Brooks Kushman

Brooks Kushman is renowned for its commitment to DEI. As firms are under increasing pressure to be more sustainable and take CSR more seriously than ever, how much of this is driven by clients as opposed to potential or existing talent?

There is not one single aspect that drives our DEI efforts over another. Our DEI efforts are driven by the need for change and fairness, and the need to provide diverse perspectives and experiences for our clients. We focus efforts to develop and nurture legal professionals and potential talent throughout their academic career – from high school to graduate programmes. We also nurture existing legal professionals through an associate development programme that tracks engagement and involvement in all facets of the practice, including high-visibility leadership opportunities. There is no doubt that DEI efforts are also client-driven, and Brooks supports and responds to this call as well. 

What are the biggest challenges facing your clients at present, and how are you helping them to manage these?

A constant challenge for clients – and any business – is keeping costs down. Clients are concerned with managing costs, staying within budget and creating efficiencies while maintaining quality. We help them manage these challenges through early engagement, education and collaboration. Understanding the client’s business, their goals, the matter and risk-tolerance level is invaluable when focusing on projects, developing creative and tailored strategies and providing cost efficiencies. 

I often provide educational seminars to my clients’ business and marketing teams to advise on best practices, pitfalls and strategies early on, helping them to avoid unnecessary costs and delays. 

Another challenge is emerging technologies, such as AI – what it means, how to use it, who owns it and the associated risks. This is uncharted territory. I am on the firm’s AI initiative team, working to develop an internal proprietary tool to be used for drafting and search functions. This enables us to help our clients by remaining cost effective and efficient. 

If you could change three things about prosecuting trademarks before the USPTO, what would they be and how likely are they to happen?

It would be interesting if USPTO examiners could consider real-world extrinsic evidence in arguments against the likelihood of confusion in an application. If an applicant can show that there would be no likelihood of confusion based on the real-world uses of the parties’ marks, it could help to avoid extra time and costs in seeking consent, coexistence agreements or actions at the TTAB. This is unlikely to happen because it would create uncertainty and inconsistencies in the trademark register and in prosecution, and would likely make searching more difficult and unpredictable. 

Second, while patent applicants can request examiner interviews, no similar rule exists for trademark prosecution after receiving an office action. However, although there is no interview rule per se in the Trademark Manual of Examining Procedure, applicants or attorneys of record can call examiners to discuss applications at any time. Examiners will not accept arguments by phone, but they can clarify the issues raised. Even though an interview rule would not be a substantial change, it is unlikely to happen as it is not as necessary for trademark prosecution. 

Third, while the Trademark Modernization Act 2020 came into effect on 18 December 2021 – providing proceedings for re-examination and expungement to cancel unused registered trademarks – it may not have gone far enough. Both actions have limitations on when an action can be brought and timing of non-use. The USPTO does not have a non-use cancellation action equivalent that provides for the cancellation of a registered mark if it has not been used for a period after registration, without a deadline to file this action. 

Still, this is unlikely to change because the USPTO has other safeguards for maintaining the integrity of the register – specifically, requirements to submit a declaration of use to prove proper use of a trademark in commerce between the fifth and sixth year after registration and then again at every 10-year mark. If an acceptable declaration of use is not submitted in a timely manner, the USPTO will cancel the registration. However, not all countries require proof of use to register or at regular intervals. 

What recent decisions or legislative developments are having the biggest impact on trademark strategy in the United States at present – particularly in Michigan, where Brooks Kushman is based?

Several recent trademark and copyright decisions have had ramifications for parties on both sides of a matter. For example, the Supreme Court held that a parody of a Jack Daniel’s liquor bottle as a dog toy – Bad Spaniels – was not protected by fair use or under the First Amendment. It ruled that the defendant used the plaintiff’s mark as a trademark and traded on the trademark owner’s goodwill to market its own goods (Jack Daniel’s Properties v VIP Products, 599 US 140, 2023). This sends a warning that a parody is not always funny. For a parody to succeed, it must conjure up enough of the original to make the wit recognisable while also contrasting enough that the humour is clear. If done correctly, a parody is often unlikely to create consumer confusion, but the opposite is also true. 

Copyright decisions are also shaking up the art world. The Supreme Court found that an artwork – which was based on Lynn Goldsmith’s photograph of Prince and was created by the Andy Warhol Foundation for Visual Arts and then licensed to Vanity Fair –  was not an allowable transformative work and not protected by fair use (Andy Warhol Foundation for the Visual Arts v Goldsmith, 598 US 508, 2023). 

In another case, a California jury cleared tattoo artist Kat Von D of copyright infringement when she used a photographer’s picture of Miles Davis as inspiration for a tattoo given to a friend, deciding that it was a transformative work and protected by the fair-use doctrine (Sedlik v Von Drachenberg, CV 21-1102, CD Cal, 31 May 2022). 

While these rulings seem contrary, the difference seems to have been in the commercial nature of the Warhol work as opposed to the arguably non-commercial nature of the tattoo. The Kat Von D case will likely be appealed. 

Another example is a January 2024 copyright infringement case filed at a New York federal court by photographer Allen Kee against the National Football League and the Detroit Lions team. A sculptor referenced Kee’s photograph of Detroit Lions player Barry Sanders while creating a statue of the American footballer. We will watch this case to see if it is considered fair use like the Kat Von D case or an infringing transformative work like the Warhol case.

These cases and their ramifications will affect legal strategies and advice going forward. 

Your firm has won plaudits for its litigation expertise. What are the key characteristics of a winning strategy before the courts?

My winning strategy is to keep clients out of court. I devise strategies to avoid or reduce risks and find mutually beneficial resolutions. Some of the most crucial initial recommendations are to conduct trademark clearance searches, risk assessments and chances-of-success opinions before acting. These initial investigations and tailored strategies can help clients avoid litigation and are helpful for winning in court should litigation arise. I often include a firm litigator in potentially contentious matters so that we (the prosecutors) set up the litigators and clients for success down the road. 

What makes Brooks Kushman stand out from other IP law firms?

We stand out from other IP law firms because we have a large group of dedicated trademark attorneys and paralegals. Our trademark attorneys are not patent attorneys who dabble in trademark matters – they have a vast wealth of experience in numerous industries. While we are located in the Detroit metro area, we provide services across the United States and the world. We have a network of foreign associates in almost every jurisdiction, with whom we have worked for decades and have strong relationships. 

We also provide services in a wide variety of industries, including: 

• recreation and hospitality;
• healthcare;
• online gaming and gambling;
• cosmetics;
• consumer goods; 
• electronics;
• buildings and real estate;
• computers and software;
• entertainment;
• medical devices; 
• aerospace; and
• automotive.

What are some of the firm’s proudest achievements from the past year?

In one significant win, Brooks Kushman helped Ford Motor Company reverse a $105-million trade secrets jury verdict against it to a $3 judgment. The plaintiff had alleged that Ford had infringed over a dozen of its patents, misappropriated over 30 trade secrets, infringed several copyrights and breached contracts relating to its computer software for configuring vehicles. Brooks represented Ford through more than eight years of pretrial litigation, and over these years, the plaintiff’s claims were reduced to four trade secrets and breach of contract. This was a proud moment for Brooks and a significant win for our client. 

In September 2023, Brooks secured $2.7 million in attorney’s fees for Domino’s Pizza against a plaintiff in a patent suit involving the configuration and transmission of menu information. The district court found the plaintiff’s patent to be invalid, and the appeals court upheld this decision. 

In 2024, in a case to protect the iconic design of the KitchenAid stand mixer for its client Whirlpool, Brooks Kushman secured a preliminary injunction in the trial court, and recently obtained affirmance of that injunction at the Fifth Circuit. This was a satisfying win for Brooks and Whirlpool.

In-house counsel are seeing increasing convergence in their roles, covering more ground from broader brand protection to copyright to trade secrets. What advice would you give to those having to combine these different streams into their practice?

I would advise them to engage their outside partners early to assist in issue spotting and guidance. Early collaboration is key. Lean on others for assistance and delegate when you can. Help us help you! A lot is happening these days and it takes a cohesive team to push through issues and keep things moving forward. Ask your partners to assist in high-level strategies for your various roles and provide in-house education to help legal and business teams move together toward achieving the company’s goals.

Brooks Kushman works with a wide range of clients in a broad array of industries, from aerospace to consumer products to medical devices. How does the firm adapt its approach depending on the type of client it is dealing with?

At the end of the day, understanding your client’s business is the key to success – for the client and the firm. Early collaboration has been a recurring theme in these answers because it is so vital. The approach does not have to change; simply understand your client, the nature of the business, its competitors, its level of risk tolerance and its goals. You must understand this for any client, regardless of industry. Further, Brooks Kushman has employees with a broad range of both professional and personal experience and in various disciplines. This diversity of thought, experience, and background allows us to adapt our approach and work as a team to provide tailored solutions to each client. 

What steps is Brooks Kushman taking to future-proof itself?

Taking action to future-proof Brooks Kushman is a constant and evolving exercise. In late 2023, Brooks relocated its main office from Southfield, Michigan to a smaller footprint in Royal Oak, Michigan and embraced a hybrid work model. The new space has a modern and open floor plan to foster engagement, collaboration and new technology. With the move to remote and hybrid work environments, we have expanded recruiting efforts across the country. 

Crucially, the firm is developing a proprietary AI tool to assist with the provision of our services by augmenting research capabilities, automating document review and analysis and repetitive tasks, and editing legal writing. This AI tool will increase our accuracy and speed, allowing us to offer even more cost-effective and efficient legal services to our clients. AI tools will further enable Brooks to remain at the forefront of the legal industry.