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INTA 2019: “Be a little less lawyerly,” says Johnson & Johnson counsel

Ellie Mertens, New York

Johnson & Johnson's chief trademark counsel shared some collaboration techniques for lawyers and marketers who, despite working together, speak different languages

matrix-300Modern business people work in a matrix of teams and functions. “Rarely are we performing our roles in a vacuum,” explained David McDonald, chief trademark counsel at Johnson & Johnson, at the INTA Annual Meeting’s “Marketers are from Mars” panel yesterday in Boston.

Adopt a larger lens

McDonald said that the biggest challenge of working in this matrix is that everyone is responsible for their area of expertise, “so it’s often not clear who’s leading a project”. In order to be most effective as a trademark counsel, he recommended zooming out and understanding business objectives at a high level and not getting too lost in the weeds of a specific task.

“Early in my career,” said McDonald, “I was too quick to push the trademark agenda and look at issues through a trademark lens. As I’ve gotten older, I realised that my role is to support the business and not push an agenda.”

The other challenge of communicating in the matrix is that the business wants to hear unified legal advice from one lawyer. At J&J, said McDonald, “we have 450 lawyers, with specialists in everything.” In order to unify, they have a strategy: “We call it ‘walking the square’ – we’re not expected to stay in our lane.” For example, in his IP role, McDonald is expected to proactively reach out to regulatory colleagues if there are potential regulatory concerns and incorporate their advice into his recommendation to senior management. “They want to see us as one legal,” he explained.

There is often a perceived tension in the relationship between lawyers and marketers. Trademark lawyers want brands to err on the side of distinctive – and therefore protectable – marks, whereas marketers generally want to go for more descriptive, less protectable names. McDonald that it doesn't have to be that way if the teams can co-create solutions, be reasonable, and put stereotypes aside.

McDonald shared his experience of launching a sub-brand of the baby formula Similac, which is intended to provide spit-up relief. “We didn’t have a lot of budget to spend on this, and marketing insisted that the name of the formula needed to communicate spit-up relief – to contrast with other sub-brands.” Calling it “Spit-up Relief” made “all the sense in the world in this instance,” according to McDonald, while pushing for a distinctive name simply didn’t.

Consequences of leadership

On the role of lawyers, McDonald said: “We take in information quickly, we speak logically, and we’re coached to be solution-oriented.” These attributes are incredibly valuable when applied to specific business problems, but in some contexts can actually be detrimental. McDonald looked at it through the “influencing theory,” in which authority figures are not properly checked because of their position. A classic example would be a doctor who makes a mistake but the nurses don’t correct them because of their title.

In a matrix of 450 lawyers in a much larger business, it can be necessary to take charge on an IP issue. However, exercising authority can create resistance. In order to avoid the influencing problem, McDonald recommended taking extra care to be collaborative rather than authoritative. He outlined the risks of the authoritative approach: “1) We might be wrong – maybe we missed something that would matter to the business. 2) It conveys superiority or a lack of empathy, which defeats the purpose of trying to get invited to the table at the concept phase of development.”

Invitations to the concept phase by other teams require trust, which must be earned. Marketing teams and others can often see lawyers as risk-averse naysayers so it’s important “not to be seen as a checkpoint,” said McDonald. He also warned counsel that a solution-oriented attitude only gets you so far.

“Even when you suggest viable alternatives,” said McDonald, “it still affects the timing and resources in a material way. There’s always the risk of a reaction of frustration when we offer our advice, because it’s asking the business to change something that might be meaningful to them.” While alternatives may be legally advisable, it’s important to have sympathy for where other parts of the business are coming from.

Getting on the same page invariably requires a conversation about risk tolerance. It’s a cultural question, but it’s also context-specific. For example, if marketers are looking to launch a digital campaign, more risk is acceptable because it can be changed or rescinded immediately. On the other hand, physical marketing campaigns such as packaging have less acceptable risk and require much more thorough vetting, because they can’t be changed.

Practical tips

  • Coordinate market research and trademark actions

Not every marketing opportunity requires a strong trademark, so when should trademark counsel get involved? “Understand what the research is that’s being done, how long it’s going to take and how much it costs," McDonald recommended. "Then sequence that with what you know about the timing of trademarks, and don’t waste resources.”

  • Empower business partners to self-help

Social media is perhaps the best example of how this can be useful, because there are constant actions on those platforms that cannot always go through legal. While decisions on social media are incredibly context-dependent, IP education and legal guidelines are a good place to start. For example, McDonald shared his guideline: “Don’t randomly mention a celebrity we have no relationship with. If a celebrity does give one of our brands a shout-out, don’t put words in their mouth.”

  • Use private domain name search tools

Many public domain name search tools sell search data. If a name gets a certain number of hits – presumably because it’s being sent around as an available option across business teams – by the time a decision is made, the platform has sold it and the name is no longer available. “It’s pretty nasty,” said McDonald. He advised: “Use a private search engine that won’t sell that data.”

  • Consider more than registrability

Perhaps a brand is technically registrable, but there are other considerations. Is the concept globally transferable? Is the name globally pronounceable? What are the cultural associations with the proposed name, if any? Also, in heavily regulated industries such as pharma, names are often reviewed and rejected for health and safety reasons. McDonald noted that “umbrella branding is a growing phenomenon in Europe specifically” and that regulatory authorities are responding by introducing a requirement that brand names are different depending on the underlying drugs involved.

From considering stakeholders in regulatory agencies to senior management and cross-functional colleagues, “my desire is to be a little less lawyerly and be a little bit more of a marketer,” said McDonald.


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