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Deciding to Enter the Trademark Profession?

What makes someone decide to pursue a career in intellectual property? In particular, what makes a student decide to work in trademark law? The INTA Bulletin asked several practitioners how and why they ended up working in the trademark profession and found that the reasons were wide and varied.

Carole Klein

Carole Klein, part-time Senior Counsel in the Washington, DC, USA office of Morgan, Lewis & Bockius, has been practicing trademark law for seventeen years.

Carole has been with the firm for more than ten years, having joined as a lateral associate from another law firm. Carole serendipitously fell into trademark work in her first year after graduation from the University of Virginia Law School, when she was asked to take a break from a products liability case to work on a complicated trademark and international trade project involving competing American and New Zealand lamb products. That project ended and Carole’s involvement with trademark law may have also ended, except for the break up of Carole’s first law firm. She moved to a second law firm, whose only open associate position was in the field of trademarks.

In the fifteen years since those initial moves, Carole has explored virtually every aspect of the trademark field, including due diligence, litigation, transactional work, licensing, counseling, clearance and prosecution, and Internet law, both domestic and international. Carole also has practiced in almost every capacity, from associate through partner, and now part-time Senior Counsel (reflecting the demands of her other life as a wife, mother of three, PTA Vice President and yoga practitioner). Carole has found that the practice of trademark law is particularly well-suited to her part-time schedule and she now focuses on clearance and prosecution matters in her three days in the office.

Trademark law has proven to Carole that “you can have it all – and happily.”

MyLynda Moore

MyLynda Moore is an associate at Welsh & Katz, Ltd. in Chicago, Illinois, USA. Having undergraduate degrees in mathematics and engineering, MyLynda entered law school with a predilection toward intellectual property. Upon joining Welsh & Katz, Ltd., MyLynda was offered a wide array of intellectual property matters that included both prosecution and litigation of patents and trademarks. Although MyLynda enjoyed the range and diversity of her work, she quickly began to appreciate the complexity of trademark law.

MyLynda feels that whether she is litigating trademark rights for the firm’s bigger clients or filing applications for individuals and small business owners, her practice allows her the gratifying opportunity to protect their business assets. To MyLynda, the most fulfilling part of her practice is knowing that her work helps her clients to establish and maintain valuable assets, increase recognition and enhance their bottom line.

Janet Shih Hajek

Janet Shih Hajek, an associate with the law firm Greenberg Traurig, LLP, in the Tysons Corner, Virginia, USA, office, has been practicing trademark law for eight years as an attorney and an additional two years as a trademark paralegal. Janet first became interested in trademark law prior to starting law school when she was a paralegal for a small general practice law firm in Virginia. She was placed in charge of conducting and reviewing trademark searches, performing research at the U.S. Patent and Trademark Office (USPTO), and preparing filings with the USPTO. In her first year of law school, Janet was hired by a patent attorney as a part-time “trademark specialist” as she completed classes in the morning and then worked in the afternoon. Then, in her second year of law school, she was hired as a law clerk by a prominent intellectual property boutique in Washington, DC, USA. After law school, Janet was hired by a law firm to manage the international trademark portfolio of a large telecommunications / broadcasting company.

Janet has enjoyed trademark law since she was first introduced to trademarks as a paralegal, fresh out of college. Since then, she has enjoyed all aspects of the practice, including working with businesses on branding issues, handling trademark litigation both before federal courts and the Trademark Trial and Appeal Board (TTAB), enforcing trademark rights against infringers and counterfeiters, and working on transactional issues from trademark licenses to assignments. She finds the combination of business and legal issues involved in this area to be both stimulating and challenging. She also has a great deal of fun learning about different types of businesses and industries. As Janet explains, “Each day in my practice can be completely different from working on matters for a clothing manufacturer on one day to working on litigation involving beverage products on the next day. I enjoy the variety and complex business and legal issues that arise.”

Cory Furman

Cory Furman is a partner in the Regina office of the Canadian intellectual property firm Furman & Kallio. Since founding the firm in 1995, Cory has had the opportunity to work with clients in many intellectual property areas, but one area of great enjoyment to Cory is advising clients on trademark projects of either domestic or international scope. Prosecution and opposition proceedings form the core of his trademark practice. According to Cory, “Helping clients find and implement the right trademark strategy to fit their business plan or business circumstances is the most practical and added value advice that sage counsel can provide to their clients - knowing that you have delivered ‘the right tools for the job’ to the client provides a great degree of career challenge and satisfaction.”

Mercedes Bullrich

Mercedes Bullrich, head of the IP Prosecution group at the new firm Mitrani Caballero Ojam in Buenos Aires, Argentina, has been practicing trademark law for twelve years. She started working in non-trademark related areas at another IP boutique, where she met Juan Carlos Ojam. Juan Carlos got her interested this very exciting field, since she had an Operational Research degree at University and had never heard about trademarks before. Thanks to him, she had the opportunity to learn this field, and worked on many different IP related areas at the firm. She liked this field so much that she took the corresponding exams and became a Patent & Trademark Agent eleven years ago.

Since then, the two have been working closely together. Their first big step together was the opening of the IP Practice in a very large general practice firm in Buenos Aires, where she became the head of the IP Prosecution group. Mercedes is active in several trademark related associations and committees, which make her feel useful and active in the field. She enjoys the diversity of practicing trademark law and her international practice has allowed her to make friends and colleagues all over the world.

Victor Tannenbaum

Victor Tannenbaum, a senior partner in the firm of Abelman, Frayne & Schwab, has been practicing in the trademark field for more than 30 years. He specializes in the licensing of IP both in the United States and internationally. Shortly after graduating from law school, Vic answered a job posting placed with his law school for a position with an IP firm, which led Vic to a career in IP.

Vic has been fortunate to work on behalf of many large corporations in negotiating license and distribution agreements regarding well known brand names and products. It is particularly rewarding to Vic to see the appearance of products in the marketplace as a result of a successful negotiation.

Heather Heft

Heather Heft, an associate in the New York office of Stroock & Stroock & Lavan LLP, has been practicing trademark law for 10 years. Heather joined Stroock right out of Columbia University School of Law, where she concentrated her studies in the field of intellectual property.

Heather’s trademark practice is diverse and touches on almost every aspect of trademark law, including clearance, prosecution, Trademark Trial and Appeal Board (TTAB) practice, litigation, and licensing, as well as corporate transactions and due diligence.

One of the joys of Heather’s practice throughout the years has been representing a number of pro bono clients, educating them about branding and trademark protection.

Liisa Thomas

Liisa Thomas, a partner at Winston & Strawn LLP in Chicago, Illinois, USA, has been practicing trademark law for more than 10 years. Liisa’s interest in the practice area began in law school, where she studied under noted law and economics professor William Landes. Her interest piqued after she left the University of Chicago and joined the well known US trademark litigation boutique firm, Pattishall, McAuliffe, Newbury, Hilliard and Geraldson. Since that time, Liisa’s practice has grown to include additional aspects of intellectual property law, in particular advertising and privacy law, with an emphasis on youth marketing.

Liisa is passionate about her practice and is enthusiastic about speaking to lawyers and marketers about all aspects of trademark and advertising laws. A tireless ambassador for the industry, she also teaches a privacy law class to area lawyers in The John Marshall Law School’s Information Technology LLM program and is a prolific writer on the current trends in the industry. In her undergraduate work, Liisa studied history and languages, gaining fluency in French and a working knowledge of Spanish and Arabic. One of the things she appreciates about trademark law is the opportunity to work with clients on international trademark and marketing issues. She often finds during cocktail conversations that of her friends, hers is the most interesting profession!

John Cain

John Cain is a partner in the Houston, Texas, USA office of IP boutique firm Wong, Cabello, Lutsch, Rutherford & Brucculeri, LLP (Wong Cabello). Prior to joining Wong Cabello in 2003, John was a partner with Arnold, White & Durkee, which merged into Howrey in 2000. After working on a couple of particularly intense patent litigations in the early 1990’s, John refocused his career to include more non-patent IP work and, in particular, a significant emphasis on trademarks. It was a decision that he has never regretted.

John particularly enjoys working with small and mid-sized clients for whom he acts as virtual in-house IP counsel. “It is particularly gratifying for me when I can work with a client who previously had no IP protection and help to both educate the client and establish a protection plan for the client’s IP assets.” While he still maintains an active patent litigation docket, John’s practice today primarily consists of trademark prosecution, portfolio management and litigation.

Peter Verhaag

Peter Verhaag graduated from the Law School of Nijmegen University in 1986. He initially worked as in-house counsel for the seed-group of Sandoz AG (nowadays Novartis), based in Basle, Switzerland. He handled international patent and plant breeders’ rights affairs, including contacts on the legislative level with Dutch and EU government authorities.

Peter joined Arnold & Siedsma´s trademark filing and prosecution section in 1990 and the firm’s litigation section in 1993. He has since then advised and assisted numerous companies, including many Fortune 500 companies, on international IP filing, prosecution, enforcement and litigation matters and is experienced in handling international multi-infringement matters on famous trademarks.

Peter is an active member of INTA and a member of ECTA, LES, BMM and the VvA (The Dutch Association for Copyright).

Zhenglong Jiang

Zhenglong Jiang, a senior trademark attorney of Shanghai Patent & Trademark Law Office, LLC in Shanghai, China, has been practicing in the trademark field for 18 years. After graduating with a bachelor of law degree, Zhenglong joined Shanghai Patent & Trademark Law Office, LLC in 1987. At the time, there was no trademark attorney practice, as trademark registration applications were filed through local the Administration of Industry and Commerce (AIC) directly by applicants. In 1989, China started trademark attorney practice and Zhenglong started it too. Around 1993, China started its qualification examination for trademark attorneys and Zhenglong passed the examination and became a registered trademark attorney in 1995.

The trademark legal service business in China is very developed, with more and more trademark attorneys, but the volume of trademark legal service business in China is even larger than the number of attorneys. Since around 2004, there were more than half a million new registration applications filed at the Chinese Trademark Office each year, and that doesn’t include the large number of trademark renewals, license recordal, assignment recordal, oppositions, cancellations, re-examinations, negotiations, mediations, raid actions and litigations. Trademark attorneys in China like Zhenglong are very busy everyday. “This is the best time for Chinese trademark attorneys”, Zhenglong adds.