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Interview: Danielle Criona, Senior Counsel - IP, Roll Law Group

Danielle Criona

Roll Law Group advises Roll Global, which owns many well-known food products. Danielle Criona, Senior Counsel – Intellectual Property, explains some of the trademark issues she faces.

Danielle Criona

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

I have been practicing for almost 16 years and have been with Roll Law Group PC and its predecessor Roll Global for six years. In the prior 10 years of practice, I had been at both big international firms with IP groups and IP boutique firms.

What does your role entail? How big is the trademark team?

My practice includes advising the Roll Global companies on all intellectual property issues they face: from diligence on new acquisitions to product and brand launches; from social media and domain name issues to television advertising clearance and set issues; and from trademark opposition, cancellation and infringement litigation to trademark and copyright prosecution and licensing, worldwide. I work with foreign counsel in over 60 countries and have been involved in all aspects of infringement litigation, both domestically and internationally.

In addition, I am on cross-function teams for larger corporate projects and manage our trademark team which includes a Trademark Counsel, Trademark Administrator/Paralegal who focuses on prosecution and a Trademark Paralegal who focuses on enforcement. I am also co-counsel on all of our federal court and TTAB litigation and work very closely with our in-house litigators on those matters, reviewing and revising pleadings, participating in strategy meetings, talking with experts, and so on.

What are the biggest issues you face?

Right now, two of the biggest issues are foreign issues and dealing with the pros and cons of the Internet. Regarding foreign issues, on the protection side, some of our marks are not particularly easy to get registered in foreign jurisdictions so we often have to gather sales and marketing information from our businesses just to get trademarks registered. The business wants to focus on business, not legal issues, so balancing business needs and legal needs can be delicate. On the enforcement side, there are many jurisdictions that very narrowly interpret the similarity of goods issue and almost always require the International Class (and sometimes also the Sub-Class) of the offending mark to be the same as the asserted mark. This is difficult for our businesses to understand when a much broader view of the similarity or relatedness of goods is taken here in the United States. For instance, in the United States, with rights for processed fruits I can often stop use on fresh fruit because many manufacturers produce both, making it a market reality, and our rights will be effective in our natural zone of expansion. In many foreign jurisdictions, that is not the view. The Internet, on the other hand, seems like a blessing and curse in brand enforcement. We are able to track down infringers far more easily than we used to be, but an infringement can “go viral” in minutes. It’s nearly impossible to remove every single infringement from the Internet. 

How many markets are you in?

We have trademarks in almost 60 countries and actively sell product in about 55.

What brands and how many trademarks do you have?

Roll Global owns WONDERFUL pistachios and almonds, FIJI water, POM WONDERFUL pomegranate juice and fruit products, TELEFLORA floral service, HALOS and SWEET SCARLETTS citrus fruits, JUSTIN and LANDMARK wines, among many others that are not for the general consuming public. Our portfolio is over 2,000 trademarks, pending or registered, worldwide and our domain portfolio is close to 15,000 domains.

How do trademarks fit into the company’s overall strategy?

I can’t say our trademarks fit into the company’s overall strategy but I can say that our companies are very proud of their brands and understand the need and importance of protecting the trademarks, copyrights and all other intellectual property associated with their brands.

What do you use outside counsel for and what is the most important quality you look for in outside counsel?

For United States issues, we only go to outside counsel for particularly complicated issues. In that regard I need outside counsel to be responsive and available to weigh in on a moment’s notice. For our foreign counsel, we really need counsel who actually wants to understand our businesses and the need to protect our trademark space for where the business may go in five, 10 or 20 years (both in business/product and geographic expansion). We aren’t just protecting our rights for today, we are planning for our future. Many outside counsel, unfortunately, simply don’t look at brand protection and enforcement that way.

POM Wonderful was involved in a high-profile Supreme Court case last year, and you are involved in other litigation with companies over product names. What are your biggest challenges in protecting your brand?

Oftentimes it seems like the opposing counsel is not doing their “homework” in advising their clients as to the importance of our brands to us and our diligence in protecting them. We’ll have someone continue to fight us on something they put $100,000 into when we have $100 million invested in the brand. Maybe it’s the party on the other side who doesn’t realize the value but it seems like it often isn’t until half-way through a case that the opposing counsel finally realizes how serious we are in protecting our brands.

Has your trademark strategy changed in recent years?

We have become more broad-thinking both from a geographic perspective and a product line perspective. Our companies are constantly growing and we have adjusted our brand protection and enforcement to expect the unexpected.

What do you enjoy most about your role?

I love that I never, ever have the same day twice. Every mark, every infringer, every corporate deal, every nuance, every meeting, every issue brings something new to the table. Even though I am often teaching others about the application of the law in the situations that arise for us, I have a plaque in my office that says “Ancora Imparo” which means “I am still learning” and is said to have been spoken by the great Italian artist Michelangelo on many occasions. This is the beauty of my role: it is interesting, exciting, engaging, challenging and never involves the same thing twice.

What are you looking forward to hearing about in discussions at the INTA Annual Meeting? How long have you been attending the meeting?

I look forward to hearing updates in the different regions and love meeting with my foreign counsel from around the world.

What changes to the trademark system would you welcome most?

A more global approach. I think we need to take into account a mark’s reputation and strength in regions instead of just in the particular country at issue and I think reputation in the home country should be given more weight than it’s currently given, particularly if a brand/mark is being used beyond that home country and is expanding regularly.

What impact is the launch of the gTLDs having for your company?

Not much for our companies right now. There are a few domains that we’re registering—some to possibly use, some for defensive purposes—but it remains to be seen how much this will really impact consumers.

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