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Transitioning From an In-House Job Back To Private Practice

By: Mona A. Lee, DW Partners, Seoul, Korea and Barry Krivisky, Scully, Scott, Murphy, & Presser, Garden City, New York, USA

Many trademark practitioners have taken the career path from a law firm to a corporation. But not many people are familiar with the reverse route—moving from an in-house counsel position back to a law firm. Mona A. Lee discusses the ups and downs of such a move with Barry Krivisky, formerly of Altria Corporate Services and now of counsel at Scully, Scott, Murphy, & Presser. Ms. Lee, of DW Partners, is co-chair of the INTA Bulletin Features–Policy & Practice Subcommittee.

Mona: Barry, I thought it would be helpful to those working in-house who might be thinking about going back into private practice to hear what your experience has been and what advice you might have. Could you tell us a little about your previous in-house position and your decision to go back into private practice?

Barry: I was Vice-President Associate General Counsel for Altria Corporate Services. I was in charge of the trademark department of Altria and had responsibility for the trademarks of Philip Morris U.S.A, Philip Morris International and Kraft Foods International. We previously also had responsibility for the international trademarks of Miller Brewing Company.

Altria provided challenging opportunities for me in protecting, maintaining and defending some of the world’s most famous brands, including MARLBORO, VIRGINIA SLIMS, KRAFT, KOOL AID and OREO. I oversaw a staff of dedicated professionals, paraprofessionals and clerical support personnel numbering over 40, in four offices, in the United States and Switzerland.

As widely reported, Altria made a decision to spin off its operating companies, and to lay the groundwork for that monumental task the trademark department was to be split into the existing three major operating companies, those being Kraft, Philip Morris U.S.A. and Philip Morris International. Kraft already had a trademark group handling their domestic work in Chicago, and I was asked to head the trademark group of the larger of the two tobacco operating companies, Philip Morris International in Lausanne, Switzerland. For personal reasons, I decided not to accept that appointment. Having spent 19 years in a large corporate environment, I did not want to learn a new corporate culture at this stage of my career. Therefore, I decided to return to private practice—before joining Altria, I had been a partner with Ladas & Parry.

Mona: That’s certainly an impressive work history. Did you have any apprehensions about returning to private practice since, for one, that is the opposite direction in which the traffic usually flows?

Barry: Sure. Major life decisions such as a career change always have their share of apprehensions. My primary apprehensions were less whether I should return to private practice and more whether I should become a sole practitioner or join a firm, and if I wanted to join a firm, who would want me, and would it be a good fit.

Mona: Once you made your decision to seek a new position, how did you go about doing that? Did you use headhunters?

Barry: No, I reached out to numerous people that I had built relationships with over the years, including those at my former firm, firms that I had worked with while at Altria, and the contacts that I had made and developed over the years through INTA. Since I had a strong interest in becoming a sole practitioner I started laying the groundwork for opening my own office at the same time I was exploring joining a firm. If the right opportunity did not present itself, I was very eager to open my own practice, and in fact, in the short period before I joined Scully, Scott, Murphy, & Presser, I secured my first client. It is a small service company that had existing litigation and needed trademark counsel.

Mona: Is there any reason in particular why you did not use headhunters, and would you recommend to others that they be used?

Barry: I did not consider using headhunters because I was thinking of going solo and I was not looking for a “job,” but rather a position. I tend to think of legal headhunters as placing people with two to four years of experience, rather than placing of counsel or partner level positions. I also think headhunters skew toward corporate, in-house positions. For someone newer in the field who may not have that many contacts a headhunter might be helpful.

Mona: How did you come to decide on your current firm?

Barry: I wanted to join a firm that was either an IP boutique, or that had a strong IP department that would benefit from and allow me to utilize my nearly 30 years of trademark experience. Also, having commuted into New York City and up to Westchester all of my professional life, I wanted to spend less time commuting and more time practicing law and being with my family. Scully, Scott, Murphy, & Presser provided me with an ideal situation. It is an IP boutique with a large patent prosecution and litigation practice, and a growing trademark practice, which I am working to build. Its suburban location is a short drive from my home and results in lower overhead, which is something that can be valuable to an attorney looking to build a practice.

Mona: You indicated that you were searching for an IP boutique or a firm with a strong IP department. Did you have other considerations—and if so, what were they?

Barry: Yes, first I wanted a firm that felt comfortable. You want colleagues that are bright, hardworking professionals that are on top of their game, but in the end, you must feel comfortable in the environment that will be your new home. Second, I wanted a firm that had an existing infrastructure of personnel, equipment and systems that would allow me to focus on my clients and the practice of law rather than on the myriad details of running an office. And, third, I think it important that a firm support membership and participation in professional organizations such as INTA.

Mona: It sounds like you found a great fit! What are some of the more general things a lawyer looking to reenter private practice should look for in a firm?

Barry: In addition to the attributes that make a law firm attractive to any attorney considering joining a firm, such as a congenial atmosphere, a collegial professional staff and an efficient and productive support staff, a trademark professional should look for a type of practice and a roster of clients that may be a source of additional business. Also, the types of matters that are likely to arise should be stimulating. For example, one of my goals is to meet with as many of our patent clients as possible, in the hopes that we can also provide trademark services to those companies. That would provide a benefit to the client of having its trademark and patent work handled by a single firm. In essence, one-stop shopping.

A firm that does a lot of M&A work or that handles mid-level corporate transactions may also be a source of trademark business that former in-house attorneys could develop. M&A and transactional work often generates new approaches to trademark portfolios, as well as chain of title work and sometimes litigation.

Mona: On the flipside, what should a lawyer looking to reenter private practice do to increase her chances of being accepted by the law firm of her choice? In other words, what do law firms look for in in-house counsel who want to join them?

Barry: Perhaps the biggest consideration is: how are you going to get clients? If you are joining a firm as an associate to help with its existing clients and trademark portfolio, bringing in and developing clients is less of a concern. If, however, you are joining a firm as I did in a counsel role, or as a partner, you would likely be responsible for bringing in new business. Of course, the ideal situation is to be able to count on your former employer as your main client, or at least a major client in your new private practice position. That is often the driver behind in-house attorneys being sought after by their prior outside law firms.

In my circumstance, while the major Altria affiliates continue to do their own work, two minority owned affiliates asked that I continue to represent them upon my return to private practice, and they formed the nucleus of my new practice. I was then fortunate to quickly add two small, but substantial clients in my first year of practice.

Mona: You really were fortunate! I suspect not every in-house lawyer returning to private practice will be as lucky as you. Now then, for the million-dollar question that all lawyers want to ask, how do you get new clients?

Barry: Obtaining, maintaining and developing clients are related, but different tasks. To get clients, you need to make ongoing efforts on several fronts, make that on all fronts, inasmuch as you never know what will work, or who you will meet. INTA provides countless opportunities to meet new people, discuss current issues that may be confronting potential clients, and showcase knowledge and expertise through speaking or participation in discussion groups. For example, an INTA Annual Meeting was the source for one of my new clients. I simply got to talking with a partner of a foreign firm and we quickly developed a rapport, resulting in a mutually beneficial relationship. Being able to reciprocate with work makes such relationships even stronger.

Other ways that have traditionally been used to develop clients are participation in social and service organizations, speaking at bar association meetings and other events, and writing articles for both the legal community and in trade publications.

Mona: Yes, I agree that INTA is a great resource for practitioners, both professionally and personally. There is no way I could have built my current practice if I didn’t attend INTA. Can you give us examples of what you have been doing to get new clients?

Barry: One of my goals has been to develop clientele among the small to mid-sized local businesses on Long Island. To that end, I frequently attend meetings of the Inventors Society in Nassau County and the Inventors and Entrepreneurs Society in Suffolk County. I’ve gotten a few new, small clients from such efforts.

My firm also has a significant presence on the Internet through its website and does at least two client-focused events every year—a golf outing in the summer and a holiday party in the winter. Both events are well attended by clients and are good ways to improve relationships with existing clients.

Another way of marketing to potential clients that most law firms have largely ignored is television, radio and Internet advertising.

We all tend to think that businesses and the people responsible for the purchasing of services for businesses do not respond to advertising, but rather choose their providers by way of word of mouth recommendations and personal contacts. Certainly that is all true; however, there are instances when businesses may be willing to at least explore, for whatever reason, new vendors. I believe that is true for legal services as well as copy machine maintenance services. While the person responsible for the business’s legal review may know a few lawyers, including existing outside counsel, they may have reasons for going beyond that close circle of contacts.

That is when advertising may be very effective. And by effective, I do not mean that a lawyer or law firm will be retained on the strength of the ad alone, but rather if the advertisements generate a telephone call or other inquiry, they have served their purpose. It is at that point that the lawyer must convince the prospective client why he or she would best serve the client’s needs. Nevertheless, there is still a strong reluctance by attorneys to engage in such advertising, and my firm is still considering whether to do so.

Mona: OK, so we know that if an in-house lawyer can somehow cultivate a client base prior to leaving in-house practice, it will make her more marketable to prospective firms. What other things can an in-house lawyer do to bolster her chances of getting an offer?

Barry: Perhaps it’s not so much what she can “do,” but what she can focus on when speaking with prospective firms. She may not realize it, but she has a wealth of experience to bring to the firm and its clients. Therefore, in discussing her in-house work experience, she should emphasize what she has learned about how corporations work and operate, and how she has developed professionally to know how best to assist corporate clients.

Attorneys who have spent their entire careers in law firms often do not appreciate the many nuances of, and even the politics that are often inherent in such situations. For example, companies in industries that are sensitive to public relations, public policy, governmental regulation or national security issues must filter through a whole panoply of factors that may be impacted by or affect a trademark issue. Those companies do not approach a problem with the simple cost–benefit analysis that may work in other industries.

To elaborate, one of my responsibilities at Philip Morris was to stop the unauthorized use of our trademarks on toys and other products that may be of interest to children. Registration of our trademarks for toys and games in countries that do not require use or a bona fide intent to use for registration would have been an additional strong weapon in our arsenal to prevent such misuse. Nevertheless, we did not register our tobacco trademarks for such goods, because doing so could have been and likely would have been interpreted by some as the first step in an attempt by a cigarette company to market its products to children. We therefore had to rely on our trademark registrations for tobacco products in Class 34 and the fame and notoriety of our trademarks in our efforts to stop their unauthorized use on products intended for children.

Mona: Barry, just a couple of more personal questions. Are you enjoying yourself? What does it feel like to be back at a law firm?

Barry: I am enjoying myself, Mona, but there are constant challenges. For example, one of my clients became insolvent, leaving a hole in my practice. A few clients have been slow to pay their charges, and there is the constant need to get new clients. Nevertheless, I enjoy being in private practice, as I enjoy the challenges and I also enjoy the attorney–client relationship, as opposed to the relationship one has with other employees when in-house.

Mona: Any final words of wisdom?

Barry: Know who you are and what drives you, and if you find yourself unhappy in-house or with an entrepreneurial itch that needs to be scratched, do not be afraid to make the jump into private practice. It is exciting and challenging and provides many different rewards!