Trademark lawyers need to be brand lawyers

• The more junior roles will be affected initially, such as trademark administrators
• Trademark practitioners should be prepared to embrace the new tools that AI provides
• Advertising, regulation, social media and privacy are likely to demand more attention in the future

With much of their day-to-day work likely to be automated, trademark counsel might worry about what will be left for them to do. As one counsel describes: “More automation means reducing cost and headcount. That’s undeniable.” To begin with, the kinds of job that will go are more junior ones, such as trademark administrators, but more senior practitioners will not be completely immune.

One route will be to embrace the new tools: AI is driven by data, which needs to be compiled and input into computer systems. People will be needed to do this, as well as to design and develop the systems that do the work. Who better than trademark practitioners to do it? After all, they are the ones who are most familiar with the available data and can identify and select what is relevant and important. This could include indexing cases and IP office decisions, designing databases of licensees and licensors or profiling examiners and judges.

A second route will be to become expert in areas related to trademark law, some of which we explore below. Many trademark counsel have in fact already done this, by managing and protecting domain names – not something that they would have anticipated if they embarked on a career in trademark law 20 years ago. Advertising, regulation, social media and privacy are all areas that are likely to demand more attention in the future. “We need to expand our ability to provide legal services – it will no longer be enough to be merely a trademark lawyer. That will also improve your opportunities internally – the days when you would be just a trademark lawyer and would become a vice president are over,” says one former in-house counsel. Another adds: “You need to see yourself as a brand lawyer – expert in all those issues that affect the value of the brand.”

That kind of practice is already common in newer, smaller companies and in emerging markets, as they do not have the bloated systems and histories that bigger companies have. One example is entertainment company Netflix; its senior counsel for intellectual property, Jeremy Kaufman told World Trademark Review earlier this year: “Like Netflix’s larger culture, the IP team is curious. We spend a lot of time challenging whether the prevailing orthodoxy of the IP community is the right approach for Netflix. We are also constantly seeking to innovate, experimenting is the really fun part, and we are really fortunate to be at a company that supports that.”