How do you choose which clients to take? What types of searches do you perform and how extensive are they? What systems do you use for application and docketing? These are just some of the questions that will be addressed in today’s session on best practices in trademark clearance (CT50—Law Firm Best Practices in Trademark Clearance, Prosecution and Portfolio Management), moderated by sole practitioner Joan Dillon, who has worked in-house for companies including Purina, US Steel and Levi Strauss & Co, as well as at large firms such as Kilpatrick Stockton and King & Spalding.
Dillon has been attending the INTA Annual Meeting since 1967 and says that the idea for the session grew out of nostalgia for “the old days” of the Annual Meeting, “when we sat around at Buck Hill Falls and talked about the nuts and bolts.” While today’s Annual Meeting offers sophisticated sessions and intricate presentations on key topics, Dillon says she saw a need for a space in which practitioners from a cross-section of practices could share the somewhat less glamorous aspects of their day-to-day routine.
“What I learned at the general practice and large IP firms was that a lot of people engaged in their own personal practices,” says Dillon. “There was no general rule for trademark clearance and I doubt there is now.”
Christine James of Kilpatrick Stockton, who will also be speaking at today’s session, agrees that larger firms could benefit from a candid dialogue like the one Dillon hopes to promote. “It sounds simple, but getting together and talking about best practices probably went on a bit more when the Annual Meeting was a smaller, more intimate discussion,” says James.
The panelists were chosen to represent a range of types of US law firms, from sole practitioners to large IP boutiques and general practice firms. In addition to James, the panel will include Stanley Cohen of Caesar Rivise Bernstein Cohen & Pokotilow, a mid-sized law firm; Anne Hiaring of the Law Offices of Anne Hiaring, a small IP firm; and Lawrence Robins of Finnegan Henderson Farabow Garrett & Dunner, a large IP firm.
To search or not to search
One of the topics at the heart of any discussion on best trademark practices is how and to what extent to perform trademark searches. Dillon says that her experience working in large firms taught her that there is often a lack of coordination and communication among practitioners in the same firm on this subject. “I was concerned about malpractice,” says Dillon. “If I do a search one way and my colleague does it another way, and his search finds something that I don’t, he’d be the worst witness against me in a malpractice suit.”
For this reason, Dillon has asked each of the panelists to discuss their daily search habits. While Dillon says she rarely does preliminary searches, for instance, Hiaring, who runs her own small IP firm, always conducts preliminary searches of USPTO records and the Internet.
The paralegal predicament
Another variable when it comes to searching has to do with whether or not and when to use paralegals to conduct searches. The question can often be a contentious one. “The extent to which paralegals should be doing work is a long-established, well-discussed debate,” says James. “We’re keenly aware of the need to keep paralegal work truly paralegal and to not ask them to function as attorneys, but assistance with searching and filing is in paralegal purview.”
Several panelists use paralegals to conduct preliminary searches, while others even have them file and sign applications. James points out that utilizing paralegals for such work can minimize client costs, a factor that can’t be taken too lightly these days. “Given the economic climate, it’s imperative to continue to think strategically about how you best staff a given project,” she says.
Practicing for a new economy
Learning how other practitioners save their clients money might be one of the biggest draws for the session. “It will be interesting to see how practices change with the economy,” says James. “I think that by having a candid discussion about how you do business, the audience will take away tips and tricks about how to improve their practices.” James adds that the session will be particularly helpful to those starting up their own firms, which has become an increasing trend, as larger firms struggle to ride out the economic storm.
Becoming sensitive to clients’ needs as they struggle to adapt to a spiraling economy can include considerations such as using the Madrid Protocol and CTM systems, auditing portfolios and being more strategic about which filings to pursue. “Efficient filing schemes are not economy-driven, they’re strategically driven,” says James. “There are challenges facing the world’s economy, but clients are still focused on making decisions to protect their marks. [This session] is going to help us all do the best we can for our clients and learn from each other.”
Wisdom from the couch
Whether you’re looking for tips to save your clients some cash or you’re just curious to see how your habits compare to those of your peers, today’s session is bound to provide you with a new tool or two for your trademark belt. “What we’re coming out of this with is best practice tips, and people can take away what they want from that,” says Dillon.
But aside from the session’s practical aspects, Dillon also hopes that the panel will succeed in fostering an informal, straightforward atmosphere in which practitioners can take a break from some of the more academic discussions to engage in a conversation about the bare bones of trademark work, since even the simplest exchanges can often have a profound impact. “I really learned how to practice from the people I sat on the couch with during my first two or three years of being an INTA member,” says Dillon. “I’m hopeful that the session will be entertaining and that people will be drawn into it and learn something.”
