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Interview: Jill Abasto, Senior Trademark Counsel, Qualcomm



Michael Loney, San Diego


San Diego-based semiconductor company Qualcomm receives a lot of attention for its patent activities, but it also has about 3,000 trademark registrations and applications. Senior Legal Counsel Jill Abasto explains its trademark strategy.

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

I have been at Qualcomm for almost five years. I lead the trademark and copyright legal team for Qualcomm and for our subsidiaries around the world. I have a team of two other lawyers and two paralegals.

Before I came to Qualcomm, I spent about a year at a big firm in the Los Angeles area, then 12 years in a really small IP boutique firm.

Before I came to Qualcomm, they didn’t have any in-house trademark or copyright attorneys. Before that, patent attorneys were handling the trademark and copyright matters. The five years feels like five days. It has gone really fast. We are so busy every day, but it has been crazy fun.

The one piece we don’t do on the copyright end is that we do have a separate open source team, but otherwise copyright and trademark issues go through my team. We don’t do our clearance in-house but we manage clearance, registration and prosecution. We use outside counsel to manage the portfolio and foreign counsel. We review marketing materials. We handle due diligence for acquisitions.

We handle licensing for trademarks and copyright issues. We work with our litigation team here on trademark disputes and domain name disputes. We spend a lot of time training and educating around the company.

It sounds like you had to define your role?

It was definitely challenging. Internally the big challenge was just making everyone aware that I am here as a resource and to come to me. During my first two years here, I spent a lot of time establishing trust internally. When I came in five years ago and said no you can’t name your product XYZ, I spent a lot of time explaining my reasons why the name they wanted was a bad choice. The interactions have changed over five years by establishing trust that I know what I’m doing, that I have Qualcomm’s best interests at heart and that I am not just the person who comes in and says no to everything.

What are the company’s biggest challenges around trademarks?

The biggest challenge that Qualcomm faces has been when we are naming something it tends to be something that is new and innovative. We aren’t using descriptions in the ID manual because we are probably naming something that doesn’t exist yet. So we end up in a lot of back and forth trying to explain what our products are to the USPTO or trademark offices to get our applications and descriptions through.

It is about educating the trademark examiners around the world. We have to go back and forth with them to explain what the product really is. We’ll get a question from them saying: “This doesn’t seem to exist, it can’t be what you meant.” It is a delicate balance for when we are ready to actually make that product public because when we file a new trademark application with a name for a new product that is a public document. We have to balance wanting to secure the rights with when we are ready to go out there and say: “This is the next product that we are making.”

Our portfolio includes about 3,000 active applications and registrations around the world at any given time in probably about 180 countries. We have become more consumer facing over the years, certainly the past five years.

The company has also come to understand the importance of branding more over the past five to 10 years. The QUALCOMM name is really important to the company, as is our SNAPDRAGON brand, which is our flagship chip.

What do you use outside counsel for, and what qualities do to you look for?

The trademark portfolio is managed by one lead firm and they do our clearance, manage our filings and maintain our docket. They manage our foreign counsel. I don’t talk to our foreign counsel on a daily basis unless there is a real problem. We don’t have the in-house bandwidth to do that.

I trust my U.S. counsel’s opinion quite a bit on what foreign counsel we use. When I inherited the portfolio our foreign counsel who were handling the patents were probably also handling the trademarks. Over time we have changed that quite a bit to make sure the trademarks are being handled by trademark attorneys instead of patent attorneys. Our foreign counsel have to also be sophisticated enough to understand our products because that can be quite challenging, especially if you are in a remote location, you don’t really know who Qualcomm is and what we make, and we are sending these descriptions that probably sound very strange. I need them to understand, so I am looking for someone who is invested in who we are as a company and what are objectives are in our filings.

How long have you been going to the INTA Annual Meeting?

I started attending the Annual Meeting when I started at Qualcomm. I love it. Every year that it is in the United States we do a global foreign counsel meeting. It is a really great opportunity for us to get all of our foreign counsel in one room with us to make sure they understand what our objectives are for the year, what they can expect to see from us on the trademark end to the extent we know for the coming year, and what our expectations are. We try and demo a few of our products. It is such a good opportunity to meet with all our foreign counsel and make sure we are getting the best possible representation without having to travel to every country.

Are there any changes to the trademark system you would like to see?

There are issues with the Madrid System that make it difficult for a company to use. When I was in a small firm I used Madrid a lot more than I do now that I am in a big company. We have the ability to have a network of foreign counsel in a way that makes it easy enough to go directly to foreign counsel for individual filings. In a small firm that can be harder. So there are definitely changes that can be made there. We don’t file through Madrid very often because we know we are going to have a back and forth over the description.

There are changes that could be made that would make it more useful because I can see the value of having an international registration that is easier to manage but it doesn’t really work in our scenario yet. It’s particularly challenging when your home country is the U.S. that requires use.


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