How long have you been with the company?

I have been with Hearts On Fire Company for three-and-a-half years.

What does your role entail on a daily basis?

As General Counsel, I handle all legal issues for Hearts On Fire, not just IP matters. Every day is different!

What is the company’s business model?

Hearts On Fire Company is successfully building the pre-eminent consumer brand in the fine diamond jewelry business, powered by the pulsating energy of its extraordinary diamonds. We’ve established a new industry standard for diamond cutting perfection, enabling the company to become the world’s fastest growing diamond brand. We continue to redefine the industry through our extraordinary diamonds, sophisticated marketing and training programs and unique retail relationships.

How large is your trademark/IP group?

I am the sole member of the legal team.

How large is your trademark/IP portfolio? What are the main brands?

Our portfolio is approximately 1,000 marks worldwide. The main brands are Hearts On Fire and Dream.

How has your business model been impacted by the economic downturn?

The economic downturn forced us to speed up bringing our portfolio in-house in order to reduce outside counsel costs. I learned that sometimes we have certain perceptions of what we are capable of handling, and if forced to do more than we think we can, we often discover we are capable of more than we thought possible. Having our entire portfolio in-house has been wonderful from a management perspective.

Do you use design rights for the packaging or appearance of your products?

We have a design patent on our DREAM diamond.

What changes to the trademark system would you most welcome?

A uniform trademark system worldwide would be most welcome!

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

My biggest challenge right now is trying to police all of the internet auction houses. There are a lot of individuals selling their own homemade jewelry, and they often do not conduct any type of trademark search prior to using names with their products. It is usually not a case of bad faith, but the sheer number makes it challenging for a team of one to police it all.

How do you deal with these problems?

I utilize automated searches offered by the online auction sites.

How often are you involved in trademark litigation?

Fortunately, we are usually able to resolve any trademarks issues without the need to resort to litigation. I have only been involved in one trademark litigation since starting with Hearts On Fire.

Are you more often a defendant or a plaintiff in litigation?

We are usually the plaintiff.

Do you view the lack of harmonization in IP systems around the world as a barrier to protecting your company’s IP?

This is certainly one of the most challenging aspects of my practice. Because there are so many sets of rules, deadlines, methods of use, etc., it is very difficult to timely respond to the numerous requests from IP offices around the world.

What is the single biggest challenge you face in protecting your particular brand?

I think one of my biggest challenges is educating our licensees and other third parties about the proper use of our trademarks. THE WORLD’S MOST PERFECTLY CUT DIAMOND is especially challenging because people are tempted to use it improperly and often do not understand the function of a trademark.

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

I really did not know anything about trademarks when I began my practice. I was a federal law clerk with litigation experience, and had a friend introduce me to a partner in a small boutique IP firm that needed litigation help. I signed on and taught myself trademark law (with the partner’s help, of course). While I enjoy practicing IP law, I think my favorite thing is the collegiality of our bar. Even if I am involved in a trademark dispute, opposing counsel in the IP practice tend to be more cooperative in trying to resolve the matter short of spending thousands in attorney’s fees. That is something I did not find to be true in litigation practice in general.

What is the one piece of advice you have for outside IP counsel and the most important quality you look for in outside counsel?

Outside counsel really need to understand that a brand is not just a trademark or collection of trademarks. For my company, it is part of our culture. Understanding your client’s needs is more than simply knowing how to prosecute a trademark application. I look for counsel who understand our business needs, including handling IP matters efficiently, but also who are interested in learning more about my company to assist me with our IP needs.

What are you looking forward to most at the INTA Annual Meeting this year? Are there specific sessions you’re interested in? How long have you been attending the meeting?

I am the project team leader for the In-House Counsel Workshop, which will be held on Sunday, May 23. I am very excited for that program ... we have great speakers and the topics are very interesting. I always enjoy all of my time at the Annual Meeting, and really take advantage of every class I can! My first Annual Meeting was in Denver in 2000.

What is your favorite thing to do in Boston? What would you recommend Annual Meeting attendees do while here?

Although I live in New Hampshire, I work in Boston. I love to walk around Boston Commons on my lunch hour, it is very relaxing. There are so many great things to do in Boston, but because I am interested in history, I think the Freedom Trail is my favorite activity. I also recommend going to Mike’s Pastry in the North End—they have the best desserts!

Origin of a brand name

In 1996, company co-founder Glenn Rothman found an unusually cut diamond in Belgium featuring a “hearts and fireburst pattern.” He named it the Hearts On Fire diamond.