Intellectual Property

3 Questions For A Leading Trademark Filer (Part II)

Trademark prosecution is a crowded field, but hiring competent counsel is essential to getting your mark approved.

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Last week, I presented Part I of my written interview with prominent trademark attorney Xavier Morales. That column described the interesting use of web-based marketing as a means of springboarding a prolific trademark filing practice, along with a biographical sketch of Xavier and his answer to the first of my three questions. What follows are Xavier’s answers to my remaining two questions. As usual, I have added some brief commentary to his answers below, but have otherwise presented his answers as he provided them.

2) Your career started at a Biglaw IP firm, and you are now practicing at your own shop. What lessons did you take with you from your Biglaw experience?

XM: Before starting my own practice, I worked at the New York office of Baker Botts LLP.  The New York office in particular has a reputation for being the IP hub of the firm as whole.  Before joining Baker Botts, I knew that I wanted to pursue work in trademarks and copyrights, as those were areas of the law with which I had some pretty sophisticated familiarity on account of my law school studies.  

Upon joining Baker Botts, they immediately accommodated my request to work in their Trademarks & Copyrights department, which I greatly appreciated, as I knew plenty of other first-year associates who were not so lucky to get their “first choice” placements in other law firms.  Little did I know that all of my law school studies in the IP field were to be deemed largely irrelevant, as the distinction between academia and the real-world practice of law was much starker than I anticipated. Although my “Biglaw” experience taught me everything I needed to know about trademark and copyright prosecution (which is what I focus on now in my own practice), it would also teach me something much more valuable.  The amount and quality of client contact that I was able to engage in was something that was completely unexpected to me as a lowly first- and second-year associate.  The firm implicitly trusted me to deal with many high-profile, demanding clients, and that kind of experience cannot be overstated.

“Customer service” is rarely discussed among lawyers and practitioners, but it’s something that my Biglaw experience really allowed me to focus on.  I learned that no matter who the client is — whether a solo entrepreneur just starting a business, or the head of marketing at a Fortune 100 company — it is important to keep in mind that they all want the same thing: they want to know that you’re taking care of them, and that they are a priority for you.  This is how I strive to treat all of my clients in my own practice, and needless to say, it has served me well.

GK: It is not often that you hear a Biglaw alumnus say that a highlight of their experience was the opportunity for significant client contact. Much less that Biglaw training helped develop a sense of how to deliver effective customer service to future clients. But it happens, and Xavier’s experience suggests that self-motivated IP lawyers would do well to maximize their Biglaw experience by focusing on those skills that are truly transferable. Legal acumen and experience, for sure, but also learning how to satisfy demanding clients. It can be done.

3) Trademark prosecution is a crowded field, with clients handling filings in-house or through LPOs like LegalZoom. Why is hiring competent outside counsel so important in your view?

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XM: I actually get a lot of clients that come to me after they’ve hired a legal support services company to prosecute their trademark, and 90 percent of the time, the client has the same complaint: the other company is impossible to contact.  Half the time, they cannot get a real person on the phone; the other half of the time, the person on the phone has no idea how to help them because they do not have expertise in trademark law.

While I understand why clients are tempted to hire LPO providers (e.g., they are usually less expensive than hiring an attorney), something is lost in the LPO provider’s attempt to create an assembly-line business structure out of trademark prosecution work.  While on its face the idea of filing many trademark applications can easily lend itself to notions of automation, scalability, and mass processing, in practice this type of thinking invariably leads to unhappy clients and rejected applications.

The practice of trademark prosecution is deceptively complex, and I have personally found it impossible to adopt a one-size-fits-all approach to my own clients’ trademark filings.  Hiring competent trademark counsel is practically essential nowadays because the U.S. Patent & Trademark Office does not have policy of rubber-stamping trademark applications into approval.  Rather, the trademark application is reviewed by a Trademark Examiner — an actual human being who is usually not shy about pointing out flaws in the application under review. In the vast majority of cases, the Trademark Examiner will require some clarification or amendment to the application in order to approve it, and those are just the easy cases.  In many cases, the Trademark Examiner will issue an outright refusal against the application because of a perceived conflict with another prior-registered mark, or because the mark is deemed to be merely descriptive of the goods or services being provided. In either case, the applicant is required to file a response to the Examiner’s objections, and those kinds of responses are not ones that lend themselves well to automation.  

Each case is different, and each case will require a distinct set of arguments and case law to be presented to the Examiner in order to attempt to reverse the Examiner’s initial refusal.  This kind of lawyering is simply something that, in my experience, LPOs are ill equipped to handle. And in fact, a lot of these refusals from the Trademark Office are avoidable to begin with, as any competent trademark counsel will attest.  All it takes is a more nuanced, more tailored approach to each trademark filing.

GK: I am not surprised to hear that dissatisfied LPO trademark clients are turning to skilled practitioners like Xavier when things don’t go as initially planned. Yes, LPOs can provide services at a lower price point, but that cheaper price can come at a cost in terms of responsiveness and effectiveness — as Xavier’s comments demonstrate. Ultimately, clients reward efficiency and results. There will always be room for competitive attorneys like Xavier that understand the marketplace and are willing to provide great service at a fair price.

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My thanks to Xavier for the insights and cooperation, and I wish him continued success and fulfillment with his career. As I have said before, it is always a privilege to hear from an established IP personality, especially one with such a big role to play in a critical area of IP practice. I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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