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. According to a Chicago medical malpractice lawyer, 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.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America