Our guests are so generous with their time. They allow us to have terrific conversations about this world of intellectual property, their roles, and strategies for effectively dealing with IP. That’s certainly the case with our featured guest today. Carlo Cotrone wears a lot of hats in the field of intellectual property. As chief IP counsel for Techtronic Industries, he manages innovation for the company’s well-known brands, such as Ryobi, Milwaukee, Hoover, Oreck, and Dirt Devil. In this episode, he shares his thoughts on the importance of strategy and collaboration as enterprises navigate the world of IP.

In this episode, Jeff Harty and Carlo Cotrone discuss:

• What about IP inspires and drives Carlo in his life and career.
• The breadth of IP issues that Carlo deals with as in-house IP counsel.
• Why strategy and collaboration are essential in IP.
• The mindset of collaboration locally and globally.
• Counterfeiting in the world of e-commerce.

Key Takeaways:

• Strategy is about outside-the-box thinking and moving beyond the tactical to find complementary ways that may not come to mind immediately without intentionally taking a different view.
• Knowing the client’s business and looking at IP from a business perspective is an excellent approach for both in-house and outside counsel.
• Collaboration comes down to human-to-human and human-to-group communication and relationships.
• It’s important to find partners with whom you can build relationships and who understand the risk profiles of the company.

“It’s really important to develop meaningful metrics internally, especially those that help hold the IP teams, and the company at large, to a rationality to the investments being made in IP and the result.” —Carlo Cotrone

About Carlo Cotrone:

Carlo Cotrone is chief IP counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is adjunct professor of law at University of Houston Law Center. He is a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as senior IP counsel at General Electric and at energy technology company Baker Hughes. He practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He holds two U.S. patents as the inventor of technology directed to digital sheet music.

Connect with Carlo Cotrone:

Website: https://ipwatchdog.com/people/carlo-cotrone-2/

Twitter: https://twitter.com/cmcotrone

LinkedIn: https://www.linkedin.com/in/carlo-cotrone-8266752/

Connect with Jeff Harty:

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

In this conversation, Kirk Goodwin, head of global innovation IP at Whirlpool Corporation, shares his insights for ways to drive innovation and get the most out of your IP assets. For most companies, continuing to innovate isn’t just an option. It’s not enough to simply keep pace; you need to stay ahead of the game if you truly want to thrive and be relevant. That’s why driving innovation and maximizing the return on your investments in intellectual property are more important today than ever.

In this episode, Jeff Harty and Kirk Goodwin discuss:

• Driving innovation within an organization.
• Maximizing returns on investments in intellectual property.
• How to know where to innovate.
• Measuring your ROIP (Return on Intellectual Property)—beyond the number of submissions and number of patents.

Key Takeaways:

• Your goal shouldn’t be to simply get patents. Your goal should be to get innovation that you can protect—your intellectual property.
• You grow innovation by protecting intellectual property and then creating additional intellectual property and innovation around the assets you already have.
• We don’t need to incentivize people to innovate, but we do need to communicate where the value can be brought. Innovators want to innovate. Your job is to facilitate that.
• Teach your employees where to be innovative and how to share that innovation.

“IP is not the last step. It is the first step and the second step and the third step and so on. That’s how you continue to grow innovation, by creating those foundations that you protect with intellectual property.” — Kirk Goodwin

About Kirk Goodwin:

Kirk Goodwin is assistant general counsel, Global Innovation IP and Cybersecurity, for Whirlpool Corporation. Previously, Mr. Goodwin served as chief patent counsel, North America, and chief counsel for Global Information Systems for Whirlpool. Mr. Goodwin leads Whirlpool’s team of patent attorneys, agents, and paralegals in various patent functions, including IP clearance, acquisition, technology transactions, and litigation. Prior to joining Whirlpool, Mr. Goodwin was a senior patent attorney for Maytag Corporation, where he led offensive and defensive patent and trade secret litigation.

Connect with Kirk Goodwin:

LinkedIn: https://www.linkedin.com/in/kwgoodwin/

Twitter: @kirk_goodwin https://twitter.com/kirk_goodwin

Connect with Jeff Harty:

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

In our innovation economy, trademarks and trademark protection are likely to play a significant role in an intellectual property strategy. We know companies spend lots of time and money investing in brands as they compete for consumer attention and recognition. We also know that surveys play an important role in trademark and unfair competition cases. In particular, that’s because so many inquiries are focused on the perceptions of the average, reasonably prudent consumer. How do we measure that? How do we assess that? It sets the stage for a potential consumer survey, which introduces both technical and strategic questions. Featured guest Mike Keyes is uniquely qualified to help us better understand the effective use of trademark surveys, both from an academic and a practical litigation perspective.

In this episode, Jeff Harty and Mike Keyes discuss: 

• The evolution of survey evidence in court cases. 
• Common ways surveys are used in trademark and advertising litigation. 
• The role lawyers and survey experts play in consumer surveys. 
• Why surveys are approachable subject matter and evidence for jurors (and how they can be looked upon unfavorably). 
• Hurdles to the admissibility of survey evidence. 

Key Takeaways: 

• The treatment of expert testimony under Federal Rules of Evidence 702 and 703 contributed to the growth of consumer surveys in litigation, and now it is not unusual for judges to expect to see surveys in Lanham Act cases. 
• When it comes to secondary meaning and likelihood of confusion, surveys can be beneficial and can be powerful and persuasive pieces of evidence. 
• Different types of trademark survey designs can be used depending on what litigators are trying to show, such as genericism, acquired distinctiveness, or likelihood of confusion. 
• There's both art and science to putting together a survey questionnaire that’s clear, concise, and not leading or biasing survey respondents. 

“Survey evidence doesn’t show actual confusion—what it’s trying to test for. It’s a tool to assess how consumers’ perceptions are in the real-world marketplace. And because it’s really trying to get at that issue, it’s important to replicate marketplace conditions in terms of how consumers encounter the marks at issue during the survey process.” —Mike Keyes

About Mike Keyes: 

Mike Keyes is the co-head of Dorsey’s trial group and a go-to intellectual property and commercial litigation trial attorney with a vast reservoir of experience in cases involving trademarks, copyrights, and false advertising, including individual consumer and class action claims. Mike and his team have represented some of the world’s most recognized brands and companies in high-stakes litigation in federal courts across the country including Washington, Oregon, California, Colorado, Minnesota, Illinois, New York, Massachusetts, Utah, and Florida. These disputes have encompassed subject matters including medical diagnostics software, online games and apps, Google Ads, social media, e-books, consumer products, food and beverage, fashion, sports equipment, educational testing tools, and hospitality services. 

Connect with Mike Keyes: 

Website: https://www.dorsey.com/ 

LinkedIn: https://www.linkedin.com/in/mike-keyes-7b6a134/ 

Email: keyes.mike@dorsey.com 

Connect with Jeff Harty: 

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

We’re taking a critical look at one of the most important parts of a patent case: claim construction. Michael Friedland, co-chair of Knobbe Martens’ litigation practice group, is uniquely qualified to help us unpack claim construction, advocacy, and the importance of natural language—utilizing plain and ordinary meanings when urging proposed constructions of disputed claim language. 

In this episode, Jeff Harty and Michael Friedland discuss: 

• The role of claim construction in a patent dispute. 
• Balancing the simplification of technology so a judge can understand it without simplifying to the point of inaccuracy. 
• Knowing your audience and changing your approach to the court. 
• The role of expert testimony in claim construction (and when not to use an expert). 

Key Takeaways: 

• Keep it clear, keep it simple, and work together with the court to sort out any confusion regarding the relevant technology and to adopt the proper interpretation of the claim language. 
• Start giving claim construction serious thought when you first look into the case, even before it is filed. 
• A good brief can help somebody pick which claim construction to use and help them get it right. 
• The simpler claim construction is often the one that wins. An expert is someone outside your control and can cause confusion when it wasn’t necessary based on the record you already have. 

“I want whatever we are doing to seem simple, natural, and not contrived.” —Michael Friedland

About Michael Friedland: 

Mike has three decades of intellectual property enforcement experience and is the co-chair of Knobbe Martens’ litigation practice group. Since 2000, he has represented clients in more than 200 intellectual property cases in courts in California and 21 other states.

Focused on patent, trademark, trade secret, and copyright matters, Mike’s cases have spanned a range of industries and technologies, including consumer products, semiconductors, tactical products, medical devices, computer software, apparel, restaurants, and financial services.

He has represented brand-name companies including Oakley, Luxottica, ITT, Makita, Pacific Life Insurance Company, Carl’s Jr., Microsemi, NASCAR, Daytona International Speedway, Game Show Network, Razor, Volcom, Specialized Bicycle, Mexicana Airlines, and SRS Labs.

Mike is the secretary of the Harvard Law School Association and a member of its executive committee. He is a co-founder and former president of the Harvard Law School Association of Orange County. He is a member of INTA’s Alternative Dispute Resolution Committee. Mike has taught as an adjunct professor at the Whittier School of Law and served as a JAG officer with the California State Military Reserve. He worked as a reserve deputy with the Orange County Sheriff’s Department for 16 years, retiring as a lieutenant.

Connect with Michael Friedland: 

Website: https://www.knobbe.com/ 

Website: https://www.knobbe.com/attorneys/michael-friedland 

Email: michael.friedland@knobbe.com 

LinkedIn: https://www.linkedin.com/in/michael-friedland-43a76a1/ 

Connect with Jeff Harty: 

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

For trademark owners, increasing brand recognition can sometimes be a mixed blessing. Well-known marks can start to be more than just strong source identifiers. They can be the targets of parody, criticism, social commentary, and other uses that go beyond the consumer goodwill attached to a mark. Concerns about free expression and free speech start to enter the equation. Featured guest Janet Marvel helps unpack the interplay between recognizing trademark rights while protecting expression that falls within the purview of the First Amendment. She’s a talented and experienced trademark practitioner, instructor, and author. We are fortunate to have her share her knowledge and insights on this area of trademark law.

In this episode, Jeff Harty and Janet Marvel discuss: 

• Brand essence and the power of brands. 
• Developing a good brand strategy.
• Counterfeiting and e-commerce. 
• The balance between free speech and trademark protection. 

Key Takeaways: 

• Trademarks provide valuable functions for both consumers and sellers of goods and services. 
• You have to think about a global stage for your major business operations and trademark strategy, not just your local country. 
• The U.S. Ninth Circuit Court has gone from artistic work to expressive work in its interpretation of the Rogers case. It is possible that they have expanded their view of First Amendment protection too far. We look forward to the Supreme Court soon providing guidance in the Jack Daniels case. 

“Protecting your trademarks, in that respect of thinking about stopping counterfeiters, is important. You can’t stop a counterfeiter under the federal statute without a registration. So you want to have a registration, and you want to think about where you’re manufacturing.” —Janet Marvel

About Janet Marvel: 

Pattishall partner Janet Marvel protects brands, copyrighted works, and domain names throughout the world. She has been charged with protecting the trademarks of world-famous brands, such as Ford, Pepsi, Harlequin (romance novels), and Mattel. She even protects the famous Cheesehead hat on view during the NFL season when the Green Bay Packers play.

As part of her practice, Janet represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country in state and federal courts and before the U.S. Patent and Trademark Office. In a notable case, she successfully defended a small company’s ownership of the Brawny mark for plastic bags against an all-out attack in two federal courts and the Trademark Trial and Appeal Board. She also developed expert testimony for the Internal Revenue Service in a $262 million case involving evaluation of assets of the Carnation Company. She handled the acquisition of the famous CURAD mark.

When she is not working, you will probably find Janet hiking—often north of the Arctic Circle. Janet’s travel has included backpacking trips to Canada’s Ellesmere Island (at 80 degrees north latitude, accessible just three weeks a year), Gates of the Arctic National Park, and the Arctic National Wildlife Refuge.

Connect with Janet Marvel: 

Website: https://www.pattishall.com/ 

Email: jmarvel@pattishall.com 

Connect with Jeff Harty: 

Website:  https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email:  jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/

North America as a whole is a leader in the innovation system. In large part, that’s due to the relationship between the United States and Canada. That raises these questions: How do we go about protecting intellectual property rights in Canada? What are effective strategies? We answer these questions and talk in-depth about diversity in the legal industry with today’s guest Selena Kim. 

In this episode, Jeff Harty and Selena Kim discuss: 

• Making great relationships with lawyers around the world. 
• Handling multiple areas of law (and having them work together). 
• The power of women in the innovation economy. 
• Differences in U.S. and Canadian patent law. 

Key Takeaways: 

• Being a litigator offers insight into the small comments in a patent that you may not otherwise recognize can get you in trouble later. 
• If you are already filing in the United States, filing in Canada is not going to add much to the cost. With the North American market being as it is, filing in Canada as well may be the right choice for your patent. 
• When you are going through litigation in both the United States and Canada, the cases can assist one another. Depending on the case, it may be beneficial to start with one before the other. 
• While diversity in law firms in Canada has progressed, it is a slow progression. Firms can do more to bring their firms to resemble the diversity balance of their local population.

"You really need to think about your own personality and what will make you fulfilled in your career and your life and what kind of environment you are working in. And shape your practice that way to try to be as happy as you can now, rather than striving toward something that’s vague and ill-defined." —Selena Kim

About Selena Kim: 

Selena Kim is a partner in Gowling WLG’s Toronto office, practicing in intellectual property litigation, patent prosecution, transactional intellectual property work, and strategic intellectual property portfolio management. In 2020, Canadian Lawyer named her one of the Top 25 Most Influential Lawyers in Canada.

Selena has been certified by the Law Society of Upper Canada as a specialist in intellectual property (patent, trademark, and copyright) and is the first woman to achieve this designation for patents in the Law Society’s history. Selena’s litigation experience includes work before all levels of court in Canada, involving patents for complex mechanical, electronic, and chemical inventions. She also conducts patent and design agency work before the Canadian Intellectual Property Office.

Selena has a technical background, with a graduate degree in molecular biology and having conducted laboratory research in genetics, gene expression, and pharmacology. She is a registered patent agent before both the CIPO and the U.S. Patent and Trademark Office.

Selena is an active member of professional associations, including the National Asian Pacific American Bar Association and the American Bar Association. She is a contributing member of committees reviewing patent legislation and legal developments. She also serves as chair of Autism in Mind, a local nonprofit organization.

Connect with Selena Kim: 

Website: https://gowlingwlg.com/ 

Newsletter: https://www.linkedin.com/newsletters/6886469987788177408/ 

LinkedIn: https://www.linkedin.com/in/selena-kim-5934b14/ 

Connect with Jeff Harty: 

Website: https://nyemaster.com/attorney-directory/jeffrey-d-harty/

Email: jharty@nyemaster.com

LinkedIn: https://www.linkedin.com/in/jeff-harty-5a9a1643/