Former President’s Award Winner Reflects on a Half Century of Trademark Law and INTA

Louis Pirkey, Pirkey Barber PLLC (USA)

This year’s INTA President’s Award and INTA Service Awards will be presented next month at an awards ceremony during the 2022 Leadership Meeting. In this interview with the INTA Bulletin, 2012 President’s Award winner Louis Pirkey (Pirkey Barber PLLC, USA) recalls his first Annual Meeting, reflects on more than half a century of trademark law practice, and offers advice to young practitioners.

During his nearly 60-year career in intellectual property (IP) law, Mr. Pirkey has taken on many roles, including serving as a Director on the INTA Board of Directors, president of the American Intellectual Property Law Association, chair of the Intellectual Property Law Section of the State Bar of Texas, and committee member on the Trademark Review Commission.

He’s been called a “legend of the field” in the 2014 World Trademark Review 1000. Chambers USA Guide to America’s Leading Lawyers for Business refers to him as “the guru” who is “widely recognized as one of the leading trademark litigators in the country.”

Mr. Pirkey received a Bachelor of Science in Chemical Engineering from The University of Texas in 1960, and his J.D. from George Washington University in 1964. He is a founding member of the trademark specialty firm Pirkey Barber and now serves as a member at Pirkey Barber PLLC. In his home state of Texas, Mr. Pirkey taught trademark law for 15 years as an adjunct professor at The University of Texas School of Law. And, in addition to his trademark litigation practice, Mr. Pirkey is also active in alternative dispute resolution and has served as a neutral in more than 30 trademark disputes.

How did you become a trademark lawyer?
I actually always wanted to be a patent lawyer. I was a chemical engineer undergraduate and went to law school at George Washington because, at that time, it was one of the few schools in the United States that focused on IP and particularly patent law.

I managed to get a job at the U.S. Patent and Trademark Office, working during the day as a patent examiner and going to law school at night. It was challenging but most of my law class were doing the very same thing.

I began practicing in IP, and patent law specifically, with a small firm in Washington, D.C., and then in Houston, Texas. The lawyers in the firm were all patent lawyers, so when trademark cases came in, they came to me as the most junior person. Thankfully, I liked trademarks!

For the last 50 years, most of my work has been in trademark law and most of it in litigation. Today I mostly run mediations and client counseling while working with the young people in our office who are all very talented and very fine trademark lawyers.

In 1987, you served on the Trademark Review Commission of the then-USTA (United States Trademark Association) now-INTA. It spent two years analyzing the U.S. trademark system. That was 35 years ago! What in your view are the fundamental differences in the trademark system today?
Apart from a few basic principles that existed in the early days of my practice, the trademark system today has changed radically. It’s much bigger and much more complicated than when I started practice.

The Trademark Review Commission led to the Trademark Revision Act (TLRA), with extensive changes in trademark law. These included the intent-to-use change, which everybody talks about. However, I think the introduction of constructive use priority was huge and has helped develop the law used in solving disputes that are caused primarily by the Internet and social media.

In the Commission, we spent a lot of time talking about dilution, because at that time, dilution protection for trademark owners was available in some—but not all—U.S. states, but not on the federal level. We had proposed some changes, including that Congress should adopt a federal dilution law. Congress left dilution out of TLRA but enacted the Federal Trademark Dilution Act in 1996.

Outside of the Commission’s work, other developments such as the Internet and social media have also led to big changes in the trademark system.

My practice was primarily in trademark litigation—a much larger percentage of the trademark cases in court went to trial years ago, and jury trials were very rare. However, jury trials became more in vogue as lawyers discovered that juries were interested in trademarks, and they frequently favored trademark owners.

The number of cases going to trial today in the U.S. is, at least in my perception, much decreased from what it was some years ago. That’s due to several factors, including the delays and the cost of going to trial. It’s now very common to do surveys and have expert witnesses, and, combined with the hourly billing rates of attorneys having increased dramatically, it now costs so much money to go to trial. Typically, the parties feel like it’s more efficient to settle or engage in mediation or other forms of alternative dispute resolution.

Finally, trademark law is now much more popular than it was when I started out. The Leadership Meeting at INTA today probably has several times as many people attending as the Annual Meeting did when I got started.

When I went to law school, there were just a handful of law schools that emphasized IP. Today almost all major law schools have an emphasis on IP or at least have IP courses.

The interest of law students is also totally different. In the early days of my career, it was hard to find law students who were interested in practicing in our field. Now, there are a lot of very exceptional law students who are interested in a career in trademark law.

Peter Harvey, your fellow recipient of the President’s Award, sadly passed away in May. He was so well respected within the INTA community. What memories can you share of Peter and of winning this award with him in 2012?
The Trademark Bar certainly lost a very fine lawyer and a very fine person when we lost Peter. We thought very highly of Peter, and it was very sad to lose him. It was a privilege for me to receive the President’s Award at the same time as Peter did.

Back in the 1990s, the law firm I was working for at that time decided to establish an office in the San Francisco Bay area. I flew out to California to meet with Peter to try to convince him to join the firm, but I failed. He was very well established in his practice in San Francisco—it was one of my many failures in practice.

You attended your first INTA Annual Meeting in the 1960s in the Pocono Mountains in Pennsylvania. What do you recall from that Meeting?
This was my first opportunity to go to an Annual Meeting. I was eagerly anticipating that Meeting even though I knew I wouldn’t know anyone there. The hotel was a fairly good-sized hotel, but it was in a rural area, and the brochures advertised all of the outdoor activities that were available including golf, tennis, and hiking.

Well, I got to the Pocono Mountains, and it rained and it rained and it rained. There was no golf, there was no tennis, and there was no hiking unless you wanted to take an umbrella.

There were maybe 200/300 people there, mostly trademark professionals from the Northeast and Midwest, including the real premier trademark lawyers of the day. We played table tennis and cards in the basement of the hotel. I arrived not knowing a soul but, by the time I left, I knew almost every person there.

Despite the disappointment of the rain and, in fact because of it, the Meeting turned out to be the greatest thing that ever happened to me professionally because I made all these contacts and got to know the major players in trademark law. It was a life-changing experience.

In the 1990s, you served on a Task Force that recommended that the USTA become INTA! How has the Association and the INTA community changed over the years?
When I started practice in a four-person law firm, I had to be pretty much knowledgeable about everything that a client needed in patents, trademarks, and copyrights. However, we grew such that you could specialize in one type of IP.

Over the years, as the trademark practice has grown so much, it’s enabled lawyers to specialize not only in trademark law, but in a particular phase of trademark law, such as domain name disputes, litigation, or searching and prosecution.

Obviously, many trademark lawyers have more than one subspecialty—but if your firm is big enough and your clients are big enough, you may be able to specialize in just one subset of trademark law. That’s been a major change which has been prompted by the growth of the field and by the growth of clients.

Additionally, the change from USTA to INTA was a natural one. At that time, there was an understanding that for many clients, trademark issues were not confined to just one country. Those clients typically had issues not only with U.S. trademark law, but with the trademark law of other countries, so the name change was something that needed to happen.

You’ve been practicing IP law for more than half a century. How has your involvement in INTA influenced your professional development and career, and what excites you about the job today?
Being a part of INTA has been very important to my development as a lawyer. In our firm, many professionals are very active in INTA, and, even if they don’t necessarily go to the meetings, they have all of the advice and information that INTA provides. It’s hard to imagine practicing in this field without the Association.

Almost every day I learn something new. It’s such an exciting field to me—every case is different and every client is different. I’ve acted for clients across the whole spectrum—from big companies to universities to individuals.

What advice do you have for young practitioners who aspire to one day follow in your footsteps and win the President’s Award?
When I was younger, I had some very contentious cases. I became more civilized in my practice as I aged, and I came to realize that by being civil, you can have as good a result, and usually better results, than if you are disagreeable.

I have tried to emphasize civility in the practice with the young people in my firm. To me, this is very important because people, particularly in an association like INTA, don’t want to deal with disagreeable people. They would much rather deal with civilized discussion.

My key advice for young lawyers is that they should get started in organizations like INTA as soon as possible. Joining committees is important, and, whatever you do, you need to show up and be available for meetings, however they’re held.

But it’s not only about showing up, it’s about doing the work. Too often, I see young lawyers padding their resumes with a bunch of committees, but they don’t actually leave any impact. My advice to young lawyers would be to join committees and ensure you contribute.

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

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