Interview: Protecting the Penguin

What is your day-to-day role?

I am the sole IP counsel. That means I work exclusively on managing the trademark portfolio as well as working closely with the licensing division to ensure that we have the requisite rights to commercialize the brand domestically and internationally.

Probably more than 70% of my time is spent on licensing activities and agreements and then the remainder is spent on managing the portfolio, ­enforcement matters and also managing the marketing and advertising function.

How big is the trademark portfolio?

We have about 5,000 active files.

How does IP fit into the company’s strategy?

It is the center. Everything we do fits in with the brand. One of our more well-known brands is the ORIGINAL PENGUIN brand. So it is all about identifying what is the classic look of an ORIGINAL PENGUIN polo shirt and ensuring we have the requisite protection not only for the PENGUIN mark but also any other properties that might come with the apparel we are selling.

What are the biggest challenges in your job?

Just educating, not only the trademark offices globally but also domestically about our PENGUIN mark. We have a U.S. registration for PENGUIN by itself, but our brand is ORIGINAL PENGUIN BY MUNSINGWEAR and that trademark has been filed worldwide. There are certain territories where we don’t own it and it was sold before we acquired the brand.

That is one of our preeminent brands in addition to the PERRY ELLIS brand. But PERRY ELLIS in terms of enforcement is not as challenging. Everyone wants to do something with the penguin, being a cute little animal. They may be selling a beverage that has a logo with a penguin but ultimately they will want to sell T-shirts that include it. So it is an uphill battle for us in terms of enforcing and educating the consumers as well as the trademark offices that we own the rights to the penguin.

What trademark issues concern you the most?

It is more about what the various trademark offices are doing, whether it is new law, the length of time it takes them to decide on actions, and whether we are getting uniform treatment in various countries. Everything I do focuses on ensuring we have a uniform strategy in the various offices and if there is a particular region or country that seems to deviate from that then we are careful to catalogue and adjust our strategy to try to deal with the variances in those countries.

For example, in Brazil there may be just an extraordinary length of time for us to get a decision and there are multiple levels of appeal. We have had actions going on for nine years that are just now getting resolved. Even Chile, where we thought we would get a decision long ago and we have been successful, there seems an inordinate amount of appeals available to the various companies where we have a challenge. Those are things that are top of mind when we are working on our portfolio internally and developing our strategy.

What is the company’s strategy for domain names?

For a company like Perry Ellis we were more focused on ensuring we were part of the trademark clearance system and had registered all our registrations. We have been successful at getting any domain names back that have been registered but also getting notifications of those during the sunrise period that we believe are important. I work with our IP team as well as our e-commerce team to ensure we have the appropriate coverage, balancing being proactive versus our budgetary concerns. You can’t own every domain name which is why you end up enforcing. Someone will get something that perhaps we should have considered but for financial reasons we thought wouldn’t be so much of an issue. If ultimately they would register something that advertised apparel on it then it becomes a problem. That has been a big part of our activity in the past year.

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