Alt Legal and Corsearch LiveCents and Sensibility: Practical approaches to running a lean in-house trademark team
Alt Legal Team | January 24, 2024
On March 19, 2024 at Alt Legal & Corsearch Live, Warner Music Group attorney Sofya Nadgorny lead Shama Elliott, Stacey Foltz Stark (of Estée Lauder, previously of WeWork), and Stephanie Grenald (recently of Amazon and previously of Hinduja) in a panel discussion, “Cents and Sensibility: Practical approaches to running a lean in-house trademark team.” During this session, the panelists discussed how in-house teams can optimize costs while maintaining the integrity and strength of their brands’ trademarks. They also addressed how attorneys at firms can demonstrate their value and help in-house teams reduce costs.
Download the presentation materials here.
Top 10 Takeaways
- Managing enforcement is a game of triage and prioritization. There are a number of key pieces of information to focus on: Know your business, understand the critical markets for your business, know your competitors, determine the most important marks in your portfolio, and consider whether infringement is long-lasting or short-lived. Keep a document handy with these important details so that you can keep your strategy consistent. Then determine what you can handle in-house and what you can escalate to outside counsel. [Stacey]
- Stay on top of the docket and show your value to your business so they understand what you’re doing, how you’re spending dollars, and what impact you’ve made. Demonstrating your successes and supporting them with data will help keep your budget intact [Stacey]
- Help the business distinguish between practical use and registry use. Oftentimes, businesses just want to know if they can use a particular mark. Get a handle on how the business intends to use the mark and guide their efforts in the right direction. [Shama]
- In terms of trademark watch and monitoring, Google Alerts and Alt Legal Trademark Protection are very helpful. Google Alerts will help you keep track of common law use, which might be in good faith, but it’s a quick, easy way to protect a brand and catch early use. Then you can always hire another company to keep track of what’s happening on foreign registries. [Stephanie]
- If you discover a conflict with an old mark in your portfolio, proceed with caution. Even if it’s a slam dunk, egregious conflict, your own mark might not be in use, which could jeopardize your registration with a non-use cancelation. [Sofya]
- Help the company understand ephemeral use vs. long-term use of marks. It may not make financial sense (or even be practical time-wise, given how long some jurisdictions take to examine an application) to file a trademark application for a mark that will be used short-term. Instead, for these types of marks, you can use watch services. [Stephanie]
- Portfolio management is a living, breathing, evolving thing. Be sure to regularly audit your marks and watches. There is no need to hoard old registrations or pay for watches that you don’t need. To be cost-effective, look at what you have and decide if it’s in line with the business. [Stacey and Shama]
- When buying domains, consider retaining a PI with an hourly rate rather than a traditional broker. Also consider selling domains that you no longer use. Domains are not always a cost center; they can be valuable. [Sofya]
- In-house counsel understands the brand voice and tone. Supply templates to outside counsel for demand letters that provide explanations of who the brand is what they stand for. That way you’re not wasting outside counsel’s time trying to develop or replicate your brand voice. [Stacy]
- When instructing outside counsel to provide a risk assessment, explain whether you are looking for practical risk or registry risk, and be very clear about the jurisdictions that you’re concerned with. Provide examples of the distilled risk assessments that you will send to your business stakeholders and ask that your outside counsel prepare it that way to save time, money, and resources. [Stephanie]
Speakers
Sofya Nadgorny
, Moderator, Warner Music Group
Sofya Nadgorny is Vice President, Senior Trademarks & Domain Name Counsel at Warner Music Group, where she manages the company’s trademark portfolio and advises the company on all aspects of trademark use, filing, clearance and strategy. Her previous experience was as IP Counsel (and Data Privacy Officer) at The Bountiful Company, where she managed the company’s IP portfolio through privatization and various acquisitions, divestitures and integrations that occurred over her decade-long tenure.
Shama Elliott
, Trademark Manager
Shama Elliott is a Trademark Manager responsible for managing a global trademark portfolio focusing on prosecution, registration, strategy, enforcement, and brand protection. Previously, Ms. Elliott worked on managing global trademark portfolios; and client training in brand protection and best practices for WarnerMedia and American International Group (AIG). Shama received her Masters in Public Administration (MPA) from John Jay College of Criminal Justice and her B.A. in Business Management from Monroe College with a specialization in Management and Operations. She has served on several INTA subcommittees both as member and a Co-Chair. Shama is pleased to be a member of the INTA Trademark Administrators Committee (TMAC) and the Programming Advisory Council. She is passionate about IP and brand protection practices and the evolution IP brings!
Stacey Foltz Stark
, Estée Lauder, previously of WeWork
Stacey Foltz Stark has over a decade of experience in intellectual property matters at the intersection of technology and innovation in the hospitality, design, digital media, entertainment, and prestige beauty industries. She is currently an executive director at The Estée Lauder Companies Inc., supporting renowned brands such as Estée Lauder, Bobbi Brown, and Aveda. She was previously the global head of intellectual property at flexible-space provider WeWork, where she was responsible for global brand and innovation protection, licensing, and enforcement. She began her legal career as an associate at Winston & Strawn LLP in the media & entertainment group in New York. She is a member of the International Trademark Association and is co-chair of the Volunteer Lawyers for the Arts Associate Board. Stacey regularly attends events sponsored by the Copyright Society and New York City Bar’s Committee on Women in the Legal Profession.
Stephanie Grenald
, recently of Amazon and previously of Hinduja
Stephanie Grenald has over two decades of experience working in intellectual property for the world’s largest brands. Her career started with the trademark filing and global strategy for the iconic SpongeBob Squarepants and Dora the Explorer. She then managed contracting drafting and licensing for Wenner Media (Rolling Stone Magazine), and most recently closed the largest licensing deal in IMDb history. She is very involved in diversity initiatives including: participating on panels on issues impacting diversity, such as Women in IP and Unconscious Bias, leading Amazon’s 2021 Black History Month, partnering with the National Lawyers Guild for protestor relief, and providing guidance as a member of the Amazon Diversity Leadership Team.. Most recently, Stephanie was appointed as the Chair for the International Trademark Association’s first ever DEI Council, and appointed to the Executive Council for the Leadership Council on Legal Diversity.