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INTA Bulletin


March 1, 2011 Vol. 66 No. 5 Back to Bulletin Main Page

New Pro Bono Activities at INTA


We often hear about lawyers offering pro bono services in the areas of criminal and family law. We hear less about the offering of such services in relation to the area of intellectual property law, and trademark law in particular. Even so, a number of our INTA leaders and colleagues have been delving into the cross-section between the world of pro bono services and the world of trademarks.

What Is Pro Bono Work?
Many are familiar with the Latin phrase pro bono publico, which means “for the public good.” For some, the phrase refers to any services rendered without compensation regardless of whether the beneficiaries of such services are financially incapable of paying for them. For example, some might consider their volunteer work for INTA to be a form of pro bono work. Others consider work to be pro bono only if it assists those who are unable to afford the services being provided. In either case, providing such services is desirable and benefits both the donor and the recipient.

What Has INTA Been Doing?
Under the leadership of 2010 President Heather Steinmeyer, INTA delved into the meaning of “pro bono” when a Task Force was created last year to explore the feasibility of supporting INTA members’ pro bono efforts and encouraging individuals to participate in pro bono work as part of a larger social responsibility program. The Task Force conducted a survey, looked into the various definitions of “pro bono” adopted by other organizations and performed other research.

The Task Force conducted a survey of INTA volunteers and found that 58 percent of respondents performed 10 hours or more of pro bono services in 2009. That percentage rose to 85 percent if those who performed less than 10 hours of such services were included. The survey also showed that 82 percent of the respondents provided pro bono services in the area of trademark law and 20 percent offered such services outside the IP field.

As a result of its studies, in its report the Task Force recommended that INTA raise member awareness about pro bono activities at Annual Meetings through sessions, Table Topics and the like; highlight the pro bono work of INTA members through a regular column in the INTA Bulletin; establish a dedicated pro bono webpage on INTA’s website; implement a Pro Bono Volunteer Service Award for INTA volunteers who dedicate time to trademark or related intellectual property pro bono work; and develop a Pro Bono Project Team dedicated to continuing the efforts of the Pro Bono Task Force. These recommendations are well on their way to implementation.

Raising Member Awareness
For example, Jeff Kobulnick (Foley & Lardner LLP, USA) hosted a Table Topic at the 2010 Annual Meeting on pro bono opportunities inside and outside the trademark practice area. He will host the same Table Topic at the upcoming Annual Meeting in San Francisco. In addition, Brian O’Donnell will be hosting a related Table Topic, “How to Create and Sustain a Successful Pro Bono Program,” at this year’s Annual Meeting.

A pro bono webpage has been established. It contains a list of pro bono resources. Also available is information on the criteria that will be used to select recipients of the Pro Bono Volunteer Service Awards, which will be presented later this year, with nominations to be collected in July and August.

Volunteer Service Awards
Two Pro Bono Volunteer Service Awards will be given: one to an individual and one to a member organization. The individual award will be given to “one or more individuals who have shown a significant commitment to providing trademark and related intellectual property pro bono legal services in support of (a) persons of limited means or other disadvantaged persons; (b) charitable, religious, civic, community and educational organizations that address the needs of persons of limited means or disadvantaged persons; or (c) government or judicial organizations.”

The member organization award will be given to “one or more member organizations that have demonstrated a significant development or expansion of programs for providing trademark and related intellectual property pro bono services during the previous year.”

Why Is Pro Bono Important?
We asked Bret Parker, “Why should people in the trademark industry care about pro bono initiatives?” His response: “There are countless reasons, such as the professional and moral obligation to help others, the personal satisfaction that comes from engaging in this worthwhile effort, the benefit to your career by sharpening existing skills or learning new ones, and the camaraderie created by working in teams with others at your firm or company with whom you might not normally work.”

In fact, Bret started and ran the pro bono program of Wyeth before that company was acquired by Pfizer. A number of the trademark paralegals handled various pro bono matters; one of them, Colleen Adams, currently a senior trademark analyst at Pfizer, was named one of PharmaVoice Magazine’s 100 most inspiring people in 2009 based on such work.

In turn, Colleen remembered how her former boss’s pro bono efforts had left an impression on her. “[Bret] is a high-level, extremely busy person, and he introduced pro bono to the rest of the legal division within our company. Even with the amount of responsibility and workload he was charged with, he still made an effort to volunteer for several cases. It was then I realized that if he could manage to help given his amount of work, then I had to at least try.”

Some Interesting and Rewarding Pro Bono Experiences
There appears to be no shortage of people in the trademark industry trying to make time to render pro bono services, and in a wide variety of areas. Cynthia Rowden told us, “I have done trademark work for the Ontario Special Olympics Association … and have had a chance to get involved in other aspects of the Association.… It is a wonderful organization that changes the lives of many people.” Cynthia also does a substantial amount of pro bono teaching.

Pro bono experiences can leave enduring memories, too. Jeff Kobulnick recalled, “I still have a thank you letter from a mother and her two children from many years ago because I helped her children change their last name so that they would not have the same last name as their father, who abandoned the family when they were little.” Timothy French (Fish & Richardson P.C., USA), reflected that “the effects of the firm’s efforts in immigration and refugee matters are particularly moving.”

Stephen Coates (Kilpatrick Townsend & Stockton LLP, USA) said his firm manages the global trademark rights for Habitat for Humanity, a nonprofit organization that helps build affordable housing throughout the world. Stephen’s interests also lie in “the problems of emerging technologies and how intellectual property rights can protect them. There are many new companies with limited budgets that are trying to protect their rights in new ideas. I find these the most challenging.”

One of Peter Müller’s most cherished pro bono experiences involved helping a small inventor win a case against a larger corporation. Bret Parker once helped an ex-convict obtain a copyright registration for a book he wrote in prison.

When asked what her most profound pro bono experience has been, Colleen responded, “Two moments immediately come to mind. One of my first cases involved a woman who was in desperate need of permanent disability insurance but was twice denied. We filed an appeal and she was granted permanent insurance benefits. Her gratitude was overwhelming.”

Colleen’s other moving experience related to her providing trademark filing assistance to a nonprofit that helps children born with a specific defect that could be fatal. They thanked Colleen by providing her with a canvas painting created by a little four-year-old boy named Noah. “It hangs in my office, and Noah today is, thankfully, growing, healthy and strong.”

What Are Challenges in Doing Pro Bono Trademark Work?
Beyond engaging in pro bono work for the noble purpose of trying to improve the world, there may be some additional important and beneficial effects within the trademark industry that should drive such efforts. In particular, we hear much about the anti-IP sentiment that seems to be growing these days. Consequently, as Cynthia put it, “in terms of information on IP, the more people who know about the importance of IP and its relevance to us in all aspects of our lives, the better.” In that regard, securing IP protection for a pro bono client, particularly one that may not be savvy about the crucial role IP plays in the world, may leave a lasting positive impression on that client, to the benefit of all of us who work in the industry.

On an even larger scale, Marion Heathcote reflected back on her representation of INTA at the “One Village, One Brand” seminar in Seoul last June. The seminar was sponsored by APEC (Asia-Pacific Economic Cooperation) and organized by the Korean Intellectual Property Office with APEC. Participants, including NGOs specializing in fair trade, officials from IP offices and agencies, IP organizations and product producers, gathered to discuss how branding and IP strategies could enhance economic development in local communities, thereby raising their standards of living. Through this seminar Marion came to appreciate the larger role that pro bono trademark initiatives could play in the growth of underdeveloped and developing countries and in helping those countries to help themselves.

We can get caught up in the frustrations and stresses associated with working in a demanding and high-paced business with numerous deadlines and regular conflicts. In such an environment, performing pro bono work offers us an opportunity to do something both different and rewarding, while lending perspective to our lives. In helping to fix others’ problems, we may also gain something invaluable in the process.

Case in point: When survey participants were asked, “Why do you participate in pro bono work?” the top answer was, “It makes me feel good.”

Anyone interested in learning more about the work of the Pro Bono Project Team may contact Laura Castle, Membership Development Coordinator and staff liaison to the Project Team, at lcastle@inta.org.

INTA’s Pro Bono Task Force
Chair: Bret Parker, Elizabeth Arden, Inc., USA
Sarah Bourke, INTA
Mercedes Bullrich, Mitrani, Caballero, Rosso, Alba, Francia, Ojam & Ruiz Moreno, Argentina
Karen Fong, Rouse, UK
Marion Heathcote, Davies Collison Cave, Australia
Marc Lieberstein, Kilpatrick Townsend & Stockton LLP, USA
Jim McCarthy, McDonnell Boehnen Hulbert & Berghoff LLP, USA
F. Peter Müller, Müller Schupfner & Partner, Germany
Brian O’Donnell, Kellogg Company, USA
Peg Reardon, INTA
Cynthia Rowden, Bereskin & Parr LLP, Canada


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2011 International Trademark Association