Alt Trademarks: Episode 16 - Josh Jarvis
Alt Legal Team | December 04, 2017
Hannah speaks with Josh Jarvis of Foley Hoag. They discuss his role at the firm as well as his recent appearance in the “Don’t Say Velcro” viral video. You can find Josh on Twitter at @jsjesq.
The Trademark and Copyright Law Blog
If you’d like to read or follow along, you can find our transcript below.
Hannah: (00:03) Hi Josh. Thanks for joining me.
Josh Jarvis: (00:05) Thanks for having me.
Hannah: (00:08) Absolutely. So you’re currently a partner at Foley Hoag and had been there for over twelve years. So as a little bit of background, can you tell us about your current role there?
Josh Jarvis: (00:18) Sure. Sure. My primary role, along with my colleague Natasha Reed, is overseeing and coordinating our firm’s trademark practice. So I help clients with high-level trademark and copyright strategy, policing, and anti-counterfeiting, with a focus on internet. So domain names and social media and other emerging issues.
Hannah: (00:48) And based off of your LinkedIn, it looks like you started with Foley right after law school. So did you always want to work with a firm and worked in IP? How did you sort of end up where you are?
Josh Jarvis: (00:59) No. So I confess that I did not always wanted to work in a firm, let alone and IP. So I attended law school, I guess because of the subject matter interest me and because I am, I guess naturally curious and enjoy school more than work, which it turns out law school is a lot of work. So if that’s your strategy, it may backfire, but I didn’t have a burning desire to practice for the long-term, especially, in a large firm. So I think the original plan was to practice for long enough to pay off my loans and then consider pursuing something I actually enjoy which would be acting or music or video game journalism or even med school. Needless to say, the law thing stuck. It turns out I enjoy practicing in a large firm or at least at least at Foley Hoag because I, as you said, been there for for twelve years now. And, you know, as far as IP goes, I think that spring naturally from my interest in creative endeavors and I became interested in trademarks specifically as a Junior Associate. I actually started doing trademark work assisting John Welsh, who you may know as the, the proprietor of the TTABlog, among other things. When he worked at my firm, I did some trademark work for him.
Hannah: (02:48) Oh, that’s great. Yeah. His blog is so good. We read it all the time at Alt Legal.
Josh Jarvis: (02:54) Yeah. It’s a, the trademark world, it turns out is very small.
Hannah: (02:57) Yes. Yeah, for sure. And you touched on this a little bit before, but what issues do you sort of specialize in now and if, if it’s different, what issue, what issues in IP sort of interest you the most?
Josh Jarvis: (03:12) So, I specialize in the full range of trademark, copyright. and domain name issues other than actual litigation, which I leave to the litigators. So, from trademark clearance to false advertising, risk mitigation, to trademark licensing, to IP due diligence. There are a few things I think that interests me the most. And which I’m lucky enough to work on regularly. The first is, is I guess what you’d call it, old fashioned trademark prosecution. So I love working with clients to investigate and clear and adopt new brand names, whether they’re well established companies exploring, for instance, a new flavor, brand for food product, or a startup company determining, you know, what is going to be their core identity, you know, their core company name and brand. There’s something very satisfying about walking into like a grocery or electronic store and seeing a print or TV ad and seeing a bunch of brands that you help investigate and clear and protect and register. That’s pretty cool.
Josh Jarvis: (04:29) The second thing that I get to do regularly that I enjoy is the application of, of existing IP frameworks to emerging technologies, so like social media for instance, which obviously has appended how we communicate and how we interact with each other and with companies and brands. So, you know, trying to navigate traditional trademark and copyright laws to and how they apply to these, to these new technologies and helping clients navigate those waters and how does technology, for instance, effect what we perceive or what is perceived as fair use from a copywriting trademark standpoint, even if the law is the same law that we’ve been applying for the past fifty years in terms of copyright fair use. How, how did the norms of social media you know affect best practices for instance in terms of enforcement? You know, I think one area where, where that’s been kind of fun to, to sit back and observe when you’re not in the crosshairs is, you know, types of enforcement that, that we’ve always done, but in the age of social media are perceived as overly aggressive or even even bullying to use to use that that’s a fun word. So, that’s really interesting to me. I guess a third thing that I get to do regularly that I, that I really enjoy is um, helping pro bono clients with their with their IP issues. My firm, Foley Hoag has a strong and long-standing commitment to social justice and it frequently supports organizations similarly committed by providing pro bono legal advice, including IP advice. So, women entrepreneurs, artistic organizations dedicated to say, getting urban youth involved in artistic after school activities. So I’ve been lucky enough to, to support these organizations in my own, admittedly a kind of a niche way
Hannah: (07:02) That’s great though. That’s awesome. And you also contribute to the trademark and copyright law blog, which I find myself on all the time. So how did you get involved with that and how do you choose sort of what you’re going to write about?
Josh Jarvis: (07:14) Yeah, so the, the trademark and copyright law blog started out at Foley as an infrequently updated marketing vehicle, I think, for our firm’s trademark, copyright and unfair competition practice group. So I’ve been involved in the blog I’m from its inception. But it was. When I first got involved, it wasn’t real. I
t was a shadow of what it is now. A few years ago, my partner Dave Kluft started really, you know, putting time and energy into, into the blog and he’s a, I mean he writes, I say seventy five percent of the articles. He’s a prolific and an entertaining writer and he, he really brought the blog to the next level. So he and my colleague Natasha Reed, edit the blog now and they do a really fantastic job. As you’ve noticed, there’s good analysis, there’s timely alerts and commentary. So just great stuff. Yeah, I think it’s actually been featured in the blog B-L-A-W-G 100 for the past two or three years.
Hannah: (08:27) Yeah, it’s a really good resource. I always see links to it on twitter when I’m looking for new articles and things like that. It comes up all the time.
Josh Jarvis: (08:35) Excellent. Our search engine optimization is working.
Hannah: (08:42) Yeah exactly. All that SEO is paying off. So, I actually reached out to you, and this will kind of make sense, you know, you mentioned before, some of your interests. I reached out to you after watching, what I think is considered now, a viral video that you were in, which is, Don’t Say Velcro video, which I’ll link to in the show notes, but for those who didn’t see it, which everyone should, and as I mentioned, I’ll link to it so you can watch it. It’s a video that you were a part of and I’ll just maybe let you kind of describe the video and how it came about.
Josh Jarvis: (09:25) Sure. So, so the video is, how to best describe–it’s a musical video. It’s mostly a bunch of actors who are playing lawyers of the Velcro company. And they’re singing in a very, sort of, We Are the World absurdly dramatic way about the velcro trademark and regarding its proper use. So, it’s a really bold, I would say, and catchy song. I mean, the refrain is and I won’t swear, but the refrain is, this is effing hook and loop. With the refrain is an important consumer message. You know, use the velcro mark properly because it’s a brand and not a thing. So although it’s not clear from the video itself, I should note that most of the folks in the video are in fact professional actors. I’m playing lawyers, so I am most decidedly not a professional actor and there’s one other real lawyer in a video which is Velcro companies’s in-house legal consultant, um, Alexandra DeNeve. So she and I are both in the chorus.
Hannah: (10:37) And I, so I watched the behind the scenes um where you’re interviewed and you said you were roped in because quote, “you’re a bit of a ham.” But can you tell me a little bit about how you got involved with all those actors? In I guess the other legal team members as well?
Josh Jarvis: (10:49) Yeah, of course. So Foley Hoag has represented the Velcro companies in connection with trademark matters and other types of matters for many years, much longer than I’ve been at the firm. But I’ve been working with the company for I guess over a decade at this point in connection with prosecution and policing for the velcro brand and other brands of the Velcro Companies. So the video is just one of the many, many brand protection strategies that the Velcro Companies use to support the Velcro trademark. Though certainly it’s a bit bolder and more in-your-face then I would say our standard trademark protection and enforcement work entails. So, and to be clear, the video, the video itself wasn’t, wasn’t my idea, it wasn’t my firm’s idea. It was driven by a cooperative effort between the legal team at Velcro and the brand team at the Velcro companies and particularly Alex DeNeve, whom I mentioned in the legal department, and Julie Berry, who is the Global Director of Brand. Um, and of course the creative and production came from Penn Holderness and, and the Walk West team in North Carolina, and we and other outside counsel, provided some guidance, but it was really a group effort in which I played a very small role that I was nonetheless proud of.
Hannah: (12:28) Yeah absolutely. It becomes clear, I’ll also link to this landing page, which they set up, but it kind of elaborates on this idea, it provides even a quiz to tell you whether you’re using the Velcro trademark correctly. Um, so you can kind of tell us is this well rounded branding effort. Um, have you experienced any of the reaction? How has it been? Do you feel like it kind of accomplished what they had in mind when they came up with this idea?
Josh Jarvis: (13:02) I think it did. The reaction, as I understand it, was mostly positive. And as you’ve noticed, the video, I think, genuinely went viral very quickly when it launched in a way that, I think, the Velcro Companies hoped it would, but it’s really, you never know with these types of, it could’ve been a one and done 500 view type video, but it, but it really, it really went viral. So, I don’t have the exact numbers, but I understand that the companies were very pleased. Um, and an interesting side benefit, and not surprisingly given the subject matter, is that the video made the rounds of the trademark bar, very quickly and prompted considerable discussion not just regarding anti-genericide and brand awareness marketing efforts generally, but also discussion about non-traditional trademark protection strategies. More generally. So, we’ve seen the video displayed at trademark in advertising law conferences as a positive example of these types of efforts. And it’s my understanding that a number of trademark law professors have incorporated the video into their teaching materials. So it’s, um, pretty incredible reach and in terms of accomplishing what the velcro company set out to accomplish, I think time will tell, but certainly in the short term, the viral nature of the video and the general buzz generated by the video have been exactly, I think, what the company was looking for because at the end of the day, the goal of the video is to reinforce the fact that Velcro is a brand and not a thing and that message comes through pretty loud and clear and I think it was, it was especially gratifying to the company to see the campaign compared by various outlets to the famous and successful Xerox brand campaigns, the late nineteen-eighties, which, you know, kind of were similarly aimed at educating consumers as to the Xerox brand.
Hannah: (15:17) Right. Yeah, I was going to mention that even outside legal circles, I mean, I had some friends who started asking me to explain genericide to them, which I thought, you know, was a funny effect from a viral video. Um, but it was also really great and it seemed like a lot of people, when I was on youtube looking at it, there’s a lot of comments where people are, you know, sort of actively trying to understand this trademark concept. Um, so I mean in general, just, I think you’ve touched on this a little bit, but for the Velcro Company, but also sort of in a broader sense, do you think that dialogue is helpful? Do you think that the engaging with customers and slowly bringing them into the world of trademarks is going to have sort of a net-positive effect?
Josh Jarvis: (16:05) Yeah. I think the dialogue is helpful. I mean, on one hand you have comments on on like a Youtube video where, you know, acknowledging that youtube comments are sort of a maligned cesspool of Internet comments platform. You know, you, have reactions like one of my favorites was something like, you know, “F you Velcro. I’m still going to call it Velcro. If that makes you feel bad, grab a Kleenex”, which I thought that was both offensive and clever unl
ike most Youtube comments. But I mean, in terms of the dialogue being helpful I think is helpful from, from two different perspectives. From the legal perspective, it’s helpful because even if people don’t start calling the product hook and loop by its generic name right away and it reminds them that, that the Velcro brand is first and foremost a brand. Even if they say Velcro accidentally or in case this Youtube guy, in spite of the you know, the educational efforts, the fact is that these people recognized that Velcro is in fact a brand. And I think from a marketing perspective, of course it engages the consumer. You know, the overwhelming reaction to the video was positive. It was fun, it was creative, and it was catchy. And the surrounding marketing collateral and Twitter takeover kind of reinforced the marketing folks’ goals or the, I should say the brand’s goals of having consumers engage, you know, not just with the velcro brand products themselves, but the Velcro brand itself. I don’t know if you saw the Twitter takeover that happened post-video. Did you see that?
Hannah: (16:05) No. I didn’t
Josh Jarvis: (18:00) So what, what the brand did, and again, in collaboration with the Walk West team and Penn Holderness, they went on Twitter and they had these actors who are two of the actors who were in the video, one playing a guitar and one singing and they in real time Tweeted at people who were misusing the Velcro mark and made up songs on the fly about, you know, directed at these people who just happened to be on Twitter, you know, misusing the Velcro brand. And it was really an interesting way to engage with, with consumers or potential consumers in a way that kind of is fun and also reinforces the brand. So that was pretty cool.
Hannah: (18:58) Yeah. I was going to say, you know, maybe only time will tell it’s this campaign could actually, sort of, change people’s habits, but you know, the one-on-one improv sort of correction might do the trick.
Josh Jarvis: (19:11) Yeah. Yeah. I think that’s right. And you know, as for what lies in store, for the Velcro Companies in the future, you know, I don’t know if you’ll see something like this anytime soon. But I’m positive that the velcro companies intend to engage with consumers and kind of similarly creative ways including on the subject of trademark protection and sort of brand awareness.
Hannah: (19:38) Yeah. I think that’s great. It was such a fun thing to watch and watch everyone engage with it in real time as well.
Josh Jarvis: (19:43) Well, I’m glad.
Hannah: (19:46) So to wrap up these interviews, I usually just like to ask people as series of rapid-fire questions that are just for fun. Are you ready?
Josh Jarvis: (19:46) I don’t think I have a choice.
Hannah: (19:57) It’s not too scary, don’t worry. Yeah. Where do you get your legal news?
Josh Jarvis: (20:03) That’s a good question. So twitter mostly because, you know, it’s just so fast, news as it breaks. And also the usual news aggregators like Law360, Mondaq, JD Supra, those, those types.
Hannah: (20:21) OK. And what’s your favorite social media platform?
Josh Jarvis: (20:26) I find them to all to be fairly diabolical for one reason or another. But, I guess I love to hate them and so of all of them, I guess I love the speed and kind of bite size and nature of twitter. It just so amazing to be able to find out what is happening in real time and to interact with people that you would never have the opportunity to interact with in pre-social media. So I’m still wary of this two hundred eighty character thing.
Hannah: (20:26) Oh yeah. Big change, yeah. I guess is the best of the worst though.
Josh Jarvis: (21:11) Yeah. Wonderful.
Hannah: (21:13) Who’s your favorite attorney. Can be real or fictional?
Josh Jarvis: (21:19) I bet you get a lot of Jack McCoy, Atticus Finch, Perry Mason answers to this question. I’m going to go with a deep cut and that is Sandy Cohen from hit Fox mid-aughts prime-time drama, the OC.
Hannah: (21:19) Wow. That is a great answer and no one has ever answered that before.
Josh Jarvis: (21:45) Right? That no one ever will again. Played by the inevitable Peter Gallagher.
Hannah: (21:48) I might steal that for if anyone ever asked me in the future because that’s a good answer.
Josh Jarvis: (21:52) He’s such a great character.
Hannah: (21:53) The eyebrows alone are– What would you be doing if you weren’t an attorney?
Josh Jarvis: (22:02) So I’d probably be a struggling a musician or composer or a struggling actor. I’d be struggling one way or the other–I promise.
Hannah: (22:17) What’s one piece of legal advice that you wish more people knew? Just like one little takeaway.
Josh Jarvis: (22:28) So very trademarks specific legal advice, file intent to use trademark applications in the United States. Ah, don’t wait until you actually begin using a mark. And also hire an attorney to do it because it’s much easier, and it’s not just a out of self interest, but it’s much easier to get good advice and do it right than to pay the price for a flood filing later on.
Hannah: (22:58) And then what’s one good piece or if you can think of the best piece of advice that you’ve ever received?
Josh Jarvis: (23:05) So my dad, I think, or someone in might not have been. My Dad told me once, don’t speak unless you have something interesting or valuable to add to the conversation. So I followed this advice only periodically.
Hannah: (23:24) OK. That’s it. So, thank you so much for joining me. Do you have any parting words of wisdom, anything that we didn’t cover?
Josh Jarvis: (23:30) I will not presume to part with words of wisdom. Give me a few years to become wise.
Hannah: (23:38) Alright and if any of the listeners want to reach out to you, what’s the best way for them to find you?
Josh Jarvis: (23:52)So, I’m on twitter at J-S-J, Joshua, Samuel Jarvis, JSJ esquire. Oh, sorry. J-S-J-E-S-Q (@JSJEsq) and you can find me over at the Trademark and Copyright law blog or you could just search google for Josh Jarvis lawyer. Um, we have great SEO folks, at Foley Hoag.
Hannah: (24:06) OK, perfect. And I’ll link to those in the show notes as well. Thanks s
o much Josh.
Josh Jarvis: (24:09) My pleasure. Thanks for having me.