Trademark and branding practices offer attorneys a unique blend of transactional and dispute-resolution work. What types and sizes of clients can an attorney in this practice area accept to work with? And how can attorneys get involved with both transactional and dispute-resolution work?

 

More on Charles Bahlert and Lisa Greenwald-Swire.

 

SPEAKERS

Wayne Stacy, Charles Bahlert, Lisa Greenwald-Swire

 

Wayne Stacy  00:00

Welcome, everyone to this week's Careers in Tech Law podcast series from the Berkeley Center for Law and Technology. I'm Wayne Stacy, the Executive Director for BCLT. And we're lucky today to have two of the nation's top trademark and branding experts here with us. We have Lisa Greenwald-Swire and Charles Bahlert, both from the law firm of Fish and Richardson. So I'm just going to throw the the first question out to you to help us understand what's going on. But it seems like when we talk about brand protection, there are really two parts to this story. You know, one of them is creating new brands, and the other is protecting existing brands. So at a high lawyer, what are sorry, at a high level can what our high end lawyers doing in this two part brand protection space?

 

Lisa Greenwald-Swire  00:55

Sure, I'll start and then Charles, you could dive in with anything that I've missed. Wayne, first of all, thank you very much for your time. It's a true honor for us to be here and be able to speak with you today. So what are brands doing to make sure that their new marks are being protected? Was that the question?

 

Wayne Stacy  01:15

Yeah, the new mark protection and then old mark protection.

 

Lisa Greenwald-Swire  01:22

Yeah. So I mean, the general answer, on a high level is clearance searching. So there are a lot of smaller firms out there that will say, Oh, yeah, we'll do this search for, you know, $95. And essentially, what they're doing is going to uspto.gov and Googling sort of doing a direct hit. A real trademark search really goes through all the likelihood of confusion factors goes through sort of similar equivalence, and meaning and commercial impressions, swapping out vowel sounds, really getting to the core of where there could be an issue, either in prosecution of the mark at the trademark office, in the US or globally. We're thinking of meaning, like the iconic Nova, no-go can't go for a car is not such a great brand. We're really thinking through all the issues and meaning and commercial impression and making sure that once we've cleared it, we're really filing it in all the countries where the client thinks they may have business in three to five years. And even defensively in some countries is sort of have this acronym of BRICK, which is Brazil, Russia, India, China, and Hong Kong. And we've seen a lot of enforcement infringement issues in those countries. So those are some key countries. Defensively, we're we're counseling clients to file as well. 

 

Wayne Stacy  02:50

Go ahead, Charles. 

 

Charles Ba