Trademark attorneys already use artificial intelligence to aid their work, and in the future the technology could fundamentally alter the nature of their practices.
Companies hired by law firms use AI routinely to help check the availability of trademarks and spot threats. But some attorneys can envision a world where AI allows—if not forces—them to add value for clients earlier in the process: the brand idea-generation phase. AI platforms like ChatGPT may not replace large companies’ marketing departments, but it could be a tool for attorneys to help smaller business, some say.
Trademark attorney Ashley G. Kessler of Cozen O’Connor, who has a marketing undergraduate degree, recently asked ChatGPT for available cannabis brand names. She liked the results—which included Herb Heaven, Weed Wishes, Ganja Garden, and Grass Gorilla—and said eight of 10 didn’t appear to conflict with registrations at the US Patent and Trademark Office. Some of those did appear to be in use in web searches indicating possible common law—unregistered—rights, she noted.
Kessler said attorneys should start incorporating such prompts into how they perform availability searches going forward. The technology will raise expectations, with even marketing departments looking to attorneys to help find available brand ideas.
“I think that long term it’s going to go beyond the client approaching IP counsel with a set of proposed names,” Kessler said. “I anticipate a system where clients expect more from lawyers than they already do. I think ultimately it will just push lawyers to become a one-stop shop for our client.”
Already In Use
The debate over whether AI can create intellectual property has generated legal questions and controversy in the fields of copyright and patents. But who created a trademark is legally irrelevant, as the core issues are generally who used it first in commerce, and on what product.
Determining whether a mark has been infringed and whether a mark’s registration should be blocked at the PTO, meanwhile, turn on whether there’s a likelihood that consumers would be confused—context- and fact-dependent legal standards difficult for a computer to evaluate, trademark attorney Britt L. Anderson of Perkins Coie LLP said.
“Trademark law is not immediately amenable to humans leaving the process entirely,” Anderson said.
Nevertheless, AI has carved out a niche in trademark law. Companies like Corsearch use AI to instantly comb the PTO’s trademark registry for existing marks that could conflict with a client’s idea. They prioritize lists of marks that could stand in the way—even if not an exact match—by degree of risk, based on similarity of the marks and covered products. Attorneys still have to apply legal principles and context to fine tune the analysis, but this kind of AI use saves time, attorneys say.
The companies also use AI to help police their registered marks by monitoring the internet and flagging potentially infringing brands or counterfeit products.
“For me, the way I use AI is somewhat invisible. I don’t think about the fact that we use AI a lot, but we are,” attorney Jennifer Van Kirk of Lewis Roca Rothgerber Christie LLP said, noting that even web browser searches for marks incorporate AI.
The tools help with “some of the more labor-intensive things we do,” she said, which in the past could have involved “young associates spending three weeks looking at bankers boxes of documents in a conference room.” Van Kirk said that while imperfect, she finds the searches to be “pretty accurate” and a useful time-saving tool.
Attorneys expect existing tools to continue to improve. But Kessler’s foray into asking an AI interface to come up with brand ideas adds a fundamentally different dimension to using AI.
“It’s so new that I’ve only done one or two,” Kessler said. “I think, ‘Why not?’ It’s so easy, so straightforward. As long as you’re not taking those results in a vacuum” and complementing them with other methods to verify their availability.
From general AI tools like ChatGPT, it’s a short technical leap to imagine incorporating access to the PTO’s trademark registry. That would allow an AI program to simultaneously—effectively instantly—create brand ideas and check whether the trademarks are available.
“That’s absolutely fascinating,” Anderson said of the notion of attorneys using AI to generate ideas for clients. “I haven’t heard of anyone specifically doing that, but it seems like it could be part of the game for sophisticated brand owners.”
Van Kirk called the idea of attorneys becoming a one-stop shop for branding “an interesting thought.” She noted that she’s been involved in collaborative brainstorming for clients, and said legal team suggestions tend to get shot down by marketing with a “don’t quit your day job.” She sees the greatest potential in helping smaller clients without marketing budgets brainstorm a brand or find a new one after losing theirs in a legal fight.
But, like other attorneys, she nodded to the human perceptions inherent in trademark law that while AI technology may continue to alter their work as well as their toolkit, it can’t replace them entirely.
“There’s a lot of subjectivity to it,” Van Kirk said. “Human creativity will always be a factor.”
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