What trademark administrators look for in outside counsel

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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.”

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