Jaime D Boggio serves as the Director of Trademarks at MaxVal. As a seasoned intellectual property attorney, he has extensive experience in dealing with US and international matters for major corporations and law firms. At MaxVal, Jaime is responsible for managing and overseeing US and global trademark renewal operations. We had the opportunity to speak with Jaime, where he shared his insights on international trademark management, protecting brands globally, and much more.
How did you first become involved in the field of intellectual property, and what motivated you to specialize in trademark law?
Jaime D Boggio (Jaime): During law school, I interned at a firm where I focused on IP enforcement – namely, handling unfair competition claims, and organizing operations to seize counterfeit goods in coordination with business associations, courts, customs, and law enforcement. This experience deepened my understanding of intellectual property, brand recognition, and enforcement as a law student, and how the international IP system (TRIPS Agreement, etc.) is split into markets that enforce IP differently, some notoriously more aggressively than others.
Afterward, I pursued a Masters in IP Law and obtained my license to practice law in Virginia. I worked at prominent law firms such as Morgan, Lewis & Bockius LLP, and DLA Piper LLP, focusing on trademark searches, clearance, prosecution, enforcement, and global filing strategies. Subsequently, I contributed to trademark renewals and recordals at CPA Global (now Clarivate) before joining MaxVal in 2021.
Could you share a challenging trademark issue you’ve worked on and the creative solutions you implemented to resolve it?
Jaime: On one occasion, I was assigned a global project with fast approaching, hard deadlines and imminent liability. To address this, my team and I quickly restructured tasks, including retraining docketing staff on how to process the data, how to read it in order to identify the critical issues at hand, legal document production, and how/when to take proper action. We leveraged direct communication with registries and local counsel directly by phone with multiple time zones – a method less common today but remarkably effective – to obtain extensions, produce evidence, and generate office actions. After just a few months, everything was successfully resolved.
How do you approach international trademark management and address the unique challenges it presents?
Jaime: MaxVal boasts a trademark presence in 218 jurisdictions with an extensive agent network, along with handling renewals in jurisdictions where direct payments are made to local PTOs. This streamlined approach mitigates costs and delays for our customers, and accelerates filing and docketing processes, securing IP protection more efficiently. Our team excels at navigating the inherent document-intensive marnature of global trademark activity, managing various rules, documentary requirements, and formalities, freeing our clients from this burden.
What do brand owners need to consider when devising their approach to protecting brands globally?
Jaime: Using international treaties, such as the Paris Convention, Madrid System, and regional filing systems (European Community, OAPI, ARIPO, Benelux, etc.), allows brand owners to expand and obtain brand protection more efficiently and at lower costs. All this is for prosecution purposes. Ensuring renewal and enforcement requires the establishment of appropriate partnerships.
In this regard, MaxVal collaborates with a top-notch network of agents to secure the extension of intellectual property rights life cycles. In addition to the continued use of their trademarks to prevent cancellations, brand owners must take into account correct registration notice usage, enforcement guidelines, and consistent brand usage.
What is your approach to educating and guiding clients on trademark strategy and risk management?
Jaime: During the phase of creating trademarks, it is crucial for marketing professionals to collaborate closely with trademark attorneys to choose their brand names. This collaboration helps minimize the risk of facing legal disputes related to trademark infringement and significantly lowers the likelihood of attempting to register trademarks that are overly common, overly descriptive, or conflicting with existing trademarks. This effort may involve some initial expenses but is undoubtedly a valuable investment.
By adopting a well-defined filing strategy and leveraging international treaties, companies can substantially reduce the expenses associated with trademark prosecution and renewals. It is also advisable for businesses to focus on markets where the requirement for “use” is not mandatory for trademark registration and renewal.
In addition, I believe that having a close working relationship with your renewal partner is paramount. After all, trademarks are often a company’s most valuable intangible asset.
