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Interview Scott Paintin, Western Union

Scott Paintin is in charge of protecting intellectual property for Western Union, including the Washington D.C.-based Travelex Global Business Payments. James Nurton spoke to him.

What is your background?I’m Vice President and Senior Counsel for Western Union and have been with the company for nearly eight years. I’m involved in the company’s IP matters, and I also have responsibility for supporting the marketing teams in the Americas, as well as the corporate affairs and privacy and data security functions.

I added IP work to the variety of work I handle in 2006. It was a very natural progression as I had been supporting marketing teams up to that point so when we spun off from First Data, it made sense to add IP, given my experience with trademarks and copyrights in marketing.

Was IP new to you then?It’s something I’ve picked up over time. I didn’t focus on it previously, other than in relation to the marketing work. Now, quite a lot of my time is devoted to IP, given our portfolio. We have over 1,400 trademarks in 200 countries and territories, and we handle copyright and patent work, as well. I have five people on my team.

What kind of trademark work do you handle in-house?Over time we’ve tried to bring more work in-house, as many other companies have given recent economic times and budget constraints. We use outside counsel for routine maintenance and interacting with foreign associates and also for the more challenging trademark and copyright matters. We do a lot of clearance in-house, but if it’s a grey area, we’ll engage our outside counsel to get an opinion, as well.

What are the biggest issues you face?The issues that we face are not very different from those faced by other famous brands. We monitor the Internet for unauthorized use of our marks and take action where there is a likelihood of confusion, dilution or tarnishment. We also do some trademark licensing, which we handle in-house, including with movie studios where we’re asked to include our trademark or logo in one of the scenes. It’s product-placement type work. We haven’t actively sought it, but studios have approached us. A cross-functional team internally looks at each request and decides whether we want our brand associated with the movie or the particular scene. Usually, we are able to see the script before we decide.

Other challenges come from operating on a nearly-global basis, and the laws being different from one country to another.

What are the major brands?Our core marks are WESTERN UNION, the initials WU, our telegraph pole logo and our yellow and black trade dress. Some of those date back to 1856, when the Western Union name was introduced, signifying the union of multiple telegraph companies, including those in the Western-most regions of the U.S.

Is it an advantage having such a long history?I think it’s an advantage. We have famous marks around the world, and that gives us extra tools when it comes to taking action against others who have inappropriately used our marks. We run into a number of scenarios where people are trying to use our marks. The details vary. In a lot of cases, it involves companies trying to use marks in connection with financial services, but not always.

Do you have particular challenges online?The Internet does present challenges in that it makes it easy for somebody to copy our materials, and that is a big challenge. There’s a fairly common misconception out there that if you find something on the Internet, you’re free to use it however you want.

Over the years we’ve put tools in place to monitor uses that we think are problematic. We’ve run across all kinds of challenges, from domain names that incorporate our marks to copying copyrighted materials from our webpages to using our marks in a manner that’s not authorized.

With the tools we have in place, we usually get a pretty good sense of when that activity is happening and can deal with it internally or sometimes get outside counsel involved, as well.

Do you have to make a lot of defensive domain name registrations?We do have some, but over the years we’ve taken steps to decide which ones it made most sense to keep and which ones to let go. So the defensive registrations today are not a large component of our domain portfolio.

What about new gTLDs?We’ve been monitoring that and have had a series of conversations with our senior business leaders. Not surprisingly, we’re not in a position to say whether or not we have applied yet.

What qualities do you look for in outside counsel?We have trademark counsel in the U.S. that we’ve been using for years and are very pleased with the services we’ve gotten from that firm. For matters outside the U.S., we go through that firm as they have an extensive network of foreign associates in the countries in which we operate.

What makes them good?First of all, the managing attorney is outstanding, and she is a great business partner for us. She alerts us to appropriate matters, and we’ve developed a good working relationship with the firm over years. They also have a deep understanding of the business.

What’s the connection with Travelex?We purchased Travelex Global Business Payments last year, and the services provided are very similar to those provided by another company we bought, Custom House. Both companies focus on cross-border business-to-business payments, including making payments and managing foreign exchange exposure. One of the tools is for law firms, and we always have a booth at the INTA Annual Meeting to showcase those tools.

So you have a license to the TRAVELEX brand?There is a license agreement associated with the acquisition. We’re in a rebranding effort right now, but we’ll be using the Travelex brand for a bit longer while that’s going on.

Do you have any other major brands?We do have ancillary brands that are more regionalized, such as VIGO and ORLANDI VALUTA, and PAGO FACIL in South America.

Is there a move towards global branding in the industry?I think so. Our focus in recent years has been to concentrate on the core, and we began an exercise several years ago where we really focused on the WESTERN UNION brand and developed sub-brands under that core.

What do you like about IP?I love the diversity of the work. My team and I support all aspects of IP on a global basis. That keeps the work very interesting.

What advice would you have for someone considering working in-house?I’d say make sure you have good outside counsel, and use every opportunity as a learning opportunity. Also make sure you remain close to the business, understand the strategy and where the company wants to take the brand and logo and any new products or services that might be introduced, as well as acquisitions. Also, have a good working relationship with the business teams.

What other IP work do you do apart from trademarks?In addition to trademarks, I deal with copyright, patent and trade secret matters on a global basis.

Have you been affected by patent trolls?We really haven’t seen anything like that relating to our core business. We’ve been fortunate in that respect, but I know a number of other companies that have been affected.

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