INTA Bulletin

July 1, 2018 Vol. 73 No. 11 Back to Bulletin Main Page

Law Firm Committee Poll Measures Key Factors in Choosing Outside Counsel

Choosing counsel to assume carriage of a company’s or a client’s trademark matters—whether prosecution, opposition, or litigation—is an important decision. With so many choices, where does one begin? On May 20, during the INTA Annual Meeting in Seattle, Washington, INTA’s Law Firm Committee hosted a well-attended and very interesting panel session which explored the factors that go into choosing outside counsel and managing such relationships.

The panel drew upon various segments of INTA membership, including in-house and outside counsel representing North America, Europe, and Asia. The panel was moderated by Amalia Berg (Goodmans LLP, Canada), Chair of the INTA Law Firm Committee’s Live-Programming Subcommittee, and included Tracey Berger (Spruson & Ferguson, Australia); Mark Foreman (Osborne Clarke, UK); Karen Lim Fross Zelnick Lehrman & Zissu P.C., USA); Kristi Spicer (Amazon, Inc., USA); and Rachel Tan (Rouse, China).

In advance of the session, a survey was conducted of members of INTA's Law Firm Committee, Trademark Administrators Committee, and the In-House Counsel Committee, as well as Annual Meeting registrants who indicated that they would be attending the session. Responses were received from more than 130 respondents from around the world, representing both law firms and corporations. During the session, the survey results were compared with the results of live polling of those in attendance.

The questions and topics posed and the survey results were as follows:

  1. What is the most effective way to choose outside counsel?
    Both the live-polling and survey results found that personal referrals are overwhelmingly the method by which foreign counsel is chosen. 
  2. What are the desired qualities in local counsel?
    There were two clear winners: (1) knowledge of local law and (2) responsiveness.
  3. Local law firms: with so many countries how does one choose?
    Again, there was a clear favorite from the poll responses. Respondents tend to choose an individual, rather than a firm, when instructing new work (46 percent). 
  4. What are the approaches to conflicts of interest?
    The majority of respondents were only concerned with legal conflicts of interest; however, a significant minority do consider business/competitor considerations when instructing local counsel. It was noted in the subsequent discussion that, in less developed jurisdictions, there is not necessarily a broad choice of appropriate counsel, so a more pragmatic approach is called for.
  5. What are the strategic considerations to keep in mind when choosing local counsel?
    While recognizing the limitations of such an exercise, the original survey indicated that the majority of respondents like to send all of their work in a given jurisdiction to one firm (47 percent); however, there was also a significant minority (33 percent) who chose to spread the work for reasons of reciprocity. The live poll suggested that the split between the two was much closer.

    This was the one question where the original survey and the live poll differed materially. Of course, there can be no right or wrong answer, only opinion and preference. It is certainly the view of both authors that it is often in the interest of the ultimate client to retain just one firm for that client, per jurisdiction. 
  6. Retainer/Engagement Letters 
    Although it is increasingly popular to require that local counsel sign a retainer (particularly on the part of in-house counsel), more than 70 percent of respondents instructing work do not require local counsel to do so. 
  7. How do you handle payment of fees?
    The clear winner was payment made through regular billing cycles (64 percent). Also notable was that nearly 25 percent of respondents only pay when they are paid by their ultimate client. This particular question generated a lot of interest from audience members. 
  8. How are due dates managed? Not unexpectedly, the clear winner in both the live polling and prior survey, with 70 percent of the poll, was that both local counsel and the instructing party manage the client’s docket. 
  9. Local Differences 
    Recognizing that there are many differences among local practices around the world, this topic sought to identify which differences presented the most challenges. The responses showed another clear winner, with over 50 percent of respondents stating that local counsel not being proactive and simply taking instructions is the greatest challenge.
  10. Technological Considerations 
    With the ever-increasing use of technology in our practices, the majority of which make our lives easier, we wanted to identify the pet peeves when working with local counsel. The two main responses were (1) local counsel sending emails attaching advice in PDFs (40 percent) and (2) email filters preventing the receipt of emails (25 percent).
An interesting discussion developed regarding the changes taking place and the impact of technology on how we practice, including the increased use of texting and social media to send and receive instructions. We fully expect the Law Firm Committee will be exploring the use of technology in the practice of trademark law further.

The topic of how to choose and manage outside/local counsel will always be an important one; however, as more firms emerge and competition becomes tougher, the pressure on keeping down the cost of fees will remain, and the importance of getting it right will increase. The flipside of this—namely, being (i) chosen to be outside/local counsel and (ii) remaining as such—will also be of huge importance.

The full slide deck showing the pre-session survey results (but not the livepolling results) is available on the Registrant Portal of the INTA website.

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. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association