By Aimee L. Kaplan, Collard & Roe, Roslyn, New York, USA, Young Practitioners Subcommittee of the Membership Services Committee
There’s an old saying that “a good lawyer is a busy lawyer.” True enough, but even the busiest trademark lawyers often take time to teach new professionals—whether attorneys, legal assistants or administrators—about how to protect and enforce trademarks. What are the keys to success in that process? Although the exact techniques vary, depending on the individual teacher and student, here are a few tips.
First, nothing is more valuable to a trademark professional than knowledge, but junior personnel may not have all of the knowledge they need at the outset. A few may have taken a trademark class in law school, interned with a trademark lawyer or corporate law department, or otherwise familiarized themselves with trademarks, but as any experienced practitioner knows, trademark law is not “easy.” One excellent mentor advises lawyers pursuing practice in the United States to read the treatise McCarthy on Trademarks and, once finished, read it again!
Although such works are a great place to gain an in-depth knowledge about trademark law’s many facets and its hidden complexities, newcomers often cannot absorb all of the wisdom in a complex, multivolume treatise. A more practical start might be a basic “primer” that offers an overview of trademark law. In either case, new personnel must familiarize themselves with fundamental trademark terminology and with the basic tenets of trademark law that may surprise the uninitiated—for example, that two marks do not have to be identical to create a likelihood of confusion!
A second important aspect of learning for all trademark attorneys is to study the key cases in depth. Those responsible for mentoring junior attorneys may be able to suggest a reading list of cases that establishes the most important principles and/or gives real insight into the manner in which judges analyze trademark issues. Although attending a continuing legal education (CLE) seminar or reviewing a blog entry can be helpful in condensing difficult concepts into “why this case is important,” nothing replaces actually reading the case law and seeing the rationale behind a decision.
Third, CLE seminars and INTA roundtables are good places for new attorneys and other trademark professionals to learn about different areas of interest and current “hot topics.” Not only are attendees able to gain valuable advice and practice tips from their colleagues in an informal and interactive atmosphere, but also they are able to network with people from the same geographic area. INTA also offers many valuable online tools, including publications and databases, which may be accessed in the Information & Publishing section of www.inta.org. Resources that will be particularly helpful for junior trademark personnel include the Trademark Basics fact sheets and Country Guides—an online database with basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 90 jurisdictions. Also check for INTA’s e-learning workshops and forums.
Some firms have formal training programs that include seminars examining the implications of recent case law from a practice viewpoint. Such seminars can help experienced practitioners as well as new personnel stay abreast of developments.
A formal training program may also include workshops to impart know-how and encourage discussion about key practice areas on a topic-by-topic basis. For example, a firm might hold a workshop to teach new personnel about when to send cease-and-desist letters to potential infringing parties and how to draft that correspondence. Another workshop might center on selecting or drafting appropriate identifications of goods and services and choosing suitable specimens of use for trademark applications.
Taking a slightly different approach, a workshop could focus on effective time management in routine tasks to encourage efficiency. That topic would have the additional benefit of reinforcing other lessons by allocating work so as to give juniors the chance to use what they have previously learned. And, of course, variety in a training program is always helpful.
Fourth, a new trademark attorney or other professional should be aware of current procedure. For example, if a junior attorney is unfamiliar with the local trademark regulations, prosecuting a trademark application can be difficult. Most official regulations are online, including those of OHIM (English version) and the USPTO. INTA’s online Country Portals provides links to those and other countries’ regulations.
Likewise, an attorney should be aware of the procedural rules of any tribunal before which she appears, whether an administrative entity, a local or national court, or some other body. Although some errors can be corrected, others may lead to disastrous results—for example, the tribunal may not consider evidence that is not properly entered. There are a number of treatises with practice tips for various jurisdictions, and most major tribunals have published rules.
As the previous points suggest, a fifth training precept is that new personnel should know how to navigate the website of their national trademark office. Being familiar with one’s national trademark website is particularly important if the trademark office requires or simply accepts online filing of certain documents. For example, a notice of opposition to an application extended into the United States through the Madrid Protocol must be filed online. A junior trademark professional has to know such “e-rules” to make sure the client’s rights are protected.
However, no matter how conscientious and diligent a new trademark professional may be, mistakes are inevitable. When mistakes do occur, they must promptly be brought to the attention of the supervising attorney. A mistake that may seem minor can have consequences much more serious than a junior person may readily understand.
Thus, it is important for senior trademark personnel to foster an environment where their juniors can acknowledge mistakes without fear. It is also important for a junior person to understand that when bringing a mistake to attention, the best approach is to skip the excuse of how or why the mistake happened and instead focus on how to correct the error.
One of the most valuable lessons mentoring can impart is what trademark clients really want and how a lawyer can best serve their interests: by giving fearless, timely, accurate, usable and cost-effective advice! Junior practitioners often feel pressure to give a client the answer the client wants. But “slanting” advice to please clients helps no one—especially when clients rely on their attorneys to help them make costly business decisions.
In addition, junior trademark professionals may feel pressure to know all the answers. They must learn that “it’s okay not to know the answer.” Clients seldom expect attorneys or legal assistants to have all of the answers immediately; rather, clients appreciate it when their advisors frankly acknowledge they don’t know something and then proceed to find out.
Similarly, when advocating for clients, new practitioners should not “shade the facts” in a light most favorable to their clients’ interests. Although every attorney is expected to be an effective advocate for the client, the attorney also has a duty of candor with any trademark office or tribunal.
Although junior trademark professionals may lack the knowledge and confidence that come with experience, they can still excel by remaining enthusiastic. Work that is prompt, diligent and thorough is always appreciated by one’s managers. When a supervisor requests a “draft,” the junior person should present the best possible work product. Often, junior personnel may think a draft “will be changed anyway,” so “it does not really matter.” However, by requesting and then reviewing a draft, the supervisor is giving a junior person an opportunity to show his best work, and that junior professional should always strive to impress his seniors.
Junior trademark attorneys frequently are asked to research narrow concepts of law or specific practical questions. The quality of their work is likely to be better if they know the basic facts of the case. Although a lawyer can research a specific topic “in a vacuum,” more creative solutions may come to mind if he or she is aware of major facts and circumstances.
Thoroughly explaining a trademark assignment may take a few more moments, but the rewards can be enormous. In some instances the person giving an assignment may be in a hurry, but if an associate needs additional guidance, she is likely to ask a few clarifying questions. Of course, any associate should take the initiative to figure out as much as possible.
Giving feedback to junior trademark professionals can be very helpful. Junior personnel may be shy about asking for feedback, but getting it is vital if someone wishes to excel. Many law firms have a year-end review process whereby attorneys and staff receive feedback from supervisors. However, if a junior person thinks waiting until the end of the year will be too late, she may wish to follow up with supervisors every few months to ascertain whether the quality of her work is acceptable and to ask for advice and tips about how to make that work better.
It may be nerve-racking and difficult to hear, but constructive criticism is the best way for a trademark professional to hone her craft. To put such feedback into perspective, although an attorney might not want to hear criticism from a boss, she would probably rather receive it from a supervisor than from a client or judge.
Last but certainly not least, junior trademark professionals should find mentors to advise them on different aspects of their legal careers. Note the use of “mentors,” not “mentor.” Different mentors can serve different purposes, and junior personnel should foster relationships with mentors outside as well as inside their law firms, corporations or other practice settings.
In this regard, INTA’s Young Practitioners Committee is developing a formal mentor-mentee program to teach mentees about how to become more involved in INTA, and junior personnel are strongly encouraged to sign up. The pilot for this program has been quite successful, giving its mentee participants significant amounts of information, advice and encouragement, and the full program will be implemented next year. See INTA Bulletin Vol. 64 No. 17 (Sept. 15, 2009) for details.
Unfortunately, there is no magic formula for developing top-notch legal talent. Every person learns differently, and the quality of learning depends largely on the time and effort invested by supervisors. However, with effort and enthusiasm on both sides, junior personnel and their seniors can work together to find ways of maximizing educational opportunities and produce the next generation of talented and well-trained trademark professionals.