The Expanding IP Landscape

Caroline Chicoine (Husch Blackwell LLP, USA)

It’s now more important than ever for brand professionals to be well-versed in the full complement of intellectual property (IP) rights and the regulatory landscape to provide the appropriate guidance businesses need for today and tomorrow. Given the evolving complexity of the legal and regulatory landscape in which brands operate today, the 2022 Annual Meeting Live+ features a dedicated educational track covering Complementary Rights, Regulatory Issues, and Brand Restrictions.

Caroline Chicoine (Husch Blackwell LLP, USA) is a member of the 2022 Annual Meeting Project Team and the Complementary Rights, Regulatory Issues, and Brand Restrictions track leader. In an interview with the INTA Bulletin, Ms. Chicoine, who currently serves on INTA’s Programming Advisory Council and Brand Restrictions Committee, shares her insights on the increasingly complementary nature of IP rights and implications for brand owners and professionals. She also discusses brand restrictions—a growing concern among brand owners globally and one of INTA’s top policy issues.

With the launch of its 2022‒2025 Strategic Plan, INTA updated its mission statement, replacing “trademarks and related intellectual property” with “trademarks and complementary intellectual property” to better reflect the broader interplay of trademarks and brands with other IP rights. How, in your view, has the interplay of IP rights evolved in recent years?
We all feel very comfortable thinking about copyrights and design patents as additional means of protecting trade dress. However, as technology advances and the marketplace evolves, the interplay of IP rights has also become more complex, presenting both challenges and opportunities, and the need for us to keep up.

With the entrée into virtual products, for example, the role that complementary IP plays will be front and center. First and foremost, the creator of the virtual product needs to ask whether it has all of the legal rights necessary to create the virtual product in the first place.

Brand owners need to remain vigilant in their policing efforts to stop the creation of new products in the metaverse that incorporate their brands. We are already seeing brands like Hermès and Nike taking such steps. Moreover, everyone is going to need to brush up on implied licenses, fair use, and the first-sale doctrine to determine where the line is between an infringing and non-infringing product.

What does this change mean for brands and in-house IP teams?
In terms of the metaverse, it is clear that the market for virtual branded goods will likely match if not exceed the market for branded goods in “real life!” When a virtual yacht sells for $650,000 and virtual real estate is selling for $450,000, we can’t simply assume it is just a fad that will go away. First and foremost, one needs to understand how this new platform works. We need to ask some big yet basic questions: “How can I be sure I have the right protections in place?” and “What can I do to prevent or minimize abuses of my brand?” Some prominent brand owners like Converse, Nike, Ralph Lauren, and Wal-Mart have already filed trademark applications for a range of virtual goods and services.

Not only should brand owners be thinking of increasing their budgets to accommodate additional filings on this new platform, their litigation budgets will likely also need to increase to accommodate the extra policing and additional abuses they will most certainly encounter.

And how about law firms and how they serve their clients?
It reminds me of the time when the Internet really took off as a commercial tool. Law firms will want to be at the cutting edge, or they will be left behind.

Clients expect their outside counsel to be proactive and able to spot the issues so they can plan appropriately. This in turn requires law firms to educate themselves on how the platform works, how it can be used by clients to promote their brands, and how it could be used by bad guys to abuse brands. With such knowledge, law firms can review the entire IP toolbox to see what this new platform means for IP rights, and how the portfolio of IP rights can complement each other and enhance overall protection.

Through brand restrictions legislation, policymakers are looking to address health concerns by restricting brand use on certain products. INTA has commented on draft legislation of this kind in more than 20 jurisdictions globally and we’re seeing an increasing number of product categories affected. No doubt, this is something that all brand professionals should be studying closely. How will this topic be covered at the Annual Meeting?
A session dedicated to brand restrictions will feature an overview of the current forms of brand restrictions and the industries being targeted. Participants will learn about existing brand restriction legislation around the world and what is being done to combat attempts by global regulators to restrict the marketing freedoms of brand owners. We are fortunate that INTA is active in this space, but it will take an army to stop this trend.

The session will also briefly discuss INTA’s 2021 Brand Restrictions Study and the effects of brand restrictions on consumers, as well as Brand Finance’s 2021 study reviewing the economic effect of brand restrictions on brand holders.

Why is this such a big issue for brand owners today?
In the U.S., we don’t have a true appreciation for how brand restriction legislation can adversely affect the protection of brands because we have not really experienced it firsthand. While some states have imposed taxes on sugar-sweetened beverages, legislation has not gone as far as to restrict how brands are used in connection with such products, as they have in other jurisdictions. For example, we have no limitations on the use of cartoon characters to sell cereals that have a high sugar content.

I was Chair of INTA’s Research Advisory Council when the Association published its Brand Restrictions Study and I’m currently in my second consecutive term on the Brand Restrictions Committee. I now have a much better appreciation for how pervasive this problem is in other parts of the world, including Australia and Latin America, and the negative effects such legislation has on brands.

This issue reinforces the need to have good counsel around the world that can stay abreast of the ever-changing regulatory landscape. It also reinforces the need for organizations like INTA to stay active in the legislation process to try to prevent or minimize the negative effects of such legislation.

Based on your experience at past Annual Meetings, and the lack of in-person events over the past two years, what do you hope to gain the most from this year’s Meeting?
For me it’s simple. I just want to re-engage. As the saying goes, “You don’t know what you have until it is gone!” I don’t think I truly appreciated what I got out of the in-person Annual Meetings until we did not have them. There are great education sessions and we pull up our sleeves to get committee work done, but perhaps most importantly, we connect as humans, sharing a smile, hug, or maybe even a tear, as we catch up on life. That is what I miss most and what I so look forward to.

The 2022 Annual Meeting Live+ takes places April 30–May 4, in person in Washington, D.C., and virtually. Learn more about the Meeting and register.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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