Welcome back to Beyond the Docket! We chatted with Will Maguire of the Law Offices of William E. Maguire about representing Hollywood heavy hitters like Baywatch and Men in Black, attending INTA and volunteering with mentorship organizations. Enjoy!
Tell us a bit about your legal practice. What type of work do you focus on?
I focus on transactional trademark matters. For example, for many years I have assisted clients in establishing and growing their trademark portfolios, both domestically and overseas. Selection, Clearance, Registration, and Defense. This is what I really enjoy doing. The clients I have helped have been in the comic book industry, as well as apparel, sporting goods, music, and entertainment industries. Interestingly, each of these areas of interest in terms of trademarks can be traced back to my sticker collection hobby as a tween and teen. You name it: Bardahl, STP, Valvoline, etc. I had these and other stickers plastered all over my desk at home and several on the banana seat of my bicycle.
It was only after 9 years of general civil practice in Beverly Hills, California that I got an inkling of connecting stickers to trademarks. I attended a half-day seminar on Copyright Law at UCLA Law School in the winter of 1990 and was intrigued. Thereafter, I tried to find work at I.P. law firms in L.A. with no success. I don’t know where I then got the idea of researching LL.M. programs, but I went over to the UCLA Law Library and asked the reference librarian if she had a book on LL.M. programs, and she said that they did.
I studied this book and found one program in all of the USA with a non-patent LL.M. program (in 1990) and it turned out to be in Chicago, Illinois, at The John Marshall Law School (JMLS). So I took a chance and visited the school in May 1990. In August of 1990, I pulled the pin and drove from Santa Monica to Chicago and enrolled in the LL.M. in Intellectual Property program at JMLS. I finished the LL.M. program in two semesters, full time, at night. Chicago was great. I have nothing but fond memories of this great American city.
The Fall 1990 course in Trademark Law was taught by Pattishall firm partners, Ray Geraldson and Mark V.B. Partridge. Lightning struck (in effect) two weeks into this class, a classmate was briefing a case, and it HIT ME!… I had found the Holy Grail!… This was it! Trademark Law! I looked up from my Pattishall “Trademarks” casebook, but nobody else seemed aware of this prophetic moment. But it happened. #truestory
You have worked with several notable brands to protect their intellectual property, including Baywatch Production Company. What was it like working with such iconic companies to defend their brand?
I was very fortunate in June of 1990 to land the Baywatch Production Company (BPC) as a client. I had just returned from Chicago two weeks earlier with my LL.M. degree in hand. BPC had recently been organized as a California corporation, and the tv series cleared for first-run syndication. I interviewed with their general counsel and was hired. The trademark program began inauspiciously with only a few initial trademark applications which I filed for Baywatch for printed matter, apparel, and entertainment services. Nothing really happened for 2 - 3 years. In the meantime, I was hired as in-house counsel at Malibu Comics Entertainment, Inc., principally to handle their new comic book universe (Ultraverse) of comic book titles, video games, and ancillary products. This turned into hundreds of trademark searches, applications and registrations. Additionally, each comic book title was registered with the U.S. Copyright Office.
Once the partners or powers that be at BPC agreed on a licensing and merchandising program in 1995, the trademark program exploded overnight, and I had my hands full with both comic books and Baywatch. It was a very busy time, and it was immensely fun and rewarding. Right away we faced trademark issues in the U.K. where Baywatch tv series star Pamela Anderson was very popular. Our U.K. associate, Ray Black, was instrumental in handling these matters, as well as the trademark registration program. In another matter, within six months of our U.S. trademark application for BAYWATCH for sunscreen, a U.K. applicant applied for sunscreen for Baywatch, and by virtue of our earlier U.S. application filing date, pursuant to the Paris Convention’s provision on rights of priority, we were able to leapfrog ahead of the U.K. applicant.
The Men in Black is another notable brand I have worked on, and the success with defending the intellectual property associated with this brand was due to the early filing of trademark applications. On my very first day at Malibu Comics, I had a phone conversation with a USPTO Examining Attorney about the original applications filed before my employment. I managed this portfolio all during my employment at Malibu Comics and thereafter when I returned to private practice. From a black-and-white comic book to a feature film, it was quite a ride. I penned a brief article on this topic, which is published on my website at www.tmesq.com.
How do you approach business development for your firm?
Business development is a continuing process. In this regard, referrals, writing, speaking, attending CLE programs and trade shows, and especially membership in the INTA are all a part of an on-going diverse effort to develop business. Volunteer work is profoundly important as well.
As a regular attendee of the International Trademark Association (INTA), what advice would you give to help lawyers considering attending this year to make the most of the conference? What is your favorite part of INTA?
I have been attending the Annual Meeting of the INTA since 1993. My first meeting was in New Orleans when I was Senior Counsel for Malibu Comics Entertainment, Inc., which was later acquired by Marvel Entertainment Group, Inc. As in-house counsel, I received multiple invitations to law firm receptions in New Orleans, as well as the following year in Seattle. It was at the CLE programs and receptions that I began to build a network of associates worldwide. There is perhaps nothing more important than putting a name to a face to establish trust and confidence. Thus, I would recommend that trademark lawyers use the annual meeting to build their networks. My favorite part of the annual meeting experience is the educational programs, followed by seeing friends and colleagues, networking, as well as the opportunity to travel. My favorite U.S. Annual Meeting City is Seattle, WA. By my count, we’ve been there 3 times since 1994. In 1994, I was heading out one night to find a club to hear music and I met another INTA attendee, Larry Robins, Esq., a well-noted trademark attorney in Boston, and he has been a friend since. Larry was hoping to find some music as well, and we ended up at a club in Belltown called The Crocodile, a local favorite for many years apparently. There we heard a young female singer with a hauntingly beautiful voice who later told us that she had trained in classical guitar in Spain. In 2009, INTA was again in Seattle, and I got a personal tour at Starbucks HQ, as well as enjoyed the food at both Top Pot Doughnuts and Serious Pie (for the pizza). Last year in 2018, I again returned to both Top Pot and Serious Pie, as well as Mighty-O Donuts, and visited the Museum of Pop Culture twice. The overseas venues for the annual meeting have also been spectacular, esp. Amsterdam (with a side trip to Ireland thereafter, where our group visited a medieval castle and dined at a palatial estate).
In Berlin, after the conference, I rented a bicycle and rode through their central park, the Tiergarten, where at various places the city skyline disappears and you are transported, in effect, to what appears to be a pastoral setting in a Renaissance painting. In Hong Kong, I joined Ridout partner Paul Tackaberry, and the group he puts together each year for a hike and we hiked the Dragonback trail, which was an amazing experience followed by lunch at the beach. In Toronto, during the annual meeting there, I attended the Bereskin firm reception at a local estate a bus ride away that is still talked about because of its opulence and oysters on the half shell…
In addition to running your IP practice, you have served as a volunteer for multiple organizations, Neighborhood Youth Assn. (NYA), Gwen Bolden Youth Foundation, and your own organization, LevelPath.org. What inspired you to start volunteering?
I have very much enjoyed the time I have spent serving as a volunteer tutor in after-school programs for middle school and high school students. I principally help the students with improving their reading and writing skills. One middle-school boy that I tutored for a couple of years later joined the Marines, and I got to attend his boot camp graduation in San Diego, and in California style, celebrated thereafter at In-N-Out Burger. After finishing his commitment to the Marine Corp., he graduated from College with a B.A. in History. More recently, I was pleasantly surprised a couple of months ago at a new local vintage grocery store to reconnect with another middle school student I had tutored 8 - 10 years ago. He recognized me and called me by my name and then told me his name. My jaw dropped as I remembered him. The last time I had seen him was as a 14-year-old kid eating from a large box of pizza that his group had earned for their success in the after-school program and here he was a young man in his early 20’s working at a job full time and has attended college. Without that volunteer opportunity, I would never have experienced the success of these young men. Certainly helping clients is rewarding. Giving back to the community is profoundly rewarding.
My parents are my inspiration for volunteering. My mother for many years volunteered at the local UNICEF store. My father for many years volunteered his time at the local YMCA, American Legion, and Church. My personal spin and choice on volunteering have been to focus my time, energy and enthusiasm on tutoring. I would much rather be tutoring than serving on a board. Simply put, I enjoy helping people.
I have also been a beach lifeguard in Santa Monica since 1974, which I continue to do seasonally and part-time as an avocation. Most of the time, we are busy preventing people from needing rescues, but there have been many times where my colleagues and I have made the difference between life and death when people get in over their heads and get caught up in dangerous surf and/or rip currents. That is, without a doubt, the most profoundly rewarding work I have ever done.
What is your law firm’s technology stack? Do you use Slack? Practice management software? Trademark management software?
My law firm’s technology stack… The only stack I’ve encountered recently was at IHOP… Seriously, though, I am a MAC user. I was converted to Apple products in 1992 when I went to work at Malibu Comics Entertainment, Inc. On my first day there, an editor there gave me a brief tutorial. I can still remember her showing me the “copy and paste” function (which blew my mind)… to which I responded, “No Way!” As a trademark lawyer, a whole new world of possibility opened up in terms of what I could accomplish with filing multiple trademark applications in multiple classes. For example, being able to simply copy and paste an “intent to use” goods i.d.!… etc., :-)
I do not use Slack. I had to look it up on Google, as a matter of fact, so I hope your readers will cut me some ______.
For my trademark management software, I use Alt Legal, which has been a godsend. I recently took over a large trademark portfolio, and this was only possible with Alt Legal.
If you could create any legal practice-focused technology, what would it be and why?
Any Legal Practice-Focused Technology, eh? Well, I do have a great idea, but my lips are sealed. Let’s just say that I have already locked up the domain name(s) and trademarks…
Thank you for inviting me to share a bit about my practice and enthusiasm for trademarks.