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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. 

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