INTA 2014: Visa teaches lesson on brand protection
Mobile app markets are increasingly a hotbed for trademark infringement and brand owners should be vigilant in response, according to Visa International's in-house counsel Denise Yee.
Her tip, which came on the first day of the INTA conference in Hong Kong, was part of a wider talk about the credit card company's IP strategy.
“I'm not sure if you're watching your brands on mobile marketplaces, but they're being infringed,” she told the audience in a session called 'The essentials of managing a worldwide trademark portfolio'.
Visa, she explained, owns more than 6,800 trademarks, 4,000 domain names, and deals with about 1,000 enforcement cases.
“I manage it all,” said Yee, adding that enforcing Visa's trademarks on social media is another “interesting and emerging area” of brand protection.
Working with a third-party vendor, Visa's marketing team crawls social media sites for infringement, but Yee does not always take action against offenders. For example, she said, “if there is only one like” on a site, it might be more detrimental to take it down, so “you need to think about traffic and the number of people looking at it before taking action”.
Led by Yee, the Visa IP team has five people, which means “we have to be very efficient in how we divide the work”, she said.
Deciding which of the company's products and services to trademark involves many considerations, she said, because not all names necessarily need to be registered, particularly descriptive terms such as “Visa commercial card” or “Visa purchasing card”.
“Does your project need a name? Is this product going to be marketed to consumers or businesses? What's the shelf life of the product or service?” are some of the questions Yee asks when thinking about registering a trademark.
When clearing a trademark, Visa will create a list of jurisdictions that might be relevant to its business, Yee said, but while the company always clears a trademark, it will not always register it because of the descriptive nature of some of its products.
Referring to maintaining trademarks, she said “we try to do as much as we can in house”, including renewing them and showing proof of use.
The INTA conference lasts from May 11 to 14.
