Posts Tagged: "Advice for Lawyers"

‘It’s a Marathon, Not a Sprint’: How to Get and Keep Good Corporate Clients

Yesterday’s IPWatchdog webinar, sponsored by Anaqua, hinged on the statistic that 70% of in-house counsel surveyed by the American Bar Association in 2012 would not recommend their primary outside counsel to others and 87% would replace their current firm if given a good reason.

Panelists Bart Eppenauer and Benjamin Brown emphasized that avoiding complacency is key. “The legal industry needs to do a lot better,” said Eppenauer. “It’s not enough to deliver quality work; go to your client and ask how things are going or you could find yourself on the way out.”

The IP Counselor’s Checklist for Adding Value During Patent Prosecution

As the new year begins, I’ve been reflecting on what makes patent practitioners highly valuable to their clients. In a prior IPWatchdog article, I asserted that one should aspire to practice as an intellectual property counselor—who leverages patent prosecution as one strategic tool among many, rather than narrowly conceptualizing his or her role. What about the day-to-day acts of preparing and prosecuting a patent application? Here are ten concrete steps IP counselors can take to advance their clients’ interests and distinguish themselves from their peers.

The Role of Stupidity in Trade Secrets

Although every case had its own special facts reflecting unique personalities, technologies and business models, one necessary element was present in every single case. Somebody had done something stupid. And they still do. Sometimes it’s about what people do when getting ready to leave their job and go into competition. They brazenly solicit customers or foment discontent among the staff they want to recruit. They use the company’s computer system to research and prepare their business plan. They download thousands of confidential files they’re not supposed to have anyway, and then try to cover their tracks by using specialized software – I’m not making this up– called “Evidence Destroyer.”

OEM Trademarks in the AfterMarket: Exploring the Boundaries

While there are certainly limits on how—and how much—aftermarket sellers can use OEM trademarks to communicate key information about aftermarket parts, the legal boundaries for aftermarket sellers are not always clear. And, in the automotive industry, the question of legal boundaries is perhaps most intriguing when the trademark concerned is one of product configuration. Indeed, several U.S. auto companies own incontestable trademarks registrations for various source-identifying parts of their automobiles such as grilles, headlights, and fenders. In light of such perpetual trademark rights in these part configurations, how can aftermarket sellers offer visually identical replacement grilles, headlights or fenders without significant risk of a trademark infringement claim from the auto companies?

Managing international trademark portfolios in the Age of Globalization

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.  When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.  For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.  In the case of trademarks, the benefits are obvious: if/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.  However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action.