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General Electric Co.’s $44 billion-dollar brand is getting a makeover, and Kathryn Barrett Park, the company’s trademark counsel, is working in overdrive to make it happen. As the principal lawyer for GE’s marketing team, Barrett Park does everything from trying to ensure that the new ad campaign doesn’t cause legal problems, to obtaining the necessary rights for the new brand, to taking steps to protect the new custom-designed font of GE’s new slogan. In January 2003 GE unveiled its rebranding campaign, which includes the new slogan, “Imagination at Work,” and a new look of 14 bright colors and pastels for the GE monogram, which has traditionally been black-and-white. “Before 2003 GE’s image was one of honesty and dependability. With Imagination at Work we’re trying to communicate that GE is also contemporary, dynamic, and innovative,” says Jonathan Klein, a GE spokesperson. To make the new GE brand and monogram as sacred as the old, the marketing team has limited the number of words that can be used next to GE to only ten — one for each of GE’s ten company names. (An eleventh, NBC Universal, is considered a separate brand). For example, there is GE Energy, GE Healthcare and GE Transportation. Two hundred newly trained “brand ambassadors” lead the program by communicating the rebranding message throughout the business. A corporate team takes monthlong road trips to GE outposts around the world to train the ambassadors. GE is primarily a business-to-business company, and its trademark problems differ from consumer brands like Coke or McDonald’s. The company has not had to go to trial against a trademark infringer during Barrett Park’s four-and-a-half-year tenure. “We are strong with situations that arise and fortunately we have not had to go as far as litigation to resolve them,” says Q. Todd Dickinson, GE’s vice president, chief IP counsel and Barrett Park’s boss. (Dickinson moved to GE last year from Howrey Simon Arnold & White. Before that he was director of the Patent and Trademark Office.) GE has had to deal with a large counterfeiting problem. “It’s not very sexy,” Barrett Park admits. Still, counterfeiters cost GE sales, and hurt the brand and reputation of the company. Overseas counterfeiters, particularly in China, are one of Barrett Park’s biggest policing problems. In the last six years, one GE business — GE Consumer and Industrial — has seized 1 million counterfeit circuit breakers. They’ve made over 500 investigative stops in 11 different countries and have held 18 administrative proceedings on counterfeit matters. And there have been eight raids. (Typically counterfeit goods are seized and destroyed and, under the appropriate circumstances, penalties are assessed by the local government.) Barrett Park says her department, which includes three other trademark lawyers and a couple of paralegals, finds counterfeiters through investigative agencies, employees on the ground, and customers. “We deal with them differently [than infringers],” she says. We don’t send them a cease and desist letter first because then they will [close] up shop and move a block.” Instead of shutting down the distributor, GE will try to trace the counterfeit goods back to the manufacturer and coordinate with local authorities on a raid. “We tailor our strategy to a particular situation but are very aggressive about it because if you don’t police your mark, you’ll dilute it,” says Dickinson. When Barrett Park needs expertise on more complicated issues, she looks to Bruce Keller of Debevoise & Plimpton, Mark Engelmann of IP boutique Fross Zelnick Lehrman & Zissu, both in New York; Ted Davis of Kilpatrick & Stockton in Atlanta; or Robert Sacoff at Pattishall, McAuliffe, Newbury, Hilliard and Geraldson in Chicago. Barrett Park came to GE from the NBA, where she was a vice president and senior IP counsel. “Whether it’s a new GE tagline or a new basketball team’s identity, the trademark issues are very similar,” she says. “You have to take every precaution imaginable.” Clearly, Barrett Park is hoping this branding initiative is a slam dunk.

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