S. Roxanne Edwards is an intellectual property attorney with Bell Nunnally in Dallas. She recently sat down for a wide-ranging Q&A delving into her path to the law, her transition to Bell Nunnally during a pandemic, favorite aspects of her work and emerging and persistent IP challenges.
When did you join Bell Nunnally and how different was it given the pandemic-related restrictions?
I joined the firm in December 2020. With a lot of my colleague attorneys working from home, the biggest challenge for me was integration within the firm – getting to know my partners, my colleagues and our professional staff. It wasn’t as if I could just invite someone to lunch! So, my incorporation into the firm and its culture may have been delayed somewhat; but Bell Nunnally is a very welcoming and tight-knit place, and even with that six-month delay to relative office normalcy, I now feel right at home.
What was your path to law?
As an undergrad (earning a B.S. from Florida State University), I planned to attend medical school and actually worked at a medical school doing research in one of its labs while earning my masters degree. Ultimately, I decided to pursue a different path: law. My strong science focus has proven quite useful as intellectual property requires an attention to detail and technical knowledge that is similar to many medical positions.
What is your practice “elevator speech”?
My practice revolves primarily around trademarks and brand management. My clients vary from individuals with just a few trademarks to international companies where I manage the registration and enforcement of their brands worldwide.
For the smaller and mid-sized clients, I really enjoy being the person that not only manages their brands and their trademarks, but also serving as sort of an outside general counsel – even if they have in-house counsel. It all comes down to connecting with my clients. The trust we build together comes from getting to know their business from top to bottom, and with that understanding, I’m better able to act as a counselor and advisor and ensure that everything I’m doing aligns with company goals. That’s an exciting and motivating aspect of my practice.
What are two or three of the most interesting matters you have handled recently?
I have handled several interesting matters related to the protection and enforcement of trademarks for a leading hotel in the hospitality industry in connection with the largest resort currently in development in the country that is located in the Dallas area.
Assisting a client navigating the protection of trademarks and other legal issues following recently-implemented FDA laws and regulations related to synthetic nicotine products.
For small and mid-size companies, how much more aware are they of the breadth of IP they possess and the need to protect it than, say, 10 years ago?
Like all things, COVID disrupted these companies’ progress with respect to brand management and IP stewardship. The crisis and resulting interruptions forced businesses to turn inward, pivot their operations, and often pursue new avenues to ensure they were reaching customers. As the acute portion of the pandemic eases, these business owners are turning their attention to IP again. In many instances, they are now aware of their IP’s value in a different and more wholistic way, having identified global blind spots or expanded to new and sometimes foreign markets. I wouldn’t necessarily say that they’re more aware, but they are definitely aware in a different way. As collective IP understanding grows, it presents a real business development opportunity for practitioners such as myself and for my colleagues in related and complementary practice areas.
How has social media expanded IP concerns for clients, and have you ever had a new business or client come to you already wrestling with a social media and brand crisis?
I have, indeed, encountered many businesses that haven’t thought about their brands in any aspect, including social media. Sometimes this is due to the hectic nature of starting up and running a business – a situation further compounded when growth moves at an exponential pace. Not only do these often-stretched leaders have to think about enforcement of their brand versus competitors, but also within the context of the freewheeling world of social media.
How does international expansion of a business change the IP protection equation?
It’s an important consideration, for sure. When companies grow quickly and expand into international markets, the IP protection issue – specifically the intention required to craft a brand protection strategy and the attention to market regulatory details and compliance needed – becomes a critical component. It takes work and time but is incredibly vital to a company’s interest and wellbeing in the global marketplace and for the long term.
How has the severing of many ties with Russia and the swift exit of major brands from its marketplace impacted IP for your clients?
Most of my clients have done business in Russia, but it’s been fairly minimal. One issue are trademark applications that were filed in Russia prior to the conflict and the U.S. response. Also, given that most companies are unable or unwilling to do business in Russia, clients could lose their existing rights since their trademark registrations may become vulnerable to cancellation due to non-use of their marks. The uncertainty as to how things will play out creates serious concern about the viability of trademark protection in Russia for my clients and all brand owners.
How challenging has it been to protect client brands that sell on online marketplaces, especially where counterfeits are known to be rampant?
It’s like a game of whack-a-mole: because you go after and shut down some sellers only to have others pop up in their place. So, it is very challenging. Further, the online platforms have typically escaped responsibility and liability. Although most platforms have measures in place to help brand owners, this can be in direct tension with a platform’s desire to have the maximum number of products available, which means less scrutiny and the lack of incentives. In the past few years, a suite of tools and options has started to emerge that gives brand owners fighting fakes more of a voice. The potential liability of e-commerce platforms also continues to be a trending topic. Still, overall, there is a long way to go and much work to be done.
The good news is that I enjoy what I do and feel I have a positive impact for clients as they manage their brand assets and defend their IP.
What are the emerging trends or key developments you are following in your IP practice?
The Trademark Modernization Act of 2020 went into effect on December 18, 2021. It created new avenues for enforcement and helps streamline prosecution and enforcement strategies for clients, as well as tackling fraud. I have been closely monitoring the USPTO’s implementation of two new ex parte proceedings (i.e., expungement and reexamination) and the amount of evidence required to support the relevant nonuse claim.
Protection and enforcement of brands and trademarks and navigating the complex IP and brand protection challenges in the Metaverse.