Prominent intellectual property attorney Melise Blakeslee today urged members of corporate boards and CEOs to "take on a high-level oversight" of corporate branding by developing a trademark strategy that keeps pace with today's digital realities.
Online PR News – 08-July-2012 – WASHINGTON, D.C. – Prominent intellectual property attorney Melise Blakeslee today urged members of corporate boards and CEOs to "take on a high-level oversight" of corporate branding by developing a trademark strategy that keeps pace with today's digital realities.
In an article published in the prestigious Corporate Board Member magazine (http://www.boardmember.com), Blakeslee suggests that a comprehensive trademark strategy must have at least four major components.
First, Blakeslee says, directors must anticipate international growth in their business plans. Foreign trademarks often become a source of problems because companies fail to file appropriate applications overseas before doing business in other countries. "Many important territories award trademark ownership to whomever files an application first. These are called “first to file” countries. Actual use on a product may be irrelevant. Your position as the trademark owner may be entirely pre-empted by opportunists who get wind of your plans and rush to the local trademark office," she writes.
Second, board members should insist that top management conduct regular reviews of distribution agreements with international partners to ensure that trademark protection is included. "There are far too many distribution/sales agreements that are silent about trademark rights," she says, and "Silence is essentially an invitation to a dispute."
Third, she writes, it is a mistake of potentially significant proportion to rely solely on a so-called "Google search" to decide that a trademark is available and clear for use. "Conducting only an informal search opens the door to a charge of willful infringement and doesn’t give you any insight whatsoever as to the ability to move into other related product lines using the new brand."
Finally, Blakeslee says, it is important for board members to insist that the company have a policy of constant Internet vigilance. She points out that she has been involved with thousands of cases of intellectual property theft and infringement that originated on the Internet. "I can assure you," she writes, "that these problems do not go away of their own accord. They only get bigger and more sophisticated."
Blakeslee is the managing partner of Sequel Technology & IP Law, PLLC, based in Washington, D.C. A frequent lecturer and mentor to other attorneys, Blakeslee is also the author of the comprehensive book Internet Crimes, Torts and Scams: Investigation & Remedies, published by Oxford University Press. Blakeslee has been practicing intellectual properly law for more than 25 years.