Trademark Best Practices Session 108 Moderator: Erica M. Fischer, Senior Trademark and Copyright Counsel Hewlett Packard Enterprise Company Panelists: Charles Hooker, Partner, Kilpatrick Townsend & Stockton LLP Alisa Key, Counsel - IP, Pearson Education Monique Liburd, Trademark Counsel, Google Inc. Jack Wessel, Counsel, IP, Gilead Sciences, Inc.

Agenda: Panel Q & A Conversational Format Interactive Audience Polling Questions Questions from Audience Held Until The End

TM Team Structure Organization

Audience Question: For those of you that are in-house, how is trademark work managed? Primarily by an in-house team Led/managed by Outside Counsel on your behalf Split in some way between the in-house team and Outside Counsel

Audience Question: How large is the in-house team dedicated to handling trademarks – including lawyers and paralegals? 0-1 2-5 5-10 10+

What type of work falls under the responsibility of the TM team? If the in-house team manages any portion of your company’s TM work, are there tools or resources you have found you needed that were otherwise provided by Outside Counsel? What type of work falls under the responsibility of the TM team? Trademarks, Litigation, M&A, Regulatory, Lobbying?

For TM specific work, how do attorneys divide responsibilities? By business/subsidiary, by product line, by geographic region, by substantive specialties? What do attorneys handle vs paralegals? What type of peer review and collaborative efforts are systematized?

Building Strong Relationships

What techniques are useful in your company for building your network? Who do you consider your clients? Other internal lawyers, marketing/advertising/brand team, product managers? What other internal stakeholders do you interact most frequently with? What strategies have been effective to encourage clients to reach out early?

Who has the ultimate say in final decisions? How often and what type of training do you provide to your clients? OC: As outside counsel, how do you build a strong relationship with your in-house legal clients? As in house counsel, how do you decide when and what projects to engage outside counsel to assist with?

Budgeting: Legal vs Business

Audience Question: Are business units charged for routine TM related work such as clearance, filing, and prosecution fees, or does legal cover these costs? Legal pays BU Charged Some combination

Does your company charge back to the businesses, and if so, how? What techniques are effective to get senior level buy- in on costly endeavors, services, tools? OC: Have you seen any trends/changes with respect to budgeting of enforcement matters for clients?

Search and Clearance Strategies

What is the balance between internal and external searching? What tools and services are used to conduct clearance searches? When/how do you determine whether screening searches are enough vs. need to conduct comprehensive searches? How many countries do you search and does your strategy differ for screening vs. comprehensive searching depending on the country?

When is it most important to get full opinions from foreign counsel? What do you look at in addition to trademark registries, common law sources? (e.g., pharmaceutical registries, opposition filings) OC: As outside counsel, are there any searching trends that your firm has seen in the past couple of years & how do you advise clients re searching to avoid defensive enforcement actions?

Filing Strategies

Do you have standardized filing procedures, countries, lists of goods/services, forms? In companies with complex corporate structures, have you had to develop strategies around who your applicant is for your filing? What do you take into consideration when straying from standard filing strategies?

Audience Question – Do you use national filings for the majority of new filings, Madrid, or do you have a mixed approach? National filings Madrid Mixed approach

When do you use Madrid vs national filings? How has/will Brexit affect your filing strategy? What docketing system do you use? Is there an internal docketing team?

Watching/Monitoring

Audience Question: Do you use a watch service to monitor new third party trademark filings similar to your marks? Yes No

Audience Question: If yes, how many/which marks do you watch: Only house marks House marks and key product/service marks All marks

Who does the first line watch notice review and how is it escalated? What tools do you use to watch trademark filings, domains, or other matters? How do you evaluate a potential partner service provider (e.g., MarkMonitor / Thomson, Corsearch)?

Enforcement Strategies

How do you prioritize your online policing and enforcement efforts How do you prioritize your online policing and enforcement efforts? Is it business led, proactive by the trademark team, or are there other motivating factors? What is the scope of the team’s enforcement responsibility (e.g., only trademark or counterfeiting)? What types of enforcement matters do you pursue and do you have different strategies for each (e.g. C&D, Oppositions, Court, UDRP)?

How do you track/manage enforcement matters – through your main docketing tool, via any third party enforcement tools/portals you use, or otherwise? When do you call Outside Counsel for advice? How do you collaborate with your in-house colleagues in other countries on enforcement matters?

Audience Question: Do you routinely send C&D letters even if you would not intend to follow up with a court action should the third party not respond favorably to the initial or follow up letters? Yes No

OC: Are there things you advise clients about before they send C&D letters? acquiescence, laches, declaratory judgment actions? OC: How do you counsel clients regarding E- discovery and understanding litigation and its interaction with IT? accessing e-mail and other data

QUESTIONS? THANK YOU!