Charles Bahlert and Lisa Greenwald-Swire | Brand Protection and Counterfeits

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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?


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Episode Transcript


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 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 Bahlert  02:51

That was everything. That’s it, we can conclude. 


Wayne Stacy  02:55

Well, I’m gonna ask a few more since I got you here. One of the things I heard you mentioned was clearance searches, you know, the idea that words can be cleared using Google and a USPTO. Search. Pretty straightforward. But having been at the USPTO, myself and have some familiarity with their tools. Images are a little bit more difficult. So what do you end up doing about clearing images? What’s what’s the lawyer’s role in that?


Charles Bahlert  03:29

I see you’re muted, Lisa. So I’ll take that cue. So we typically it’s our practice to not take a step back, generally, we have a two step process, the preliminary clearance search, and then by a, quote, full search, the prelim is an in house production, we use paralegals and the attorneys to do kind of what you just alluded to searching the USPTO site, and the register and online and so forth, if we the clients comfortable with the risk profile we’ll then recommend the full search and that is using a vendor that can provide a bit more robust searching abilities and, and constitutes the full search. So we jumped to that step for images. You can search the USPTO if it’s just an image like a you know, a logo with no word marks, but it’s it’s tends to be kind of a more knockout search and less robust than using the vendors services. So that’s what we typically utilize just for to give us the report. And then we hopefully it’s not 900 pages and you’re, you’re going through it page by page looking at images, but sometimes, that can be the case but yeah, that’s it The typical routine we do here at Fish.


Lisa Greenwald-Swire  05:07

Oh, sorry, is once we’ve done that a logo is sometimes right for filing both at the patent trademark office as a trademark, but also at the copyright office as a copyright. So that sometimes happens as well.


Wayne Stacy  05:22

In the same set of is I put it at a higher level brand protection lawyers would be handling that the copyright side and the trademark side. 


Lisa Greenwald-Swire  05:31

That’s right. Yeah, typically. Yes. 


Wayne Stacy  05:34

So that’s with, with people creating new brands, new marks, what happens? Or I guess, what is the role of a trademark lawyer in protecting existing brands, those marks that have already been around for a few years?


Lisa Greenwald-Swire  05:50

Yeah, I mean, one issue that literally came up this morning with a client is they acquired a company, and the company is in Europe, and has only been filed in Europe. But now that a larger entity has acquired them, they now have all of the resources of this larger entity at their disposal. And with that will grow rapidly, right? So we want to look at where is the parent company filing, where are the gaps in protection, maybe they only protected for A and B goods and services. But now that this parent owns them, we need to protect for x y&z services as well. And we want to make sure we’re going to cover like they don’t even have the US covered, we want to make sure that we’re going to cover key markets of expansion now that they have a new parent and sort of the scope of where this business will go is much broader now, post acquisition.


Wayne Stacy  06:50

So do you end up working with in House counsel and trying to understand how they might be expanding their brands? Or who might be expanding into their space?


Lisa Greenwald-Swire  07:02

That’s a great question. And one of the things I actually love about our practice is it really depends on the client. So we have big publicly traded clients that have huge legal departments. And we’re talking to really, truly a trademark and copyright counsel. For smaller clients, we might be speaking with head of IP or general counsel, and we have some startup clients that don’t have an in house counsel yet. So we’re really communicating with the CEO, and or CFO and cmo. Sometimes quite sophisticated, but but not lawyers. So it kind of depends on the client.


Wayne Stacy  07:41

So what I what I hear you saying is there’s actually quite a bit of client interaction, and a lot of nuance in in especially the brand protection side of it, in trying to determine what makes sense to do what is maybe too small, kind of which fights to pick and which ones to walk away from. 


Charles Bahlert  08:02



Wayne Stacy  08:04

Well, there there are other pieces that pop up in kind of the broader view of brand protection, like false advertising and in licensing of brands from one company to the next. Is that a typical practice for a trademark attorney?


Charles Bahlert  08:22

Yeah, so I think, and I, I spoke with another Fish colleague at Berkeley a couple years ago. And I like with the target being the students and kind of what, what is a typical day, I guess, or week, like as a trademark associate. And I think it’s kind of basically these these big picture, highlight items, we’re talking about, kind of the creation of the brand, which can go more into the advisory counseling, trademark prosecution side. And then the enforcement, which I’m viewing kind of like a spectrum here. So that’s in the middle, where you’re, you know, if there’s a typically clients will have even the smaller client will have a trademark watch for, you know, the house mark. And, and so, well, if there’s a something that’s kind of similar a trademark filing, we obviously report that to the client. And then in terms of enforcement, the question is, okay, is it similar enough? How strong is our mark? You know, if we’re a smaller client, it’s usually not an issue of being a quote, trademark bully, but if, you know, it’s a big company that this isn’t their house mark, so it’s less, you know, one of their smaller brands or products, and maybe it’s somewhat diluted, you know, you’re saying okay, well We can maybe live with this certain scope of coexistence and not say, you know, drop drop the application no use. So there’s a lot of nuance in that, in weighing, how strong is our case? Should we enforce? What what are we asking as as the the goal. And that’s, I think, kind of in this middle spectrum of the job duties or tasks that you do as a trademark associate. And then when you move all the way into the more adversarial side, you’re getting into TTB proceedings, opposition cancellation proceedings, and then potentially, you know, federal court, District Court litigation. When, if this, for example, a cease and desist letter is not working out, and maybe there’s prior use as well. And the other side’s not budging. It could be it could go that route, or more typically into an opposition, which mostly they settled, but it’s you’re creeping into that litigation mindset. So I think, for any students out there debating or, you know, thinking about what area of law to specialize in, I think beyond just being interested in subject matter of trademark and copyright, which typically those are handled together in the same group. It’s what kind of skills are you utilizing, and I think, as a trademark practitioner, you’re utilizing a lot of different skills that if you’re just a litigator, you’re maybe just litigating or, you know, working on settlement, and then that kind of occasionally a transactional, you know, agreement, but not that much. Whereas if you’re a transactional attorney, you’re on that side, and not really, you know, either making an argument before the court or opposing counsel or certainly not really in an adversarial position. So I think that balance is what I enjoyed the most, in addition, just to kind of the subject matter and working with different clients and things like that. So I don’t think I answered your question, but I just gave my schpeel so that the students if they were there two years ago, can ignore that.


Wayne Stacy  12:21

Well, no, that’s an it’s an interesting point about that. It’s kind of a full spectrum practice. We tend to think of transactional or litigation, that those are two mutually exclusive groups made up of people with wildly different personalities. Having been a former litigator, myself, I I can say those things. But what you’re suggesting is trademark practice actually forces people to move across multiple areas from the business side, the transactional side. And we’re here to step into federal court


Charles Bahlert  12:54

Or allows you to, doesn’t force you to, it depends on how you look at.


Wayne Stacy  12:59

Yeah. See, that’s the old litigator piece in me, you don’t allow you see, it’s already coming out.


Lisa Greenwald-Swire  13:07

Is that a beer? That’s awesome. 


Charles Bahlert  13:11

Happy Hour here? No, this is a, this is water.


Wayne Stacy  13:15

So nobody will be recorded here. So we’re gonna defend Charles, that was water. For anybody listening to this later on. 


Charles Bahlert  13:22

Well, in that case, if there is no video, yeah, so. So. Oh, go ahead.


Lisa Greenwald-Swire  13:28

I was just gonna say, I mean, I actually think the only areas of law that really allow that crossover are probably employment law and trademark law. I’m not really aware of other practice groups that allow you to stretch your brain and allow you to just simply counsel clients on questions, they might have that pop up, and then allow you to enforce in such a wide spectrum, so there’s smaller matters that are like takedowns, and maybe false advertising. You know, it may be it may be phishing, it may be lots of different things, right? And then all the way up to bigger enforcement matters, like, you know, administrative proceedings, at the TTab  or litigation.


Wayne Stacy  14:13

All of that in mind, if students are interested in getting into this space, looking at becoming branding experts, where would you direct them in terms of classes, besides the obvious trademark law?


Lisa Greenwald-Swire  14:28

Yeah, so I have not studied, like the syllabus, class offerings that well, and back in my day, I sadly graduated law school in the 90s. So there literally was a sort of spectrum of IP class. And then there was a class called copyright in the 90s. And that was it. So my understanding is that you guys have You’re very lucky to have class offerings that include gaming, for example, or even anything that sort of internet law or online aspects of the law actually think are really valuable and will serve you quite well, as you start your practice.


Charles Bahlert  15:12

I can say one class that probably is not relevant to us, representing professional athletes. But you should still take it. Take whatever interests you. I don’t see,


Lisa Greenwald-Swire  15:28

I actually have a dispute right now with the NBA. So, yes, there could be crossover,


Charles Bahlert  15:33

You never know. But that might be covered in topics and sports law, right above represent professional athletes. So right.


Wayne Stacy  15:44

Your advice, there may be the most important the practice you think you want as a, as a law student may not be the one you want as a fifth or 10th year lawyer. So take those classes that are interesting, and that might guide you in a slightly different direction, whether it be into to video games, and then I can see that you can look at video games and rights of publicity all the way over to branding in video games. And there’s a there’s a lot of crossover, and there’s a lot of opportunity, I guess, out there, especially here on the west coast of the tech companies to find find an interesting niche practice where people are building brands.


Lisa Greenwald-Swire  16:27

Yeah, absolutely. Absolutely. I think, you know, being happy and passionate about what you’re doing all day, so sorry, I completely spoke over you.


Charles Bahlert  16:39

No, no, I, I was just gonna say I don’t think I see like an IP survey course. So like, patent trademark copyright. But if that exists, too, that’s a good kind of first first step. But the other ones there’s a lot of interesting ones here. So yep, go with what you’re interested in.


Wayne Stacy  16:58

Wonderful. Well, thank you both for your time. I greatly appreciate it. And we will hopefully be talking again in the future.