What trademark administrators look for in outside counsel

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

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

Alston & Bird acted for InterDigital, while Samsung was represented by Fish & Richardson, during the arbitration process
Powell Gilbert lawyers reveal how they navigated parallel EPO proceedings and collaborated with European peers to come out on top in the Nordic-Baltic Division’s first judgment
The firms posted increases in revenue and profit per equity partner, with both giving a nod to their IP expertise
EasyGroup, the owner of the easyJet airline, said in a press release that UK-based first-instance judges are “less experienced”, bringing a long-running debate back to the fore
A cross-practice team from Mayer Brown, which included members of the firm’s IP practice, advised on the deal
María Cecilia Romoleroux discusses the challenges she has faced in her career in IP and how she hopes to improve things for the next generation of women
Value-added services give in-house counsel the satisfaction that they are getting more value for money, while law firms get the opportunity to win more work
A team at Boies Schiller Flexner is advising shoe company Kizik and parent company HandsFree Labs in the dispute
Nokia’s latest enforcement actions against Geely and Transsion joining Via LA’s AAC pool were also among the top talking points
Benjamin Kelly, the firm’s fifth IP partner hire in a little over one year, has experience in patent and trade secret disputes involving complex technologies
Gift this article