Jenkins brings trademark law prowess to Bond, Schoeneck & King

As chief trademark counsel and division counsel for Eastman Kodak Co. for the past three-plus years, Terria Jenkins dealt with all things trademark law, brand development and brand licensing, and says she enjoyed every minute of it.

Now at Bond, Schoeneck & King as senior counsel and chair of the firm’s trademark and brand licensing practice, Jenkins can still provide services for Kodak but will also do those same tasks for a variety of clients.

“I love Kodak and I will forever,” said Jenkins, who joined her new firm on July 1. “It is an iconic brand. Many people who work for Kodak say they bleed yellow and red, and I would put myself in that group.

“But from a career perspective, the scope of this opportunity was one of the things that was incredibly appealing. There’s an opportunity to build the practice area, and the scope of this is much broader than working for just one organization.”

Jenkins actually had an opportunity to make the jump late in 2019. She and Edward Hourihan, managing member of Bond, Schoeneck & King’s Rochester office, were volunteering with Just Cause (then the Volunteer Legal Services Project of Monroe County). Hourihan thought she’d be a good fit at the firm and floated the idea past her.

“We were looking to grow our IP (intellectual properties) practice and what better way to do that than to bring in a person of her stature,” Hourihan said.

Jenkins said thanks but no thanks; the time wasn’t quite right. When Hourihan presented the offer again this spring, Jenkins decided to accept.

“The pandemic was a game-changer for many people,” Jenkins said. “It gave me a chance to reevaluate on many different levels. Just the challenge of going from in-house counsel to building a practice, this was giving me a larger highway in terms of growth opportunity.”

In her new role, Jenkins will assist clients in optimizing, protecting and leveraging their brands, helping them expand their impact in the market.

“Terria brings an exceptional range and wealth of knowledge in trademark, marketing and copyright law, having overseen a large multinational trademark and copyright portfolio for an iconic global brand,” said George McGuire, chair of the firm’s intellectual property practice.

Jenkins’ expertise in the field extends well beyond just her time at Kodak. She was a trademark examining attorney with the U.S. Patent and Trademark Office from 1998 to 2000 and was managing counsel and chief trademark counsel for Carestream Health from 2007 to 2009. Between those stints, she was trademark counsel at Kodak before returning to the Rochester business giant in 2018.

The ability to protect a brand is a critical component to success for any company, and Jenkins was on the front lines for Kodak.

“Your brand represents your unique identity in the business space,” Jenkins said. “You want to maintain the integrity of your brand. You now have many people that are understanding the value of their brand, that their brand really is their fingerprint and footprint.”

There are plenty of bad actors looking to infringe, especially with global brands.

“There’s widespread concern of fraud,” she said. “There’s a lot of attempted piracy in the area of trademark and copyright.  They’ll try to trade off the goodwill a brand owner has built or they will divert business from that brand to their brand through deceit.”

Those taking part in brand piracy often do their best to blur the lines and create the belief that their firm is affiliated with the major brand.

“A hallmark is the likelihood of confusion,” Jenkins said.

A decade ago, Wegmans Food Markets was the subject of a prominent trademark infringement lawsuit. Walgreens Co. filed suit in federal court in 2010, claiming the “W” used by Wegmans in branding too closely resembled the “W” used by Walgreens and could confuse customers.

Wegmans actually had pulled out of mothballs in 2008 a re-creation of their “circle W” logo from the 1930s. Walgreens, however, said the logo especially as it appeared on Wegmans-brand pop, was too similar to its own “flying W” that debuted in 1951.

The lawsuit was settled in 2011, with Wegmans agreeing to stop using the “circle W” logo by the summer of 2012.

Jenkins has extensive expertise in brand, trademark and copyright law in the multi-national arena, which can be of great value to companies with world-wide portfolios, since the law may differ greatly between the United States and Europe and other regions.

That vast and varied knowledge will serve Bond well when it comes to growing the practice.

“A lot of clients will make their decision based on the strength of the team,” Hourihan said. “To have someone of her stature and her experience is pretty compelling.”

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