Inhouse Trademark Counsel

Trademark oppositions in the United States are, on average, the most expensive in the world.  So what does it take to protect and enforce brands in other countries?

Over the coming months, some of the world’s leading trademark professionals will be sharing with us insight on the trademark opposition process in their own jurisdictions.   By doing so, American companies will be able to better gauge what is needed to protect their valuable brands on a global basis.  This series of useful posts will include brand enforcement guidance and tips such as:

  1.  Case assessment.   Prior to bringing a trademark opposition, it is important to first determine the strength of one’s own trademark rights.  This analysis depends, in part, on the legal requirements for priority, standing, and likelihood of confusion that exist in each country.
  2.  Duration and costs.   Some countries have streamlined opposition processes that save clients both time and money.  Others are similar to the U.S. system and could result in protracted litigation and increased fees.  We’ll find out which world trademark jurisdictions offer the most value for brand protection.
  3.  Dispute resolution alternatives.   INTA’s Trademark Mediators Network is a non-litigation alternative to contested trademark proceedings. Currently, there are over 150 approved INTA mediators across the globe, each with unique training and insight to help litigants achieve their brand protection goals in a collaborative manner.  We’ll hear from our experts whether mediation is used in trademark disputes in their countries, and if so, in what types of cases.

In addition to providing practical advice, each guest commentator will share his or her professional background and experience.  We hope that our world trademark opposition overview will assist U.S. companies and inhouse counsel to make informed decisions about their international trademark portfolios.

To international trademark associates:   If you would like to be considered as a guest column commentator, please contact the blog publisher.

Trademark opposition costs in the United States are some of the highest in the world.   Estimates for a full trial on the merits before the U.S. Trademark Trial and Appeal Board can exceed $100,000 or more compared to half the cost in other countries.  It’s no wonder why inhouse trademark counsel are increasingly seeking ways to more effectively manage their budgets.

Here are a few strategies to do so:

  1.   Begin with case outcome mapping.  The first pre-filing step in a trademark opposition should be to fully list all potential outcomes to the case – favorable or unfavorable.  Anything from a negotiated settlement, license, amendment of goods, to a judgment on the merits should be listed.  At this early stage of litigation budgeting, it is important for inhouse trademark counsel to understand options available to any litigant in a TTAB proceeding.  With this knowledge, a case-specific review can take place with greater accuracy.
  2.   Engage in Early-Case Assessment.   Discovery is often the most expensive stage of an opposition proceeding.  Unofficial estimates are that it accounts for at least 50% of total attorney’s fees.   Therefore, an assessment of potential strengths and weaknesses of a case should coincide with case outcome mapping.  Too often, Opposer’s find themselves going down the slippery slope of a full-blown litigation.  This can lead to a higher risk profile that was neither intended nor expected.
  3.   Consider trademark mediation.   Reaching out to opposing trademark counsel to explore the option of mediation is not a sign of weakness.   Since over 90% of cases settle before a full trial on the merits, it makes good economic sense to do so.   INTA’s Trademark Mediators Network consists of over 2oo trademark mediators qualified to assist litigants.   The parties can agree for the mediation to be non-binding, leading to no commitments other than to sit down and talk [disclosure: the author of this blog is an INTA approved mediator].
  4.   Partner with the right outside counsel.   The ability to achieve a favorable resolution can rest on the quality of outside trademark counsel.  Being highly skilled in U.S. Trademark Trial and Appeal Board practice is expected.  Great trademark counsel, however, are the ones that can establish a respectful working relationship with opposing counsel.  It is a known fact that hyper-aggressive attorneys often needlessly increase the cost of trademark litigation. 

Inhouse trademark counsel should always be thinking of objective and measurable means to mitigate the risks of an opposition proceeding.   By doing so, their internal stakeholders and brand protection goals will continue to be served well.

A commonplace practice of medical patients is growing in popularity with the trademark departments of companies throughout the United States — the legal second opinion.

With companies demanding more from outside trademark law firms, second legal opinions simply make sense.  It has been estimated that approximately 40% of companies switch law firms each year, with better value being one of the key-drivers of change.  Second opinions are routinely being sought by in-house trademark counsel to help further mitigate risks and maximize shrinking legal budgets. When it comes to managing trademark portfolios and brand enforcement, in-house legal departments are looking at some of the following factors:

  1.   Priority trademark enforcement.  Not all trademarks and brand names are created equal to companies.  Some marks are given greater weight based on annual revenues, marketing budgets, consumer goodwill, and other marketplace factors.   Outside trademark counsel can help trademark departments create a brand enforcement map that takes into account these priority-based enforcement goals.
  2. Value-based engagements.   This is more than simply alternative fee arrangements, and includes things such as complimentary in-house employee training, quarterly reporting updates, and other value-added services that are not tied to hourly fees.  If a law firm routinely charges an important client for every five- minute phone call, chances are that the firm will not retain that client relationship for long.
  3.    Efficient Staffing.   Companies no longer wish to pay for three attorneys to sit-in on a routine conference call with opposing counsel.  They are also paying better attention to the partner to associate ratios and what resources are truly needed for effective representation of the client’s interests.

The trademark law firms that continue to proper are those that understand client concerns and align their services and value propositions to best meet the needs of sophisticated corporate brand owners.