Andrew Price

What was the biggest professional challenge you faced in the last 12 months, and how did you overcome it?

We were faced with a big challenge in delivering a brand name for a high-profile client through our Wellbrand service. We were surprised to find that our client was operating in one of the most saturated fields I have seen to date. Nevertheless, we dug in and leaned on our creativity as a firm, successfully delivering on a name that was chosen by the CEO.

If you could change anything about the TTAB opposition procedure, what would it be, and do you think it is likely to happen?

Today, the USPTO overall – including the TTAB – is slower than it has ever been in my 26 years of practice. Changes are needed to speed up the time of action by both the TTAB and examining attorneys. As an aside, the USPTO’s recent changes to its search platform are a step backward. Overall, the USPTO and TTAB should focus more on the user experience in addition to solving pendency problems.

Have your clients expressed concern about the proliferation of scams targeting trademark applicants in the United States, and if so, how are you helping them manage this?

We generally warn clients about this at the beginning of representation, and they tend to send us any scam notices so we can confirm that they should not pay them. Nevertheless, the USPTO could do a better job of policing scam artists, which have been a problem throughout my career.

As a creator of Venable’s Wellbrand naming solutions service, can you tell us more about this tool and the specific problems it was devised to overcome?

Venable’s Wellbrand service is an innovative naming solution that accelerates the process of developing brand names. By teaming up with clients in the early stages of name development – and conducting naming ideation and clearance under one roof – we develop already cleared naming options that avoid the usual trademark pitfalls.

As a first-of-its-kind service, Wellbrand bridges the gap between marketing needs and legal know-how to help avoid the delays and unnecessary expenses that are often associated with brand name ideation and clearance. Our attorneys draw on a deep well of experience to identify names that are more likely to reach registration at the USPTO and avoid distinctiveness refusals, third-party challenges and other problems. 

Our team takes a multifaceted approach that includes:

• leaning on the creative strengths of some of our most experienced attorneys;
• drawing from our deep knowledge about the types of brands that succeed, having managed thousands; and
• leveraging our globally recognised trademark law intelligence to avoid legal pitfalls and deliver a list of pre-cleared choices. 

Our goal is to ensure that our client’s brands are relevant, impactful and capable of being protected in an ever-changing marketplace.

A Fortune 250 company recently used the Wellbrand service to successfully name its next-generation flagship platform. Venable handled the brand ideation and initial clearance across several key global markets. After the client considered the options deliverable by the firm, along with those created by the client and its agency over several years, the client’s CEO picked one of the Wellbrand trademarks. The client commented “If one of your names gets picked, you stand to go down in [company] history as the firm that has contributed most visibly (at least internally) to our business!”. The brand is now going through comprehensive clearance.

Through the Wellbrand service, Venable can not only provide alreadycleared naming options at key moments in product development, but also identify workaround options for externally developed names that do not clear and offer naming alternatives to quickly resolve disputes. This service supports marketing professionals and in-house counsel by providing an alternative to the often slow and expensive process of carrying out brand ideation internally or through an advertising agency that lacks trademark law expertise. 

What are the most crucial differences that foreign rights holders need to be aware of when enforcing trademarks in the United States and China?

Besides the obvious difference between China as a first-to-file country and the United States as one that respects common law rights, enforcement in China is generally less expensive – but less likely to achieve a fair result for US brand owners. However, enforcement in the United States is more expensive but it is more likely to achieve a fair result for all brand owners. 

Moreover, sending cease-and-desist letters in China rarely works, while sending them in the United States is effective in many cases. Court action is more often required in China, but in my experience, Chinese courts tend to support Chinese nationals over US brand owners.

You have won acclaim for being one of the most accomplished attorneys in the United States. What has been the secret to your success?

I am humbled by this acclaim. I have been lucky in many ways, but I have made some key choices as well. 

Growing up, I was lucky to work in my father’s boutique IP law firm which not only gave me a sense of what it takes to be successful in this field, but also how I wanted to take a different approach. Instead of going to work for my father’s firm after law school, I went to work for a sole practitioner before moving to Venable a year later. This gave me a crash course in trademarks and the business aspects of practising law. 

Further, I was fortunate enough to start practising just as the Internet was exploding, and I immediately saw what it could mean for brands and the potential legal demands that came with it. Once I was at Venable, I had even more luck with Mark Harrison as my boss. He is renowned for his mastery of the technical aspects of trademark prosecution, so I took copious notes and studied independently to supplement what I was learning. Mark encouraged me to develop my own practice, and soon I was bringing in and developing clients – notably, a global financial company that I represented for 17 years, followed by a major mobile phone company. 

I made some key choices early on. First, I abandoned the fee schedule; I did not want to be a commodity, to be shopped around for on price alone. Instead, I wanted to be valued first and foremost as a counsellor. Second, I embraced a trademark counsel model for more than a decade. Under this model, we used attorneys where other firms were using paralegals to provide high-end legal work. These attorneys were non-partner track practitioners with significant experience and thus were more economically priced. Each of these top-flight lawyers had experience at the USPTO, an in-house background and/or years’ experience in private practice at the nation’s top law firms. Third, I also challenged industry expectations by creating our Wellbrand naming solutions service, and I developed a network of foreign associates who matched my style – hard-working, creative individuals who were themselves breaking the mould and becoming more accomplished. Finally, I have been lucky enough to work with some incredible team members and colleagues throughout my career and they have contributed to my success.

ICANN is pledging to make progress on providing increased visibility when it comes to domain name registrants, particularly with its WHOIS database. Do you feel optimistic about this promise, and what changes are you hoping to see?

I hope that ICANN will stop allowing privacy protection for registrants. Registered domain names should not be different from registered or pending trademarks, where the owner’s name and physical address are publicly available. 

What has been your most memorable case to date, and why?

In 2016 we reached a landmark settlement on behalf of one of the world’s most prominent organisations. This settlement not only brought closure to a four-year dispute over how certain services would be provided to our client’s members, but more importantly, resolved a 60-year-old question regarding true ownership of a number of trademarks bearing the core elements of our client’s brands (a word mark and related stylisation). 

The settlement required several rounds of mediation, as well as some forward-thinking prosecution and strategy. The outcome provided a reliable basis for the client to enter into licence agreements and conduct enforcement with other parties that were waiting to see what would happen in this case. At the same time, these developments allowed the client to leverage its valuable intellectual property to drive revenue through expanding its brand use. It was the proudest moment of my career when the general counsel sent a letter to Venable’s managing partners expressing the client’s satisfaction. The letter said that “Andrew’s excellent, efficient and cost-conscious client service convinced us to move our work to Venable” after achieving “a feat most other attorneys could not have achieved in [the general counsel’s] estimation”. 

How do you predict that the 2024 presidential election might impact the nation’s approach to intellectual property?

If Donald Trump or another Republican is elected, the administration will likely put more pressure on China to protect the intellectual property of US brand owners, and increase pressure to clamp down on bad actors from China filing improper documents with the USPTO. If Joe Biden or another Democrat is elected, the administration will likely continue the status quo.

As a partner at Venable, what does inspiring yet effective leadership look like to you?

When I started leading my own team nearly 20 years ago, I incorrectly thought that leadership meant enforcing a hierarchy, barking out orders and having a zero-tolerance policy for imperfect work. However, as I matured and started to serve as a group leader, I realised that effective leadership requires something much different.

First, it requires creating an environment where hierarchy is less important. This means that while a partner may have associates, paralegals and staff working ‘under’ them, I try to work alongside the team as more of a senior peer. I also found that it is critical to be an authentic, empathetic and fun leader. Being authentic means sharing one’s truest and fullest self, including interests outside of work. I have invited colleagues to my home to meet my family and shared my passions like photography and playing guitar in my band, Noise in the Basement. Being empathetic means recognising that no one is perfect; even when we have high standards, mistakes and imperfections are bound to occur in a large trademark practice. It is how one responds and learns from these that matters. Meanwhile, being fun means having a good sense of humour and having fun together outside of work. 

Overall, a leader needs to be someone that people look up to for their knowledge and success, but also someone who brings out the best in others and that people want to work with. For this reason, I am proudest of my 16-year relationship with my legal administrative assistant Valarie Blades. My success would not have been possible without the great support and camaraderie of teammates like Val.