How long have you been with AT&T?
I’ve been with the company almost 13 years and I oversee trademark and copyright matters. Prior to that I was in private practice for about five years and before that I was at the USPTO as an examiner.
I’ve had a little bit of everything. The goals of my jobs have been very different, but on the law itself there’s overlap. The focus is different. In the government it’s very narrow, in private practice it can be anything but you’re a bit detached from the client, you don’t really understand the business. In-house, you have to interact with the entire company. I enjoy being in-house, though there are different pressures and needs to address.
I’ve done quite a few things with INTA and am on the project team for this year’s Annual Meeting. INTA has given me the opportunity to expand my knowledge base, has been important for my career and enjoyable as well.
How big is your team?
I have two paralegals and a manager, and we have some other attorneys for back up. One challenge is we’ve never been together. We’re spread out coast-to-coast in the U.S. (West Coast, Southeast, Northeast and here) although I have been fortunate to meet them all at different times. We also have lawyers overseas so we occasionally get some stuff from them.
What does your work cover?
It’s mostly trademark. The copyright aspect is mostly about can we use this content, whether it’s something written or music? We’re the largest ISP in the country so that generates some copyright work.
In trademarks we handle everything—advice, counselling, clearance, prosecution, maintenance, enforcement. In litigation we also get involved when either defending or asserting our rights and I oversee that.
What are the main brands you have?
The focus is on what business people call a master brand strategy approach, so AT&T is the anchor. Like many companies, at least in the United States, the logo itself is now being used instead of the logo and the text together. Another important brand which is a brand new business is U-VERSE.
It’s part of the consumer trend and perception to use the logo on its own: they can recognize a logo just as well and that shows your marketing and advertising efforts are paying off. People can identify the source without the aid of any text.
Are there risks to using the mark that way?
I think there are, but it’s a trend that is increasing. In those pockets where you don’t have it that’s fine and you segment where you can. Overseas, for example, we don’t really do it.
How many markets are you in?
We have registrations in every country where we can, maybe 200 jurisdictions. We do have personnel in different countries. We’re more business-to-business focused overseas, supporting multinational companies with their communication data needs.
Are there any countries where there have been particular problems?
Fortunately there has been nothing extremely difficult as we’ve had the brand in place for years now. You do see issues such as the length of time to get a registration in certain jurisdictions—I’m still waiting for some registrations from our last rebrand in late 2005, early 2006. That includes some countries in Africa, southeast Asia and India.
You just have to wait. For a brand new brand, it’s a dilemma. For us, we already have existing registrations for AT&T so there’s overlap and it’s less of a problem.
Are you vulnerable to counterfeiting?
We have a big consumer base. We don’t have the volume of luxury brands but we do have counterfeiting issues that arise. I will get notifications from either U.S. Customs or overseas Customs especially in those countries where we have manufacturing, often via our vendors and suppliers. For instance, I may get a communication from China or India where a supplier has factories and the Customs officials will hold release of those products, as they often want verification from the brand owner that the goods are legitimate. You need to provide a list of brands for verification. That generally happens at the accessory level, rather than phones.
The silver lining is where Customs is paying attention and make you go through hopes, so while it’s a pain, at the end of the day you’re happy they are checking. But the flip side is: are they stopping the real counterfeits? That’s what you hope. You don’t know until they appear on the street or you get tipped off. We are luckier than say luxury goods as our devices are a high price point, but difficult to copy. Accessories are easy to copy and we do see that, but it’s not really a high-margin business.
Online it’s pick and choose. The implementation of the new gTLDs is a big challenge. At the second level I think a better balance between brand owner rights and legitimate means is needed. There are so many possibilities of using domain names, and it wouldn’t hurt to just permanently block out certain brands.
The Clearinghouse is like an advanced early-warning system and that’s it. That provides you with an opportunity to participate in sunrise registrations where you have to pay to register or you can object to registrations. The funny thing is it’s not a permanent hold so that’s the downside: you’re paying more money into the coffers of these registrars.
There are so many other variations that people can use for legitimate purposes but a whole new business model or industry has developed for domainers, trafficking in made up names that correspond to the protocol of numbers in the domain space.
AT&T has not applied for a gTLD.
What qualities do you look for in outside counsel?
Value and quality. The quality is work product, accessibility and getting it right first time. That means understanding what I do need and what I’m asking for: I don’t want extra.
The cost depends on the work: in many cases, it will be the cheapest or something that you feel is worth it. On the other hand, for something very important, value can also be giving you the effective advice you need to find a solution. Underneath that is cost. Even though we’re a big company it will be rare that we’re looking for the best legal team regardless of price. That situation is only for a high-stakes issue.
There’s a new reality in the corporate world: budget reductions are permanent. Law firms that fail to adjust to that will have a much more difficult time. When a company asks for a discount off the current rates, the attorneys view that as the normal rate, but that’s our baseline. We look for discounts off of that—that’s the pressure we have. That’s why hourly billing doesn’t really work unless the firm finds a way that makes sense and provides them a margin that is sustainable while providing effective advice to clients.
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