I was born and grew up in Buenos Aires, Argentina, a beautiful country with the Iguazu Falls in the North and incredible glaciers in the South, full of natural resources. At an early age, I was determined to become a lawyer and work in my father’s law firm. Although I did several internships with my father’s firm as well as other firms during my years at the University of Buenos Aires Law School, I met my future husband Roberto (Uruguayan) at the age of 17 and my destiny changed dramatically and for the best. He graduated from the University of Leeds (U.K.) as a textile and chemical engineer and was hired by DuPont in Argentina. I made it clear to him that I would graduate as a lawyer and raise a family while continuing to practice law. And I did just that! While in law school in Argentina I raised my first child and graduated in 1974 as a lawyer while expecting my second child who was born one month later.
As my husband’s career progressed, he was appointed as the President of the first Levi Strauss & Co subsidiary in Argentina and as a result, my professional career became more exciting. The exposure to the LEVI’S trademarks and my contacts with several companies’ Intellectual Property (“IP”) legal counsels inspired me to look into the IP practice especially in the areas of trademarks and copyrights. I recall so many issues that captivated my attention. At the time there was an organization called Agencia Ayacucho located in Buenos Aires, very well known for registering famous trademarks without the approval of the legitimate owners. I visited its principal for an interview and was shocked to be welcomed by several columns of well-known magazines such as VOGUE and ELLE. Ayacucho was instrumental in creating companies that registered famous and new trademarks in Argentina. Designs and combinations thereof were offered for sale to the legitimate owners in the US and Europe for substantial amounts of money. This Agency became familiar with the new trends and trademarks that appeared in the worldwide market and could register these trademarks. Argentina and many other countries follow the principle of first-to-file which establishes that the right to a trademark belongs to the party that first applies for it. The earliest filing date prevails over the date when the mark was first used in commerce. Nowadays, companies maintain watch services and are more vigilant on improper filings on a worldwide basis that permits them to file oppositions or cancellations. Although the laws have adopted the concept of “notoriety” to challenge these registrations, the court cases could take a long time in deciding these issues, especially if the legitimate owner does not own trademark registration in the first-to-file country.
I became aware of the many instances where the LEVI’S trademark and logos were copied with exact duplications or confusingly similar terms or designs. Many stores have seamstresses in the back dedicated to sewing the LEVI’S trademark when a customer required this particular product. In addition, somebody registered ROBERT LEWIS for jeans and used ROBERT in small letters and LEWIS in a prominent manner creating obvious confusion in the Argentinian marketplace. Counterfeiting and trademark infringement was rampant at the time and I was more and more immersed in learning how to prevent these actions.
After a few years of both working in Argentina, my husband got a great offer from Levi Strauss that resulted in our moving to their Latin American Headquarters in Florida, United States of America. Although I was excited, I was also sad to leave my family and friends but as an ambitious woman, I felt that this could be a great opportunity for me as well. The big break came two years later when we were asked to move to San Francisco, where Levi Strauss’s main Headquarters is located. During my time here I took a lot of courses in International Law at the University of San Francisco where my interest in IP law continued to develop and I worked on improving my English.
(Diana pictured in the middle, with Pony and athletes)
As a woman and immigrant, it was not easy to develop an IP practice, as it was a field dominated by men, but drive and determination made the difference for me. Due to another great opportunity, my husband and a former VP of Levi Strauss decided to form a company in New York City in the athletic footwear sector that became quite successful in the 1980s. The company was Pony International, Inc, which quickly became a famous manufacturer of athletic footwear and apparel and was eventually sold to Adidas. We moved to New York City and my friends in San Francisco asked me: “why are you leaving this beautiful city”. My answer was: “I missed pollution!” I grew up in Buenos Aires which had plenty of it. I handled the protection of the PONY brand and the Chevron Design on a worldwide basis and also got the chance to meet famous sports figures who were interested in the protection and enforcement of their names and likeness.
I got my first job in New York City at Haseltine, Lake and Waters, a firm dedicated to the protection and enforcement of IP on a worldwide basis. My mentor at this firm was the famous professor Eric Offner who introduced me to the various authorities on IP. Many members of the firm taught me about trademark practice and prosecution at the United States Patent and Trademark Office and also, in foreign countries. I got to correspond with many foreign practitioners. Soon I learned that the best foreign contacts would be made by attending IP Conventions. I recalled hearing that the USTA (United States Trademark Association) was organizing a Convention in San Francisco. I was not selected by the firm to attend since senior lawyers had priority over me. I figured out that the only way to attend this Convention was by organizing my trip as a vacation, paying for the registration fee and staying with my friends in San Fransico. It was the beginning of a successful career. There were 800 attendees from all over the world, very few of whom were women. At the end of the USTA Convention in San Francisco, the professional ladies made their mark and were known and respected by the male population who remembered us by our first names. I was able to meet the most prestigious IP lawyers from various countries. Many of them became family friends and loyal colleagues. Soon thereafter, I learned that ASIPI (Inter-Americanx Association of Intellectual Property) was looking for new members from the United States. I became an active member of this organization and was selected as the US representative for several years.
The USTA was renamed and it is now known as INTA (International Trademark Association). Their current annual meetings average more than 10,000 attendees.
(Diana pictured second from the left, with her family)
Looking for more opportunities while working for Haseltine, Lake and Waters, brought me to a subject that the US companies were desperate to understand and deal with. All developing countries (including the Latin American countries) and some industrialized countries were enacting new stringent transfer of technology laws that required the approval by their Governments of transfer of technology/IP license agreements for the remission of royalties abroad. The subject was quite complex because many of the countries did not have proper translations of their applicable laws or any understanding of the Governments’ behavior as to the ultimate decisions. After discussing the matter with Mr. Offner, I became the person in charge of the negotiations and lectured on this matter. The first was organized by the Fieldstone Press at the Waldorf Astoria.
I handled plenty of negotiations with authorities of various countries about the reasons why the agreements were justifiable as well as the remission of royalties to the licensors. I will never forget a comment from a male lawyer with the Mexican Transferring of Technology Office that questioned the need for Maidenform’s Mexican licensee to pay a royalty for the technology involved in the construction of a bra. We proved that there was plenty of innovation and technology in designing and constructing bras and the license agreement was approved!
A few years later, Eric Offner, decided to leave Haseltine and form his own firm. He invited me and my friend Perla Kuhn (a lawyer also born in Argentina) to join him. It was a challenge for me to leave the security of Haseltine and start something new. However, it was the right decision. While working at this firm I had my third child and also raised my nephew that was a high school student and lived with us. After 19 years of working together, Offner retired and Perla Kuhn joined a large corporate law firm in Wall Street. Since I wanted to remain in an IP boutique, I contacted George Gottlieb, a founder and senior member of Gottlieb, Rackman & Reisman. I knew him and his wife socially and admired his ability to handle IP litigation and give creative solutions to many important clients. I also liked the GR&R patent department at a time where sophisticated patent lawyers were very much on demand in the electronic and digital world. I reached an agreement and brought my practice and clients to GRR. I have been very happy with this firm since 1997.
(Diana is pictured second from the left, during her presentation for Oscar de la Renta)
The most important thing through my career has been witnessing the increased number of IP professional women as patent, trademark and copyright lawyers, agents and paralegals. I mentored several IP female students and lawyers and have enjoyed seeing their successes and helping them along their way. We have long discussions about how women need to multitask at so many levels, which is difficult and exciting at the same time.
The opportunities and challenges come and go but we should remain alert and interested in progressing in our respective careers. It has not been easy for an immigrant like me to get to this point but the United States is certainly full of opportunities!
Author: Diana Muller, Counsel to Gottlieb, Rackman & Reisman, P.C.
Diana Muller is a recognized expert in international trademark and copyright law, worldwide licensing, and in the transfer of technology and security interest agreements. Her work with sports marketing firms, sports agents, and professional athletes has also made her a driving force behind the creation of programs, here and abroad, for the protection of the names and likenesses of famous sports figures and entertainers.
Ms. Muller has written and lectured extensively on such topics as licensing, trademark developments, foreign investments, and the protection of intellectual property rights in developing countries. She has spoken at the New York Women’s Bar Association and the National Conference for Women in Business, on the subject of careers in entertainment and fashion licensing. Ms. Muller has been a guest lecturer on intellectual property at New York University and at Inter-American Association of Industrial Property (ASIPI) conventions where she has given talks on sports licensing IP licensing, and the protection of images in Costa Rica and Mexico. She is also actively involved in ASIPI’s Trademark and Administrative Committees.
Ms. Muller has taken part in panel discussions for many institutions and publications, such as at the inaugural Women’s Wear Daily Legal Roundtable on Protecting Intellectual Property, where she spoke about the financial losses companies face when they fail to see global counterfeiting as a serious threat.
Ms. Muller is the president of the Entertainment Law Committee of ASIPI. She has been involved in the preparation of a Seminar on IP in the Entertainment Industry in Puerto Rico in 2017 and a webinar and article involving IP legal protection of video games. Ms. Muller has assisted in the protection of IP rights in the hospitality business including, restaurants, hotels, spas as well as wellness and health industries.