it was not being used for stents, as represented at the time the Statement of Use was signed. Medinol said that the Statement of Use’s inclusion of stents was “apparently overlooked”, but denied any allegations of fraud.

However, the Board ruled that Medinol’s explanation did “nothing to undercut the conclusion that respondent knew or should have known that its statement of use was materially incorrect” and granted summary judgment in favor of Neuro Vasx on the issue of fraud. In line with its Medinol analysis, in Bose Corp v Hexawave, the Board determined that Bose’s general counsel knowingly made a false misrepresentation before the USPTO when he signed a renewal application that in part covered audio tape recorders and players, which Bose had stopped manufacturing.

Bose argued that the company’s continued practice of repairing these goods sufficed as use in commerce, but the Board disagreed and rejected Bose’s assertion that the misrepresentation was not intentionally deceptive. But ruling in Bose’s appeal of that decision in September last year, the Federal Circuit said: “Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.”

That statement has changed the way fraud is pleaded before the TTAB.

Brownlee on Bose

What has the Bose decision meant for the company?

We were obviously pleased with the decision, which will allow trademark owners to have some peace of mind that a good faith mistake of fact or law made in filing documents with the USPTO will not result in a complete loss of rights. As a practical matter, the case hasn’t changed things for us very much. Even though the TTAB had cancelled our registration for the WAVE mark, we still won the opposition against the HEXAWAVE mark based on our common law rights. The TTAB has repeatedly held that the WAVE trademark is a well-known trademark entitled to a wide scope of protection. The Federal Circuit decision did allow us to keep our incontestable registration, and, as stated above, allows us to worry a little bit less when filing documents with the USPTO. (But we are extremely careful in any event!)