J. Scott Evans: the early riser

“I generally get up at 4am and work on email for two or three hours before I begin my day. And you know, I’ve set my alarm at 3am and you have communications calls and then go back to sleep. You do those kinds of things; you make the necessary adjustments that you have to.”

Meet J. Scott Evans, who in January was named as the 2015 president of the International Trademark Association (INTA), replacing Mei-lan Stark. If one thing is for sure, he is taking this role seriously.

Evans, whose day job is associate general counsel at software company Adobe Systems, tells WIPR he wants to take INTA to the next level, an aim that will require implementing change at the organisation

“INTA has been growing since I first became a member in 1994, and it has become increasingly more international. We really want to go to the next level and if we’re going to be a premier world class international organisation, that’s going to require a lot of change.

“I don’t think the tactics and the methodologies we used to get us to the point we are today are the same that are going to get us to the next level.

“So that will require a lot of change in how we think and do things. People in general are resistant to change and I think lawyers particularly can be resistant to change. What we don’t do is give our leadership any training on how to lead through change and how to identify people who are resistant,” he explains.

The skills he wants people to hone include running meetings and setting agendas, as “we have not really focused on those kind of skills”, and he hopes they can be a focus of INTA’s leadership meeting, held every November.

This year, Evans adds, he will create his own task force on “association governance” and says it’s time for INTA to take a “hard look” at its by-laws and policies.

“We’re going to make sure that what we’re doing today—the practice and procedures we have—actually fall in line with those by-laws, that we’re not missing something and whether those by-laws are still necessarily relevant.

“I’m putting together a task force that includes our counsel, some former counsel that have served us, some former presidents, and some members, and we’ll put that together and hopefully by the November meeting they will provide us with a report and an implementation plan that we can use going forward.

“I can’t guarantee that there will be any changes recommended, but we’re going to look at things such as should the presidency be a multi-year term. A lot of presidents feel just as they’re getting in sync with managing everything and getting to where they feel really confident, that it’s time to turn over the baton, so that’s an issue.”

Role of trademarks

Another area that interests Evans, he says, is the role of trademarks themselves. With the advent of social media and the power that consumers now have, he believes trademarks are merely a legal vehicle—the certificate that defines legal rights—and that “in our roles today, we really need to talk about a brand, and a trademark is really only the legal side of what a brand is.

“A brand is an emotional response to the affinity that consumers have to the goods or services that the brand applies to, and we need to think of ourselves as working with marketing departments, branding departments and advertising agencies, and as being brand managers,” he argues.

One of the “hot issues” he discusses is 3D printing, still a fairly young industry but which could provide increasing headaches for intellectual property lawyers. Evans believes it will be one of the “seed changes” in trademark law and affect practitioners as profoundly as the commercialisation of the internet.

"They’ve said Amazon can’t have .amazon. There is nothing that I’m aware of in 22 years of practice in international law that backs up that position."

“Here’s why. What happens when somebody can make a product in their home and they don’t put your trademark on it? Generally how you go after counterfeit products is through trademark law because someone has put a similar label on it, but what if they’re taking your configuration and not putting your trademark on it?

“For many years, the trademark attorneys who I’m familiar with have regarded design patents as superfluous unless they’re in certain industries, and trade dress and trade configuration registrations are really murky and difficult,” he says.

3D printing, he adds, is “going to change that—it’s going to change the way we do design registrations in Europe, design patents in the US, and trade dress registrations. Configuration lawyers are going to see a wholesale change in the next few years”.

Moving on to discuss China, where he says foreign trademark owners have typically been worried about counterfeiting and bad faith registrations, Evans claims that in the last ten years China has done more to reform its system than any other government.

“I don’t think they get enough credit for it. They are often abused in the press and I think that the government has really taken efforts to get the system in line internationally.

“What we can offer Chinese trademark owners is a wealth of experience dealing with internationalised brands and moving brands to the international marketplace and what issues they face,” he adds.

The power of the GAC

On a less positive note, however, Evans reveals his worries about the Governmental Advisory Committee (GAC), a group of government members that advises the Internet Corporation for Assigned Names and Numbers (ICANN), an organisation INTA has worked with for a long time.

“The GAC has become exceedingly active—proactive—in its dealings with the ICANN board, and I for one am personally very concerned about that. I think they’re trying to create themselves as a ‘super legislator’, as opposed to an advisory committee.

“For example, they’ve said Amazon can’t have .amazon. There is nothing that I’m aware of in 22 years of practice in international law that backs up that position; I think it’s a very emotional reaction from some countries.”

In May 2014, ICANN finally denied Amazon its applied-for .amazon generic top-level domain, ten months after the GAC urged it to be rejected based on objections from Brazil and Peru, which share the Amazon region.

What concerns Evans, he explains, is the precedent the decision could set.

“What happens if next week it’s governments and totalitarian regimes that don’t want any women on the web any more unless they have their face covered, or they don’t want any content regarding women’s rights or gay rights?

“What I’m really concerned about is a process within a body that has no accountability to the community or to a political body. That’s very concerning, not just as trademark owners, but as citizens of the world we should be very concerned.

“We should all participate and make sure that we let ICANN and our own local governments know that any model that creates some form of super legislator is unacceptable,” he adds.

Moving back to discussing INTA, which changed its name from the United States Trademark Association in 1994, Evans says that for a long time the organisation has struggled to be “international”.

“We’ve made great strides, but there are a lot of people outside North America who are restless—they don’t think the strides have been big enough.

“But we have a Chinese representative office, we have an office in India, we have an office in Europe and we’re going to be looking at putting offices in other areas, maybe a regional office that handles INTA matters outside of China, and maybe something in Latin America.

“Last year we had our annual meeting in Hong Kong. In November, we’re having our leadership meeting in Panama City, which is the first time we’ve had that meeting outside the US. We’re going there to show a commitment to Latin America, to Panamanian officials, which really shows our commitment to internationalisation,” he says.

If one thing seems clear, Evans has a lot of ideas and goals, but the big question is, will he have time to implement them all? If he keeps waking up at 4am every day, he just might.