Lexology Index: Thought Leaders USA 2027 Guide - Q & A
The Lexology Index: Thought Leaders USA guide for 2027 includes the following Q&A with William Borchard, Kieran Doyle, and Joel Karni Schmidt.
Bill Borchard Q&A with Lexology Index
Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counselled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and focuses on providing guidance and advice to other lawyers within his firm and writing informative and engaging articles on intellectual property law developments.
Was there a moment early in your career when a case, client or mentor fundamentally changed how you thought about brands or the law?
A client adopted a French generic word as its cosmetics brand. Many skin care doctors had previously adopted the same French name for their offices. The client asked me to get those doctors to change their French name to its English equivalent. Although I said we had weak rights, the executive insisted, “We must try to clear this up as a business matter” and most doctors freely agreed to make the change. I learned that practical business goals sometimes can be as important as legal rights when it comes to brand names.
Over the years, how has your own definition of “success” as a lawyer evolved?
In the past, we provided clients with a lengthy legal memo stating the issue, conclusion and detailed reasoning, including case summaries with citations. Now, this has evolved into quickly giving the client the conclusion without preparing the background memo. Thus, “success” is now being able to quickly provide a client with bottom-line correct legal advice based on experience and research while avoiding the cost of preparing a memo.
Looking back over several decades of trademark jurisprudence, what core principles have remained surprisingly stable and which do you think younger practitioners most underestimate?
Choosing a distinctive trademark and avoiding a likelihood of confusion or dilution remain stable core principles. Given businesses' tendency to adopt nondistinctive, merely descriptive names, younger practitioners underestimate the need to alert clients to the legal and commercial problems that may result.
What aspects of trademark judgement do you believe are least likely to be automated?
Likelihood-of-confusion and dilution determinations will continue to require human judgement.
In an era of crowded registers and formulaic naming, how should brand owners think about true distinctiveness versus marketing strategy?
Brand owners should strive to adopt suggestive marks that create positive mental images rather than merely descriptive marks.
How should multinational clients think about consistency when consumer perception varies dramatically across markets?
Multinational clients should seek to use consistent packaging trade dress even though they may adopt different brand names locally.
What do you think is hardest to teach in trademark law and why?
Drafting contracts that (a) avoid repetition, (b) are relevant to the particular transaction and (c) use clear wording. This takes practice with close supervision.
What do clients tend to value most about the firm’s trademark advice?
Clients tend to value the firm’s responsiveness, experience, practicality and reasonable charges most.
Kieran Doyle Q&A with Lexology Index
Kieran Doyle is the Chair of Cowan, Liebowitz & Latman. He litigates trademark and copyright matters in federal and state courts, counsels clients on trademark clearance, registration, prosecution, licensing and enforcement and represents brand owners before the Trademark Trial and Appeal Board. He is particularly active in trade dress protection, including for footwear and bags and advises clients across fashion, consumer products, publishing, sports marketing, restaurants, food and beverage and retail.
Describe your career to date and how you came to specialise in trademark law.
I went to Fordham Law at night while working full-time at the Federal Defenders Office. That experience was invaluable because it forced me to manage time, tasks and competing priorities. I then spent three years at Patterson Belknap, a wonderful firm, but one where I was not getting trademark work. So I joined CLL, where I could do all the trademark work I could ask for.
For several years at CLL I represented Major League Baseball before the Trademark Trial and Appeal Board and negotiated settlement and coexistence agreements. My first client was Vogue International, which launched ORGANIX shampoo, now known as OGX. I bet you would recognise it if you saw it. I defended Vogue in four litigations targeting the ORGANIX and MOROCCAN ARGAN OIL marks and helped the company transition from ORGANIX to OGX, including by filing for a U.S. registration covering the trade dress in its bottle. Last year I tried a case in the Eastern District of New York for a multinational consumer goods company.
Some of the most interesting work I have done involves trade dress. It started when I defended three entities in an ITC action brought by Converse, which claimed that my clients’ toe cap, toe bumper and midsole designs violated Converse’s trade dress in its Chuck Taylor and All-Star sneakers. I later defended clients against Nike and Vans in trade dress litigation.
Recently, I filed more than a dozen lawsuits on behalf of Bogg Bag, Inc. against companies selling counterfeit and infringing beach totes. If you google “Bogg Bag,” you will likely recognize the trade dress immediately. This has been particularly gratifying because the designer of the Bogg Bag came up with the idea on the beach with her kids, developed the prototype in her dining room and lives in our town. Hers is a great success story.
How have client expectations around brand protection evolved since you started practising?
Client expectations have pushed trademark practice toward more ambitious and creative strategies. On the prosecution side, that has meant protecting not only names and logos, but also the look of clients’ products through design patents and trade dress. On the enforcement side, I have found that diligent litigation, paired with a recognition that trademark disputes, more than most, lend themselves to creative solutions, can produce practical and cost-effective programs.
In your experience, where do brand owners most often underestimate risk when building or expanding their trademark portfolios?
New companies often “bet against themselves.” They don’t have faith in their ability to expand internationally or into new product categories, so they clear their marks too narrowly and limit future opportunities.
How are recent developments in trademark law, particularly increased scrutiny at the U.S. Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board (TTAB), affecting brand strategy?
The spike in failure-to-function refusals forces brand owners to break away from the pack when selecting marks. That is ultimately healthy: it encourages stronger marks, enhances protection and avoids the mistaken assumption that as long as you own a registration, you can stop others from using your “mark.”
Online infringement actions, including multi-defendant “Schedule A” cases, have become increasingly common recently. How are these shaping trademark enforcement strategies?
The ability to go after scores of anonymous infringers at once is music to the ears of brand owners. But courts may be growing sceptical of Schedule A litigation, so it may prove to be a flash in the pan.
How are co-branding arrangements and joint ownership structures influencing trademark strategy today?
Co-branding arrangements have become increasingly popular and require carefully negotiated cross-licenses. True joint ownership can be tricky, but companies can avoid single source identification and quality control problems by creating a standalone entity that owns and controls the jointly developed brand.
From your perspective as chair, what do you think makes Cowan, Liebowitz & Latman distinctive in the trademark market today?
CLL combines top-quality, cost-effective client service with a culture that fosters unusual loyalty and commitment from our attorneys. We have low turnover because our attorneys and staff value the respect they are shown within the firm, the calibre of the work we do and the prestige of our clients. That longevity gives clients access to lawyers with deep experience, practical judgment and real appreciation for the nuances of trademark law.
What underrated skills would you encourage up-and-coming practitioners to develop?
First, learn from opposing counsel. If you pay close attention, you can adapt your strategy and tone to the adversary you are dealing with. And if you recognise that yours is not the only way to get the job done, you can learn from the way others navigate disputes.
Second, never forget that your job is not to make yourself look smart, but to serve your clients’ needs. That includes making their lives easier and their choices clearer.
Third, if you want clients to value you, think about your own interactions with those who provide you services. That might be the expert witness running a survey for your case or the contractor doing work on your home. Then give your clients the same responsiveness, clear guidance and value that you look for in others.
Joel Schmidt Q&A with Lexology Index
Joel Karni Schmidt is a partner at Cowan, Liebowitz & Latman, P.C. and a member of the firm’s Executive Committee. For more than 25 years, he has advised clients on trademark, copyright, new media, right of publicity, licensing, enforcement and transactional matters. He manages global IP portfolios and handles disputes, proceedings and co-branding arrangements for clients across fashion, hospitality, financial services, technology, media, consumer products, food and beverage and nonprofit sectors.
Describe your career to date.
Over the last 25 years, my practice has grown with my clients’ businesses, from trademark and copyright clearance and prosecution to global portfolio management, litigation, transactions, co-branding deals and cross-border disputes. I have been fortunate to work with companies in diverse industries and of all sizes, based in the U.S. and around the world, on cutting-edge issues. In recent years, that has included advising on the intersection of intellectual property and artificial intelligence, which has kept the practice intellectually engaging and commercially focused.
What do you enjoy most about working in trademarks?
I enjoy providing clients with practical, cost-effective solutions to legal issues and disputes and seeing their brands grow and succeed. Trademark law involves the intersection of law, business, technology and consumer perception, which makes it especially interesting. I also enjoy working on cross-border matters that evolve as technologies evolve, requiring both sound legal judgment and creative problem-solving.
What has been a recent career highlight?
A recent highlight was helping a leading hospitality company amicably resolve a complex cross-border dispute involving multiple oppositions and cancellation proceedings. It was especially satisfying because the matter required coordination across jurisdictions, practical business judgment and a resolution that allowed the client to move forward without prolonged conflict.
As brand portfolios become increasingly global, what challenges do you encounter in coordinating protection and enforcement across multiple jurisdictions?
Filing strategies, use requirements, opposition procedures and enforcement options can vary widely from one jurisdiction to another. It is both challenging and rewarding to help clients navigate these issues, with the assistance of trusted local counsel, in a cost-effective and strategic manner. The goal is to provide coordinated advice while remaining aligned with the client’s broader business objectives.
How has the growth of online marketplaces and social media changed the way trademark infringement is detected and enforced?
With the growth of online marketplaces and social media we’ve learned to effectively utilise infringement monitoring and evidence preservation tools and platform takedown procedures. Clients often ask us to help them prioritise intellectual property enforcement and address issues they are unable to resolve on their own.
Emerging technologies such as AI-generated content and new digital assets are creating novel trademark questions. How are you advising clients to navigate these developing issues?
AI-generated content, virtual goods and digital assets are relatively new, but the core questions remain whether a designation functions as a mark, who owns it, how it is used and how consumers perceive it. We are helping clients update clearance protocols, licensing terms, platform policies and enforcement strategies to address these evolving risks.
What makes Cowan, Liebowitz & Latman, P.C. stand out from its competitors in the market?
Our firm brings together a deep bench of highly experienced trademark, copyright and patent attorneys with a collaborative, practical approach to problem-solving. Clients value our sophistication, judgment, responsiveness, reasonable fees and efficient adoption and use of new technologies.
If you could change one thing about trademark legislation, what would it be and why?
I would like to see continued refinement of rules that address inaccurate, unused or overbroad registrations without creating unnecessary burdens for legitimate brand owners. Register clutter can make clearance more difficult, increase costs and complicate prosecution and enforcement decisions. A cleaner and more reliable register would benefit applicants, trademark owners and consumers by making rights easier to assess and helping the system function more predictably.