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Q&A With Lane Powell's Fran Jagla
Law360, New York (March 26, 2013, 12:21 PM ET) -- Frances M. Jagla is a shareholder in Lane Powell
PC's Seattle office. She focuses her practice on U.S. and international trademark, copyright and Internet
domain name matters, including name development, clearance filing, registration, maintenance and
enforcement for Fortune 100 companies as well as individuals, startups and midsize organizations. She
spent more than 20 years as in-house counsel for Miles Inc. (now Bayer USA), Abbott Laboratories and
Microsoft.
Q: What is the most challenging case you have worked on and what made it challenging?
A: It was an acquisition of part of a company located in Spain. My client was purchasing a portion of the
company relating to nutritional products, while the remainder of the company was going to continue on
with their dairy business. Both companies wanted to be able to use the company name on their
products. Negotiating the splitting of the trademarks during the noncompete period and afterwards was
often difficult, and it turned the trademark into one of the focal points of the deal. Part of the challenge
came from negotiating in a language other than English (by the way, when negotiating with non-Spanish
parties, you shouldn’t presume that those parties don’t understand Spanish!). Finally, once the deal was
completed, the parties needed to have approval from the Spanish notary. Spanish notaries have an
amazing amount of power to either approve or kill a deal; however, after a bit of nail-biting, they
approved this deal.
Q: What aspects of your practice area are in need of reform and why?
A: In the United States Patent and Trademark Office, companies outside of the U.S. are allowed to file
trademark applications for a laundry list of goods and services well beyond what they will actually have
a “bona fide” intent to use. Once their marks are registered in that foreign country, they can receive a
U.S. trademark registration for this extended list of goods. It puts U.S.-based applicants at a
disadvantage, as they will register with a much more specific list of goods. In addition, searching and
clearing new marks are much more difficult as the searcher doesn’t necessarily know which goods are of
specific interest. While it is possible to move to cancel the registration in respect to the goods, it is a
costly and often lengthy process. We need to close those loopholes.
Q: What is an important issue or case relevant to your practice area and why?
A: There are at least two that come to mind. The first is the expansion of the generic top level domain
names (“gTLDs”). This will allow for the ownership of gTLDs such as .microsoft, .americanexpress or
.lanepowell. Most of the gTLDs will be owned and managed by the owner of the trademark. However,
there are hundreds more applications for gTLDs that are more generic. I don’t worry too much that
Microsoft, American Express or Lane Powell won’t treat third-party trademarks properly. I do worry that
other groups may not be so effective at policing misuse of trademarks. On the other hand, it could be
the full employment opportunity act for lawyers!
The second issue deals with the European Union and the definition of use in the E.U. The Leno Merken
BV v. Hageldruis Beheer BV case that was recently decided held, effectively, that genuine use was
dependent upon the goods/services and what was customary. Case C-149/11, The Leno Merken BV v.
Hageldruis Beheer BV, 2012 ECJ EUR-Lex LEXIS 3374 (Dec. 19, 2012). The cases will be decided on a caseby-case basis. I thought the discussion was interesting that if someone was selling lederhosen, it might
be sufficient if those sales were only in one country. Selling from one E.U. country into another is almost
always going to be better. Perhaps this will be the second full employment act for lawyers.
Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.
A: Raymond Geraldson from the Pattishall firm. Ray was my outside counsel for many years during my
in-house days. I was always impressed with his ability to be courteous and rational while dealing with
contentious matters. To this day, I take his approach that you don’t need to be a jerk to be a good
attorney. Exhibiting professional courtesy toward your opposing counsel and their clients is always the
right thing to do. Courtesy should never be confused with weakness.
Q: What is a mistake you made early in your career and what did you learn from it?
A: In the context of acquisitions, the mistake was not to fully grasp the client’s “end game” regarding
what they really wanted out of a deal. It turned out that the client really didn’t want the whole
company; they wanted a single product but thought that they had to go after everything. After very
lengthy (and expensive negotiations), we found that we could purchase the rights to just the product.
Our discussions would have been concluded in about two days rather than in the month it took to get
there.
Really, there were two lessons here. Always understand what your client wants. If they don’t know,
keep asking questions. Second, never begin to negotiate for something that you really don’t want. The
second lesson was reinforced every day as I kept a one-legged paper mache parrot on a rusty perch
hanging from my ceiling. Negotiations are easy to start, but you can’t always break them off when you
recognize that the target is not really what you want. Clients loved the visual!
The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its
clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general
information purposes and is not intended to be and should not be taken as legal advice.
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