How to Work with In-House Trademark Counsel

How to Work with In-House Trademark Counsel

Trademark professionals, like lawyers in other fields, need to develop and maintain business to progress in their careers. Very often, it is in-house counsel who evaluate the performance of outside trademark professionals and determine whether to engage new firms and trademark professionals. With this in mind, we asked several in-house counsel at different companies to respond to a series of questions in order to provide some insight into how they use, select and evaluate outside firms and trademark professionals. Although some of our respondents asked that their comments be kept anonymous in accordance with company policy, the responses we received were informative and enlightening, and they should be of valuable assistance in developing and maintaining good trademark professional and client relationships.

Use of Outside Professionals

Reflecting what appears to be a common desire among companies, a representative of Rubbermaid stated: “We prefer to handle as much as possible in-house to save money. We send out a project basically only when we don’t have the resources in-house to handle the project.” One respondent of a large international consumer products company who wished to remain anonymous explained that there are clear benefits to having individuals in-house and dedicated to a single client who handle matters whenever possible.

Other companies have identified specific projects that they consider best suited for outside counsel. Tiki Dare (Sun Microsystems) explained: “We use U.S. coordinating counsel as our agent for U.S. prosecution, international prosecution and most of our dispute work. We also use outside counsel for some domain name work and clearance projects. We use a non-attorney outside firm for renewals. We believe this outsourcing model gives us the right balance of close, effective business partnering by a small team internally, expert outside counsel where needed and cost efficiencies.” Even companies that seek to do as much work in-house as possible may outsource such things as clearance and prosecution matters when necessary owing to limited resources.

Among the counsel responding to our questions, there appears to be a consensus that outside counsel should handle litigation. As Rob Doerfler (SVP Worldwide) explained, “I simply do not have the time or resources to follow each litigation matter.” Josh Burke (General Mills) concurred, advising that inter partes proceedings, litigation and non-U.S. prosecution were all handled by outside counsel.


Considerations in Selecting Outside Counsel

When asked what they look for when selecting outside counsel, different respondents cited different qualities, such as “experience,” “practical” and “having depth.” However, they all mentioned cost. And, depending on the industry, in-house counsel may even take into account potential outside counsel’s non-legal experiences.

For example, Martha Cecil-Few (Hershey) said that, especially for non-U.S. counsel, she may consider whether the potential counsel “actually go shopping.” Specifically, she will want to know whether they can identify infringing products or “identify products being sold by Hershey locally [and] bearing trademarks that our marketing representatives have not yet told us about.” Mr. Doerfler readily agreed: “I always appreciate when outside counsel advises me of counterfeit goods or questionable trademark use in the local market.” Michel Megelas (Blue Mountain Wallcoverings) said that his company looks at “the competence of the attorneys we are dealing with, not only from a legal perspective but from a business perspective as well.”

Mr. Doerfler explained: “While costs are incredibly important in these considerations, I am more often concerned by the ability of outside counsel to discern our needs and to CLEARLY communicate our position and options.” He acknowledged, however, that cost remains an important factor: “I will often look for midlevel associates and midsize firms that will provide me excellent legal support without the large firm costs.” An even more important consideration, Ms. Cecil-Few reasoned, was value. “If an expensive partner can give an answer in 15 minutes, while it would take a less expensive attorney an hour to provide the same answer, we would rather hire the more expensive partner.” Mr. Burke viewed quality of services as coming first, cost second. “[C]ost is not the deciding factor, but it is important. If someone charges a premium rate, we expect phenomenal service.”

Joe Quigley and Kevin Brown (Nike) spoke very favorably about being able to leverage outside counsel’s technology, such as an extranet that allows for global access. This makes it much easier to understand the status of the company’s marks. The receipt of timely and accurate information is very important in ensuring quick enforcement—for example, in dealing with counterfeit goods. Mr. Quigley and Mr. Brown were also of the view that having a good relationship took precedence over cost, though they acknowledged that they did like to use smaller firms that were good but less expensive.

Many respondents described strategies that involve building strong relationships with multiple firms. For example, while Rubbermaid prefers to have one major firm in each country that handles the bulk of the work in that jurisdiction, it also likes to have one or two secondary firms in case there is a conflict or a second opinion is needed. Ms. Cecil-Few said: “We prefer to work primarily with one firm in one country with respect to one type of legal matter. However, we also like to have a relationship built with other firms in case there is a conflict of interest with the first. We may also hire additional firms if we are looking for different areas of expertise.” An anonymous respondent from a U.S.-based company said his preference was to spread work among three U.S. firms, adding, “It keeps everyone on his or her toes.”


Marketing to In-House Counsel

We asked our respondents whether they mind when outside counsel with whom they have not worked ask to be considered for future projects. Ms. Dare said that, when searching for new counsel, “I prefer to initiate contact myself and will use my professional network to identify outside counsel and other vendors if I have new needs.” Mr. Doerfler was even more frank: “Any unsolicited brochures or marketing materials are thrown out/deleted without review.”

When a firm is looking for new counsel, INTA can be a helpful resource. Mr. Doerfler said he uses the Association’s Membership Directory to identify potential outside counsel and takes advantage of the opportunity to meet and speak with them at INTA events. Mr. Megelas implored potential counsel who were taking the trouble to introduce themselves to be prepared. Specifically, he recommended that a trademark professional offering his or her services “do a bit of research and present something that will…have some tangible results for our company.”

Several of our respondents stated categorically that they do not like to be approached by outside counsel with whom they have not previously met. “I mind being approached,” said Mr. Burke. “I meet new lawyers regularly through INTA and otherwise, and prefer to contact them if and when I’m looking for new counsel.” Mr. Brown was even more emphatic. “I HATE being approached by unsolicited outside counsel. I don’t like being hustled like a streetwalker at conferences—this drives me crazy.” However, one of our anonymous respondents conceded that he did not mind being approached by new counsel.


Firm Versus Individual Reputation and Ability

Most of our respondents regarded the reputation of the attorney doing the work as being more important than the reputation of the firm. Mr. Megelas allowed that “while under certain circumstances the reputation of the firm may be considered, the overriding factor will always be the reputation and competence of the actual lawyers involved.” At Nike, the actual counsel involved is the only determination. As Mr. Brown put it, “We want the lawyer, not the name on the door.” Mr. Burke of General Mills also focuses on actual counsel. “Reputation of a firm doesn’t win a case for me.”


Performing the Work

When considering the specific experience of a particular attorney, in-house counsel seem to be most comfortable initially working with a partner-level lawyer who can see the big picture. Ms. Dare likes to work with someone “who is comfortable thinking creatively about accomplishing a practical business result.” At some point, Ms. Cecil-Few wants to see the partner “begin passing that work along to less-experienced attorneys whom he closely supervises and educates.” Mr. Doerfler elaborated on that point: “If I see a seasoned attorney handling perfunctory legal operations, it’s time to move the practice.” For Mr. Megelas, there is a distinction between experience and competence: “‘Less experienced’ does not translate into ‘less competent’; therefore, I encourage the use of associates and paralegals so long as the senior counsel on file plays a supervisory role.” Nike’s counsel expressed a particular preference for working with an experienced paralegal rather than a third-year associate.

We asked our respondents whether litigation experience or mediation experience was more important when selecting outside counsel. Most of the respondents who had a preference considered litigation experience more important. Mr. Brown pointed out that mediation experience is relevant only in English-speaking countries and that Nike has in-house people who handle mediation. “Nike looks for counsel that can get it done—someone who can solve the problem legally.”


Billing Preferences

The prospect of flat-fee billing seemed to appeal to all of our respondents, although their experiences with it vary. Ms. Cecil-Few expressed a desire to use flat-fee arrangements for package review. Jeffrey Michel (WMS Gaming) was also open to the idea; “I have only paid hourly for litigation,” he said, “but I would welcome alternatives.” Mr. Doerfler, however, told us that “for U.S. and U.K. counsel, I prefer hourly, because the overall rates are hyperinflated and I don’t need to be charged premiums for perfunctory work—which I find insulting.”

All the respondents said that they expect some services to be provided by their outside counsel without charge, to show counsel’s commitment. For example, Ms. Dare expects outside counsel to “provide occasional training at internal meetings.” Our respondents from Rubbermaid, Nike, Hershey and SVP Worldwide expect counsel not to charge for “miscellaneous” advice given in short phone conversations or email exchanges. Mr. Megelas did not want to be charged for file transfers, and Nike’s counsel very much appreciated having occasional visits from outside counsel without charge.

Availability and Responsiveness

Our respondents expressed a respect for the “free time” of their outside counsel. Ms. Cecil-Few, for example, stated that she would use out-of-office contact information only in “emergency situations.” However, the respondents also desire a level of commitment from outside counsel that ensures they will be available when the situation warrants it. Mr. Megelas expressed it this way: “If given prior notice of potential emergencies, [outside counsel] should be reachable.” Mr. Brown concurred: “I want to know how to get a hold of counsel if I have an emergency—if privacy is too guarded, then I will look elsewhere.”


Communicating with In-House Counsel

When matters such as office actions are to be reported to in-house counsel, Ms. Dare said the report should be sent within a day or two and should include an analysis of the concerns raised by the examiner. The respondent from Rubbermaid and Mr. Megelas from Blue Mountain Wallcoverings expressed no specific expectation regarding the time within which to receive an office action report, but Mr. Megelas said that he did expect the report to include an analysis of the office action, while Rubbermaid does not expect such an analysis in the initial report. Similarly, when U.S. counsel is overseeing the work of counsel in other jurisdictions, Ms. Dare said she expects U.S. counsel to review and evaluate the analysis of the non-U.S. counsel, whereas other respondents indicated that they do not want U.S. counsel to undertake review and evaluation of the foreign counsel’s analysis.

When outside counsel corresponds with in-house counsel, it is important for outside counsel to have an understanding for the in-house counsel’s preferences with regard to the formality of the correspondence. While all of our respondents said they preferred practical rather than academic advice, there was some disagreement about how they wanted that advice delivered.

For example, Mr. Megelas desires more formal communication initially, to provide context for the issue, with, shortly afterward, follow-up correspondence that is less formal and more directly to the point. Ms. Dare likes to see “an email (no attachments) with a one- or two-sentence summary of the next step or decision point, the deadline and the recommendation.” Further background can then be provided below in the same correspondence “if it hasn’t been discussed recently and won’t be fresh in my mind.” A similar perspective was described well by Ms. Cecil-Few: “I prefer the least formal communication possible that will allow me to be up to speed (know all the background facts without having to search for prior correspondence) immediately upon reading the new communication. If that requires some background, then background is appropriate. However, if we have been in communication about that matter recently, then I don’t need to be reminded about the background.”

Our Rubbermaid respondent and Mr. Megelas said that informal communication that gets directly to the point is always preferred. As Mr. Megelas put it, “I do not need to spend money for a pretty letter.”

Mr. Doerfler concurred with that assessment. “I like my counsel to send me efficient status reports and clear, specific bullet points requiring my feedback,” he said. Mr. Burke likewise indicated that “short is good. Although I still like knowing the rationale for any particular suggestion, I’m not interested in funding a law review article.” Nike’s counsel also voiced a preference for brevity, saying they want to be advised what to do and why, but in two paragraphs maximum. “If I want a written opinion, I will ask for it,” Mr. Brown said. “I don’t need a fully researched legal opinion on everything, and I don’t want to pay for it if I have not asked for it.”

When recalling her best experience with outside counsel, Ms. Dare described a situation where working with outside counsel was “like working with a smarter clone of myself.” The attorneys “could usually anticipate my next question, respond nimbly and succinctly, and stay focused on our shared, pragmatic business goal.” There was in addition a level of trust that allowed her and the outside counsel to “readily admit and take responsibility for our mistakes and quickly move to correction.” Ms. Dare acknowledged that “[the] legal culture is intolerant of mistakes and often unforgiving, and I prize business partners who can manage this gracefully.”

Similarly, Ms. Cecil-Few described her best experience working with outside counsel as one in which, “through a common knowledge of our trademark portfolio and Hershey’s policies, we have come to think alike.” In particular, she appreciates outside counsel who take the initiative and copy her on their correspondence with others in her organization when she has given counsel permission to speak directly to the client: “I appreciate both being copied on all correspondence and having specific matters brought to my attention (counsel to counsel, without the client) when necessary.”

When asked about the need for multiple reminders about the need for instructions for upcoming due dates, Mr. Megelas said: “Reminders should continue to be sent until instructions are received. If [there has been] no response from in-house, I would expect a phone call as a last-ditch effort.” Our respondents all said that they expect to get reminders and follow-ups from outside counsel regarding upcoming deadlines.


What Annoys In-House Counsel

We asked our respondents, “What bugs you the most about outside counsel?” The responses were varied.

Ms. Cecil-Few cited correspondence that asks for a response relating to past correspondence but does not attach that correspondence. “I don’t have the time to go through hundreds of emails or files looking for that piece of electronic or hard-copy paper,” she said. Mr. Doerfler disliked incoherent communications. Both Mr. Megelas and our respondent from Rubbermaid wanted their outside counsel to provide unequivocal advice.

When asked what bothered her the most where outside counsel were concerned, Ms. Dare cited a lack of responsiveness. She and the other respondents all said that they expect responses to email messages or voice messages within one day. However, the respondent from Rubbermaid pointed out that the initial response may be merely an acknowledgment that the message has been received; “how quickly they respond to me substantively depends on the circumstances.”

All of the respondents were unanimous in their disdain for overstaffing of cases. “I hate seeing a new name for the first time when I get a bill,” commented Josh Burke. Mr. Brown put it another way: “Do not over-lawyer a file.”

Mr. Brown also noted that Nike does not like to be “bombarded” with constant warnings about risk notwithstanding the company’s clear instructions. Equally disliked was any sort of haughty attitude by outside counsel. “We look for creative solutions—pigheadedness is not appreciated,” he said. Mr. Megelas very much agreed with that view, noting that he did not like “being talked down to by outside counsel who still believe in the outdated stereotype that in-house counsel are second-rate attorneys.”

On a more practical note, Nike’s counsel hate the wasteful duplication of having the same piece of correspondence sent by fax, by email and by regular mail. Late responses are also very irritating, especially when outside counsel are very prompt in sending invoices.

The responses that we received provide helpful guidance for standard practices to be employed by outside counsel when dealing with in-house counsel. However, they also highlight that particular circumstances and personal preference may dictate what practices are employed. Therefore, it is best for all involved to discuss these issues and establish clear expectations. In responding to the question about what bugs him most about outside counsel, one anonymous respondent revealed that that he gets irritated most by outside counsel who “don’t even ask the questions about how to communicate with me, and what my expectations are.”

How to Work with In-House Trademark Counsel: A Snapshot

The following is a snapshot of many of the things in-house counsel consider when dealing with outside counsel.

Use of Outside Professionals

  • Mostly used for prosecution outside company’s jurisdiction and for inter partes proceedings and litigation

Considerations in Selecting Outside Counsel 

  • Experience and pragmatism
  • Quality first, but cost an important second factor
  • Timely (within 24 hours), succinct, clear and creative responses
  • Effective use of technologies
  • In-depth understanding of company’s business and goals
  • Development of strong relationship

Marketing to In-House Counsel

  • Unsolicited approaches, brochures and marketing materials not effective, and may in fact have the opposite effect of what was intended
  • INTA is a helpful resource
  • Be prepared by becoming aware of company’s business and goals
  • Provide tangible suggestions

Firm Versus Individual Reputation and Ability

  • Reputation and competence of professionals involved are of paramount importance
  • Reputation of firm is a secondary consideration

Performing the Work

  • Senior, experienced counsel should oversee and supervise work
  • More routine work should be handled by qualified and supervised but less expensive personnel

Billing Preferences

  • While flat-fee billing has its appeal, hourly rates for litigation are more common
  • Simple exchanges and some routine administrative services are expected to be provided without charge
  • Occasional visits and internal training sessions without charge are appreciated


  • In the case of urgent matters, outside counsel is expected to be available as needed


  • Initial response expected within 24 hours
  • Response time also depends on circumstances

Communicating with In-House Counsel

  • Expectation of analysis of office actions should be confirmed with in-house counsel
  • Practical advice preferred over academic advice
  • Be succinct and clear but do provide some context
  • Informal is preferred to formal
  • Formal opinions should be provided only when requested by in-house counsel
  • Where deadlines are involved, reminder and follow-up letters are welcomed

What Annoys In-House Counsel

  • Do not overstaff or overlawyer cases
  • Overcharging will not be tolerated
  • Include prior correspondence and other materials when relevant and warranted
  • Be clear and concise
  • Be respectful of in-house counsel’s ability and time
  • Arrogance is not appreciated
  • Avoid duplication and wasteful use of time and resources
  • Ask questions to establish expectations

By Michael D. Andrews, Andrews Robichaud, Ottawa, Ontario, Canada, and James A. Dimitrijevs, Baker Hostetler, Cleveland, Ohio, USA. Both are
members of the INTA Bulletin Features—Policy & Practice Subcommittee



Bangladesh Skill Development Institute (BSDI)

Comments are closed.