What trademark administrators look for in outside counsel

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

What trademark administrators look for in outside counsel

“Budget budget budget.” That was the message from Michelle Renne of Campbell Soups to counsel looking to attract international clients at the INTA Annual Meeting

Sitting on a panel yesterday with other trademark professionals at the Trademark Administrators Brunch, she explained some of her frustrations when working with foreign counsel.

Renne said that she seeks to build relationships with practitioners that are sensitive to the company’s business realities and will work with it to find solutions. “I’m not an expert in your country; help me out,” she said. “I hate getting an email saying ‘you have no other options, and the only option is to file a lawsuit and that costs $10,000; what do you want to do?’”

Toni Hickey of Cummins in Indianapolis agreed, saying foreign lawyers need to be well-versed in her company’s operations and be able to give the lay of the land of the jurisdiction. She gave Brazil as an example, where her company has a manufacturing facility. Because of this, she prefers to work directly with local lawyers there rather than through her US-based counsel in order to foster that relationship.

Despite some complaints, the panelists also expressed a high level of satisfaction with trademark practice. “I fell into [trademark work],” said moderator Deborah Hampton of Steptoe & Johnson. “It’s one of the most rewarding things I’ve done. I would do it for free.” Then she quickly added: “But I won’t.”

more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article