Trevor Little

The International Trademark Association (INTA) has launched a two-year pro bono pilot programme, designed to offer free legal support to low-income individuals and non-profit organisations that would otherwise not benefit from trademark-related services. With the Pro Bono Trademark Clearinghouse now open, the key to success will be reaching those currently outside the INTA community.

The clearinghouse has been created to connect eligible individuals and non-profits with attorneys looking for pro bono opportunities. In the release announcing the pilot, INTA CEO Etienne Sanz de Acedo explained: “Entrepreneurs and small business owners focused on growing their businesses often overlook the role of trademark protection in those early stages of business development. The same can be said about non-profits focused on their causes. The clearinghouse provides INTA with an opportunity to elevate the status of trademarks within the business and non-profit communities.”

Richard B Biagi, member of Neal & McDevitt and chair of INTA’s Pro Bono Committee, told World Trademark Review that the clearinghouse has long been an ambition of the committee: “The pro bono committee came about around six years ago as part of presidential task force. One of things we accomplished in the early years was to put together a toolkit for practitioners around the globe. The whole time we were working on that we kept coming back to a particular question: How the heck do you find clients? Trademark work is so different to, say, immigration or domestic violence work. Those clients - unfortunately - are quite plentiful and easy to find, and there are organisations that will connect lawyers with them. We all said ‘wouldn’t it be great if INTA could use its position to help connect needy people with willing practitioners around the world’. We kicked it around for a long time because there are a lot of issues related to INTA playing that role, as well as logistical challenges. Luckily, though, there was a lot of enthusiasm for the idea, amongst the committee and INTA leadership.”

With those challenges overcome, the association is currently accepting applications from potential clients and, once received, these are assessed to ensure that they meet the eligibility requirement. Where this is the case and a match is subsequently made with an attorney able to represent them, an attorney/client relationship is established. While the committee may monitor progress at a high level, it will have no day-to-day contact and no responsibility for the case.

The pilot is being conducted in Germany and the United States, with a view to then rolling it out worldwide. Asked why these countries were selected, Biagi explained that “the US was partly selected due to committee make-up – a lot of the committee folk are US-based” (participation in the pilot is limited to members of the committee), while Germany was chosen because INTA felt it important to test the concept in a non-English-speaking country: “Germany kept coming up as the most logical place, and it is a country where pro bono is embraced.”

This controlled launch will then be evaluated before it goes global, Biagi observing: “All of us on the committee want to make sure the set-up is properly stress-tested and any kinks ironed out. After all, it’s one thing to roll it out in the US and Germany, quite another to roll it out worldwide. If in two years’ time we can say we had clients come thought the door, that we have some metrics and that the clients were properly serviced, that will be success. It’s not about whether they have success in their cases – that is fact-based and out of our hands – but to know that we were able to hook someone who came to INTA up with a lawyer that could take the case on and see it through to a conclusion, and that everyone was happy with the process.”

At that point a rollout would receive the go-ahead. As to the handling of an expansion, Biagi observes: “It won’t be a case of flipping a switch overnight. I suspect that next round of leadership will look at the toolkit and identify markets that embrace pro bono. Then maybe handle the rollout on a regional basis. But right now we are laser-focused on making the pilot a success.”

For INTA the programme appears to serve three key purposes: it connects individuals with much-needed professional support, it helps INTA spread the trademark message beyond its membership and - in the words of Debevoise & Plimpton’s Megan Bannigan (chair of the pro bono committee’s clearinghouse subcommittee) – provides members “with the opportunity to enjoy the benefits of pro bono legal work”.

Ultimate success, however, will be dependent on reaching those that need trademark legal services but currently do not know where to turn or simply can’t afford it. Biagi concurs, stating: “One of my big bandwagon issues is that – while we have spent a great deal of time focusing on the structure of the clearinghouse and how it will work, which we do need to do – if we don’t have communication to the wider world that it exists we won’t have a client and it will all be for naught. So we have been focusing on the public relations side of things. We have a big microphone in INTA, and they are helping through press releases and outreach initiatives. We will also be reaching out to other pro bono organisations and those that serve non-profits to tell them this is now available for the people they serve.”

PTO support is another tool that could be utilised. Biagi expands: “I am personally in conversations with USPTO officials to hopefully foster a relationship between the committee and the office. On the patent side Congress mandated that the PTO assist in securing pro bono services for applicants in particular situations. So it has a department that administers a pro bono programme, but it is limited to patents. So I am talking to them about whether, in the absence a congressional mandate, we could get some assistance, even if it is just them being a communication device for us.”

Such communication will be key. To that end, those interested in learning more about the offering or applying for assistance, can do so here

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