Why trademark attorneys should respect privacy

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Why trademark attorneys should respect privacy

Katherine Tabor, assistant general counsel at Office Depot in Boca Raton, Florida, discusses with Michael Loney why trademarks and privacy are increasingly overlapping and points to the biggest challenges in her role

Katherine Tabor

What does your day-to-day role entail?

I’m director and assistant general counsel of IP and privacy. On a day-to-day basis I manage the Office Depot and OfficeMax trademark portfolios. I work with outside counsel to make sure all the renewals are done, I work with our private brand team as well as e-commerce and other business groups to clear trademarks for use in advertising, packaging, print materials and brochuresPreview. I review product packaging. I also do some agreement reviewing of IP provisions in contracts and the general due diligence work relating to trademarks.

That’s the trademark hat. Then I also have the privacy hat. 

What are some of the overlaps between trademarks and the privacy side?

There are issues that overlap. Ultimately, if there is a data breach your brand is at issue. Your customers and your employee data is at issue but fundamentally it really affects your brand. That’s why I think it is important for trademark attorneys to understand the privacy side a bit more.

The main issue is how to control the damage to your brand if you have a data breach. If you have a well-planned security program and privacy program in place at your corporation then you are going to be much more likely to be able to handle things more easily and ­potentially on a more expedited basis, and in turn reduce the risk and damage to your brand.

How many trademarks do you manage?

Well over 1,000 by the time you add in the global portfolio. We have business operations throughout the world in Europe, Australia and New Zealand, Asia and Canada.

What are the biggest challenges in your role?

One of the biggest challenges when I started was that the company had just gone through the Office Depot/OfficeMax merger [the merger was completed in November 2013]. So it was trying to figure out what the portfolio actually consisted of and then working with the private brand team to understand how we were going to use the Office Depot marks in conjunction with or without the OfficeMax marks.

Not only did I have one portfolio, but a second as well, and it was a new portfolio for the company as a whole. There was not anybody here who could provide any historical knowledge or usage relating to the marks. So that was something I had to get up to speed on relatively quickly.

On a day-to-day basis, it is really keeping track of everything, because there are some days when I get multiple requests for trademark searches and clearance work. The deadlines with much of the work I do are really tight, so that seems to be one of the biggest challenges I have.

What are the trademark issues that are specific to your industry?

For any company that has a website there are always issues relating to unauthorized people setting up websites that use your name. There are still a lot of internet related issues that we have to deal with.

Tell me a little bit about the team? What do you use the outside counsel for?

I am the team. I do have a paralegal and there is a second paralegal who has worked on intellectual property matters in the past. But for day-to-day matters there is really only two of us. It is a small team, so we are very busy. We do things in house but, because there are only two of us, we tend to use outside counsel more for trademark searches and renewals and also to assist with foreign matters.

How much do you deal with international matters?

Quite a bit. I am responsible for the trademark portfolio globally so I play a part when there are new marks that need to be cleared in Europe, domain names that need to be registered, or if we find out that a third party is using one of our tardemarks in a store in another country, or online on a country-specific website. I generally work with the business people and we do have counsel in most of our foreign countries. 

more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article