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Protecting the mark behind the sound

Lily S. Cheung of Dolby Laboratories Inc. explains the difficulties that being an ingredient brand for other companies can pose and why she is so fond of San Francisco’s cable cars. By Fionn O’Raghallaigh

What are your key brands?

At center stage is the DOLBY brand and it is usually accompanied by the double D logo. And then we have core technologies that have core sub-brands such as DOLBY DIGITAL, DOLBY DIGITAL PLUS and DOLBY TRUEHD. Dolby technologies can be found across the whole entertainment ecosystem—in broadcast, cinema, mobile, consumer electronics and PC markets. Those are our key brands. We have a number of others, but they are the biggest ones.

What is your trademark strategy?

Our strategy is basically to build on the strength of our house marks DOLBY and the double D logo. Most of our technology logos or secondary marks are used in conjunction with the double D and DOLBY trademarks. So we register our house marks pretty widely.

How long have you been with the company?

I’ve been with the company for 28 years.

So how has the company’s strategy changed over that period?

I would say the main trademark strategy has always been to focus on the DOLBY brand. We have in the past introduced trademarks that were a little bit more distinctive that kind-of took off on their own, which is difficult. So we just want to focus on the DOLBY mark.

What are the major countries for your company?

Because we license our technologies throughout the world, all the countries are important to us. But the main markets are the U.S., Japan, China, Taiwan and Europe.

Do you register your trademarks in all of those countries?

Yes, we do. We actually have registrations in almost every country, except for very emerging ones I guess. When we license, we actually license our patents, our copyright, our knowhow, and our trademarks together. So it’s a hybrid license in a way.

So describe your role in DOLBY?

My role is to direct worldwide filing, prosecution and maintenance of our trademarks. I’m also responsible for patent and trademark operations.

How do you find the difference between the patent and trademark sides?

It’s different. Trademarks are more fun, in a way. But I enjoy the patent side because it is very technical. It takes a lot of people to actually apply for a patent. You need the inventors to come up with an idea, and then you need someone to write what the application is—you need very competent people all the way through the process to file the applications.

What is your background? How did you move into IP?

It is interesting because I am kind of unique in my field, because my background is in business information systems. So when I first started working in Dolby Laboratories, I was working in the licensing department. And I was managing our licensee agreements and our relationships with the licensees, and also licensing operations, developing and managing the operations.

Then after a few years in that position, I was asked to also manage our patents and trademarks. So I have been doing that ever since 1986.

How big is your team?

My team with regard to trademark issues is one trademark paralegal and me. And then, the rest of my team, I have four more paralegals that work primarily with patents, and an assistant. My extended trademarks and patents team includes five patent attorneys, the chief patent counsel, two patent engineers, two patent agents and a coordinator in patent landscaping.

What trademark problems does the DOLBY brand face?

Because we have so many technologies that can be included in a product, one issue that we have is that for a top-of-the-line product, it is sometimes difficult for a licensee to decide which logos to use. Because of that we are moving towards experienced-based trademarks, rather than technology-based marks.

Could you explain the difference?

Experience-based would be more like a surround experience as opposed to this is DOLBY DIGITAL, this is one type of technology. So, in the PC area we have a logo for what we call the Personal Computer Entertainment Experience, and so that is a package with a lot of different technologies and you just use one logo to represent the bundle of technologies.

What issues do you face specific to your industry?

Most of the products with the DOLBY brand go into other companies’ products. So as an ingredient brand we have to try much harder than other brand owners to make sure our licensees use our trademarks correctly. So we produce guidelines, and have a lot of face-to-face meetings with our licensees to talk about that and to keep them up to date and cement relationships.

Do you suffer much IP abuse online?

We have some; I don’t think there is anybody immune to that. With online issues we regularly and actively monitor domain names, so we try to nip the problem in the bud when they are emerging.

There are some domain registrations that contain DOLBY, and we basically monitor them and keep them on a watch-list and see if they enter into trademark abuse.

There are websites offering products that bare the DOLBY mark, but the products aren’t manufactured by our licensees. Sometimes you even find unlicensed products offered in big retailers’ online stores like Walmart.

Fortunately, these big retailers have been very helpful to us, addressing our enquiries about brands that are unknown or questionable to us.

How does a big store take in counterfeits of DOLBY goods?

They might purchase a product like a DVD player and they don’t look more in depth at what is inside the product. They might think this looks like a good DVD player for $29 that we can sell for $129, they don’t necessarily know they don’t have the proper licenses to use the IP.

What would you recommend doing in San Francisco?

I really like the cable cars experience. I would recommend taking the Powell and High Street car to experience the hills and views of San Francisco. If you get a multiple-ride pass, I think they have one-day passes called passports for any transportation, if you get one of them you can take the Powell and High St car and get off on Lombard and walk down the most crooked street in San Francisco.

I think in May it is very ornate with flowers and hairpin turns. I would recommend renting a bike and biking across the Golden Gate Bridge, I think it is one of the really cools ways to see it.

I have an affinity for the cable cars, because when I was going to school I used to take them, it wasn’t a tourist attraction. At that time there were no limitations on numbers in a cable car, so as long as you could find room for a foot you were on. So I used to jump off early to save a few steps to my house, which was fun because there was an element of danger. They bring back good memories.

If you have a car and a day I would recommend the 70-mile drive from Pacific Bay to Carmel and then Monterey and seeing Cannery Row and Monterey Bay Aquarium.

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