INTA New York: How brands balance enforcement with good PR

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

INTA New York: How brands balance enforcement with good PR

Panellists convene remotely to discuss how to balance enforcement with reputation

Brands should form good relationships with third-party websites, and consider a phone call before a cease and desist letter, according to panellists

Speaking at a virtual INTA conference on Tuesday, panellists from Mastercard, Unilever, Debevoise & Plimpton and Brutzkus Gubner reflected on how brands could strike a balance that would allow them to enforce their trademarks and avoid public relations scandals.

Cathy Lueders, assistant general counsel at Mastercard in Purchase, New York, said on the panel called ‘Enforcement in the court of public opinion: brand strategies in unpredictable times’ that the PR landscape had changed since she started practising law.

“If I look back at my 25 years as a lawyer, you would get a watch notice or see a potentially infringing mark, draft a cease and desist letter, mail it, wait for the response, and there would be a letter writing campaign back and forth.

“Today, you really have to be careful in enforcement. If you send a cease and desist letter, it could immediately get posted on a social media site and start a barrage of negative comments.”   

Steve Beale, trademark counsel at Unilever in London, said that while the approach to trademark infringement had changed in some ways, it was – in other ways – the same as it has always been.

“You need to understand what you’re up against. You need good organisation and to be working with the right people. When I’m feeling out of control, I go back to basics.”

He added that companies that develop a brand protection strategy should focus on contracts, advertising, influencer agreements, design agency agreements and confidentiality. “Good process should not be abandoned because of the need for speed or agility.”

Brands might not be able to control everything from a central point, and might have to delegate responsibility throughout their organisation or to external teams, he added.

Jeffrey Kobulnick, partner at law firm Brutzkus Gubner in California, said brands should be mindful of what kinds of activities they send cease and desist letters for. “Not every use of a trademark without permission is a violation of trademark owners’ rights, so you really have to look at what’s going on.”

Kobulnick said brands should consider whether they are dealing with a major competitor or with an individual who might not be as savvy when it comes to IP. Sometimes, instead of sending cease and desist letters, brands can make a phone call, send an email or look on LinkedIn to see if there is a mutual connection before reaching out, he added.

Firms should also be courteous in their interactions with third-party websites when dealing with infringement on their platforms, he said. He added that such websites can sometimes help brands with trademark infringement issues and that there doesn’t need to be an adversarial relationship between the two sides.

“You can get more assistance by partnering with third-party websites that might not be the true culprit you want to go after,” he said.

Panellists added that brands should also be aware of how they use social media in enforcement. Megan Bannigan, New York-based counsel at Debevoise & Plimpton, noted that attorneys will sometimes find comments on social media and review websites that suggest that one brand’s similarity to another caused consumer confusion.

She added, however, that she had seen cases where the poster of the comments actually had some connection to the plaintiff and that the plaintiff had attempted to manufacture the confusion. Both plaintiff and defence attorneys should try to get to the bottom of where these comments come from, she said.

The INTA 2020 New York Conference, Brands in Society: Their Influence and Responsibility ended June 23.

more from across site and SHARED ros bottom lb

More from across our site

Clemens Heusch, head of global resolution and dispute resolution at Nokia, tells us why open conversations – and respectful challenges – lead to the best results
Siegmund Gutman, who joined Mintz one year ago, explains the firm’s approach to life sciences litigation and what it means for hiring plans
The merger of two IP boutiques could prompt others to follow suit and challenge Australia’s externally funded firms
Law firm leaders say they are eager to make the most out of the market following a 'surprising' survey on in-house interest in IP monetisation
A defeat for AstraZeneca and Open Innovation Network's 20th anniversary were also among the top talking points this week
Nigel Stoate, head of Taylor Wessing's award-winning UK patents team, tells us about his team’s UPC successes and why collaboration is king
Camilla Balleny, who spent a decade at Carpmaels & Ransford, will become the firm’s first head of patent litigation, Managing IP can reveal
Leaders at the newly merged firm Jones Maxwell Smith & Davis reveal their plan to take on bigger firms while attracting more clients and talent
Charles Achkar, who will bring a team of two with him, said he was excited about joining ‘one of the few strong IP boutiques’
Andy Lee, head of IP at Brandsmiths and winner of the Soft IP Practitioner of the Year award, tells us why 2024 was a seminal year and why clients value brave advice
Gift this article