Building the in-house team: recruitment challenges

Recruitment can be a frustrating, protracted process. World Trademark Review canvasses in-house experts and consultants for their tips and tricks to improve your hiring

Constructing the dream trademark team is one of the hardest challenges that any department head faces. It requires a careful balancing of myriad different factors, including the current and future prospects of your business. It also involves a significant degree of risk and eats up valuable resources.


Deborah Hampton


Justin Pierce


Anne Gundelfinger

With this in mind, the starting point in any recruitment process is to determine whether it is necessary in the first place. There is one key question to ask, advises Anne Gundelfinger, Swarovski’s vice president of global IP and former Intel vice president of legal and corporate affairs: “Is there enough work to keep a new in-house employee busy long term? In other words, is this a short-term bubble or is this a long-term ongoing business support need?”

This could be a difficult question to answer without a crystal ball. But if you do not attempt to do so, warns Gundelfinger, you could find yourself having to lay someone off a year down the line. If the need is only short term or if it is impossible to predict long-term workload, then spending the extra money on hiring outside counsel may be the most prudent course of action.

“When I’m considering hiring an in-house attorney, I need somebody who will be able to be more effective, provide higher-quality service and be more efficient than outside counsel, because they really know the business,” expands Gundelfinger. “However, if the workload is one that really doesn’t benefit from knowing the business any better than our outside counsel, then I might keep it with that outside counsel, even if it is more expensive, because I retain flexibility.”

Some functions – such as filings and renewals – are not worth the expense of outsourcing to external counsel, suggests Deborah A Hampton, an IP manager with over 30 years of experience hiring internal trademark teams at Fortune 500 corporations. Instead, someone within the team – whether a new hire or an internal appointment – should be trained to handle this more routine work; over a period of time, this will actually yield a net cost saving.

Hampton is passionate about the need for training in practical trademark work, which is why she is a fan of looking internally first and training up as necessary: “I’ve found for a really long time that it is very difficult to find someone to work in-house because a lot of people don’t have the necessary experience. Very few paralegal and law schools teach trademark law or IP law and include the procedural or process parts of related IP roles.”

To seek help or not?

So the decision is made: a new member of personnel is needed and no one internally fits the bill. The hiring process has passed its first significant hurdle. The next major decision is whether to engage a recruitment consultant to assist with the process. The feedback we garnered from those with in-house experience was not wholly positive, to say the least; although a number of recruitment consultants present their perspective in the box-out below.

Justin Pierce, a partner at Venable LLP, has experience of in-house recruitment as the former global head of trademarks and brand protection at Sony Ericsson. He says that when it comes to hiring trademark staff, companies often perceive the use of recruitment consultants as “somewhat wasteful”: “There’s generally a demand for people wanting to work in-house trademark roles, depending on the position. For at least the past 20 years, a steady stream of people working in private practice have been interested in working in an in-house trademark department.” He adds that the hiring company “probably has the best eye” for finding and recognising good candidates, compared to an external consultant.

Gundelfinger would agree, adding that she has “strong feelings” about the use of recruitment consultants. On the positive side, a well-connected recruiter with experience in intellectual property and a solid network in the IP world can be invaluable in finding candidates that a company might not discover itself. However, in 25 years of using recruitment consultants on both sides of the Atlantic, she has found precisely three who match these criteria.

Gundelfinger’s main contention with the use of recruitment companies is their frequent insistence on an ‘exclusive’, meaning that the job must be filled through one particular recruitment consultancy. She will not work with any recruiter that asks for this, because it needlessly limits the search for candidates. This is also the end result if recruiters refuse to put the company name in the job advertisement (in a bid to protect the post from poachers). Again, it is a stipulation that helps the recruiter to the detriment of the client, in large part because the client’s brand is a critical selling point for desirable candidates.

Sourcing the best

With more tools and resources available today than ever before, going down the recruitment path alone is an increasingly viable option. There are hundreds of sources online to find suitable candidates. In fact, points out Gundelfinger, the trademark world has one forum that is widely used by the entire industry: the International Trademark Association (INTA) Job Bank. “I have hired by posting on INTA’s Job Bank for years and have found excellent candidates - highly targeted, highly experienced general all-rounders,” she explains.

Pierce recommends that companies take maximum advantage of something that they all have: their own websites and social media pages. Of course, smaller and even medium-sized companies may need to use other avenues to supplement this. But a job posting on a company’s own platforms is no longer a post in isolation; many major third-party recruitment websites crawl the Internet for job listings and will automatically pick up anything added to a company’s own website or social media pages.

Another strategy which should not be overlooked is sourcing from individual networks. Pierce expands: “I certainly use my own legal or professional network, by asking other attorneys or paralegals who we deal with (depending on the position, of course). If a company is looking for a trademark paralegal, for example, oftentimes the best way to find a suitable candidate is to speak to other trademark paralegals or individuals involved with paralegal associations.”

Successful sourcing should yield numerous résumés and covering letters for perusal. This can be a daunting task, because so many people have the requisite experience and education. Gundelfinger suggests a few questions to ask after reading through a résumé and covering letter: “Is this job vacancy one that the person is ready for and will also find to be a growth opportunity? Does it offer them the next step on their career path that will be motivating for them? Does this person align with the way the company operates and the company’s culture and values?” This final question is a reminder why putting the name of the company on the job ad is crucial; it means that candidates can draft a targeted covering letter.

In Pierce’s view, “the deciding factor to succeed in most in-house roles - and this is applicable beyond trademarks - is the ability to take very difficult situations and give back very practical, not theoretical, advice.” An overlong résumé or covering letter could ring alarm bells that the candidate may struggle to provide concise information and advice.

Beyond suitable experience and qualifications, Pierce says that he often finds international experience or language skills helpful, because of the global nature of trademark work. A facility with an analytical, mathematical or scientific discipline is also welcome: “Someone who can crunch numbers and work with spreadsheets is very useful across the corporate world now. So much of what you do in a corporate role has to be shown as being valuable; so an ability to help with data analytics to show the return on investment linked to trademark activities or portfolio management is an increasingly important asset.”

Another plus sign is activity in the online IP community - whether that be through publications, blogs or postings in related forums. Of course, this will necessitate an online search; and what exactly that should encompass remains moot. Gundelfinger gives her perspective: “I always search for a person’s LinkedIn, because it’s good preparation. It usually doesn’t reveal anything more than what’s already on the résumé, but how someone presents themselves on LinkedIn will tell you certain aspects about that candidate. I don’t look at other social media sites, like Facebook or Twitter, as I think it’s irrelevant. I know that lots of companies have incorporated that as a security check, but I don’t do that as part of preparing for the interview.”

Experience: in-house versus private practice?

Perhaps the biggest consideration when wading through résumés is weighing up the pros and cons of the two main career paths in the profession: in-house and private practice. In a perfect world, suggests Gundelfinger, the ideal candidate would have both types of experience: “I think working for a top-notch law firm for at least a few years gets you excellent training and you get to tackle problems that really exercise your mind. Being in an in-house role is as much a management task and a relationship task as it is a pure legal task. An understanding of how a business works and an ability to communicate effectively - whether it’s in training, presentations or one-on-one counselling sessions - are absolutely critical, and they are not always developed in associates at law firms.”

In Hampton’s view, candidates who have worked purely in-house tend to be “comfortable with their decision-making responsibilities” and “adjust much easier and more quickly to the politics of a business”. However, they may previously have worked in a company with a very different structure, where trademark functions were performed in a very specific way. Therefore, she advises, you need to ensure that candidates with extensive in-house experience are flexible in their approach.

Those with a law firm background will obviously be well versed in the law and statutes (particularly case law) - which can be both a blessing and a curse. “You may need to teach them to write less and more concisely, with less legal language,” explains Hampton. “They need to change their entire mindset around communication, because people in a business don’t want 10-page briefs for every question - they often just want a quick yes, no or maybe by email. The key is making sure they can communicate both written and orally in a short, straight and to-the-point way from a very practical standpoint.”

Gundelfinger says that when deciding what kind of experience is optimal, you should balance candidates’ ability to do the fundamentals with what they can offer beyond that: “As you build an in-house legal department, one thing you should look for is not simply execution – such as the drafting of contracts or the filing of the trademarks - but somebody who can manage a wide range of activities and allocate resources across those different activities.”

The secret weapon

Once the résumés and covering letter have been winnowed down, the usual next step is an interview, whether by telephone or in-person. However, there is a stage in between that Gundelfinger discovered a few years ago and has since “fallen in love with”: a written questionnaire.

She describes the first time she encountered this tactic: “I was looking for a job and a recruiter contacted me about an opening she had. The first thing the recruiter did was send me a long questionnaire, and initially I couldn’t believe it - this was a very senior position and they wanted me to fill out a questionnaire! But I agreed, as I figured that blowing off the questionnaire would look bad. As I went through the questionnaire, I realised what an amazing technique it was for evaluating all kinds of things.”

A questionnaire allows candidates to demonstrate a number of specific job attributes. Questions tend to be objective – examples might include the following:

  • What is the largest trademark portfolio you have managed?
  • What skills do you have in trademark licensing?
  • Have you ever dealt with brand extension licences?

In addition to the information garnered from the answers, a questionnaire can reveal more subtle attributes of candidates, including their commitment and attitude, as well as their writing and communication skills. As Gundelfinger notes: “I’ve had questionnaires come back with a paragraph-long answer for each question and I’ve had questionnaires with literally a page for each question (both of which are not necessarily the best strategy). That’s what’s so interesting - you see whole sides of a person that would be very hard to see in an interview.”

Questionnaires also tend to get sent to a “few more” people than would be offered an interview. This allows for the selection of “wildcard” candidates who might not look exactly right on paper, but may have something different or interesting to offer. Finally, the completed questionnaires can be circulated to the recruitment team and used to inform the interview process.

The recruiter’s perspective

The explosion of online job resources has made it increasingly difficult to justify the expense of using recruitment consultants. World Trademark Review asked leaders in the field on both sides of the Atlantic to outline the advantages.

For Charles A Volkert, executive director at US-based recruiter Robert Half Legal, the reason is simple: “In the legal field, time is money.”

“Legal organisations have become more exacting in the expertise they require and, as a result, finding legal specialists with sought-after skills has become more difficult and time-consuming,” he elaborates. “More than half (56%) of the lawyers surveyed recently by our company cited at least some challenge in finding skilled legal professionals.”

He adds that employers, especially in the legal profession, “can’t afford to make any recruiting mistakes”. It may be easy nowadays to put up a job ad and attract applications, but he claims it is recruiters who have the necessary experience to quickly identify the best candidates. Furthermore, specialised legal recruitment agencies can help companies to determine the “optimal staffing mix”, based on current and future workloads and particular requirements.

For Lisa Kelly, a consultant at Sacco Mann in the United Kingdom, the major advantage of using recruitment consultants is that they are in contact with people who are not actively looking for a new job. “We regularly talk to people who are not perusing job boards, but who have instructed us on what might appeal and what they would change if they could. Often, the best candidates are already in good jobs and are therefore less likely to be reviewing the job boards to see an ad and then apply.”

She notes further that many great candidates may have poor résumés that could mean they get overlooked in the recruitment process. However, because recruiters often speak to every candidate, they can identify these “gems” who might otherwise slip through the net. They can also see through those candidates who might appear brilliant on paper, but may not be appropriate for the particular role. “A recruitment campaign can produce a myriad of candidates, but it is important that we recognise that the ‘best’ candidate is not always the most appropriate candidate and it is crucial that everyone’s expectations can be managed,” she explains. “For example, a candidate with a plethora of qualifications, glittering accolades and a succession of quick promotions is undeniably impressive; but will this role be able to live up to their ambitions? We can present candidates to firms with appropriate softer skills and personality traits and whose mid and long-term motivations/aspirations fit in with what the business can offer.”

Working with a recruitment consultant is a two-way process and there are some key tips to improve this dialogue. Volkert suggests that the key is to be specific and flexible, and clear about which aspects of the hiring process you want the recruiter to handle. Recruitment companies offer different services - including face-to-face interviews, technical skills evaluations, reference checks and soft skills assessments - and it is down to the client to choose which it needs.

In fact, he continues, some recruiters work full time on a particular recruitment process, meaning that the company can offload all the effort – and risk – before hiring: “You can get to know the employee before extending an offer for full-time employment, which helps you avoid costly hiring mistakes. Also, good recruiters usually offer a replacement guarantee if, after a certain period of time, you decide that the new employee isn’t the right match for the position or your organisation.”

Ultimately, advises Kelly, “Honesty is the best policy - the more information you can give, the better.” She adds: “You can’t expect your consultant to do their job properly and make your vacancy a priority if they have only the bare minimum to work with. That’s when you end up with wildly inappropriate CVs, mismatched expectations and the whole process taking far longer than it needs to.”

At the end of the day, it is in the interests of all recruiters to fill a vacancy with the right person; after all, it is how they get paid. With tighter budgets and more resources available online, there needs to be solid justification for engaging a recruiter when you decide to hire someone. But this means that recruitment consultants have had to pick up their game - and it may be worth taking advantage of that.

The interview

This last stage of the recruitment process requires multiple staff members to give up a significant portion of their usual working week - possibly more. The company will often be hiring because of an increased or heavy workload, and the interview process puts further demands on these already stretched resources.

There is often a temptation to bring many people into the interview room on the assumption that more opinions will assist in reaching a final decision. However, Gundelfinger would generally advise a maximum of two interviewers; any more can make things tough for the candidates, as well as soaking up valuable resources that could be better deployed elsewhere. But she would also recommend a group lunch with multiple candidates and team members, so that both sides of the equation can feel each other out.

For Hampton, by contrast, three is the magic number: the hiring manager, one other person from the trademark or legal team and someone from a department that liaises closely with the trademark team. “Each of those perspectives is key,” she suggests.

It is also important that interviewers do not focus exclusively on the company’s needs, continues Hampton. Every interview should end with a good sense of what the candidate wants to achieve and whether the company can meet those goals. This involves asking candidates about their hopes for the future and what they are looking for in a job. The interview should be a two-way conversation, to try to tease out what would work mutually for both parties.

The ideal in-house candidate

We asked two experienced IP recruitment consultants about what they look for in the perfect in-house trademark job candidate.

Charles A Volkert, executive director, Robert Half Legal:

The most marketable candidates have a minimum of four years’ relevant legal experience, strong academic credentials, a JD from an American Bar Association-accredited law school and a state bar membership. Depending on the position, clients also seek trademark clearance, enforcement, prosecution, dispute management and settlement negotiation experience.

In today’s fast-paced business environment, candidates must be organised, detail-oriented, yet able to handle multiple tasks and work well under pressure. Also, in-house lawyers are working more within cross-functional team environments, so candidates should be skilled negotiators and strong communicators (both oral and written skills). Analytical skills, business acumen, sound judgement and negotiation abilities are also needed.

Lisa Kelly, consultant, Sacco Mann:

To work successfully in-house, you need to be able to appreciate your audience and understand how your expertise affects the bigger picture, which ultimately is what you are being employed to do. Strong people and communication skills are crucial, and it’s important that someone has the ability and desire to work closely with others. We look for candidates who can make decisions and offer conviction to the advice they are giving. Pragmatism is important, as is being results driven, with a positive, make-things-happen attitude. Turn-offs for an in-house role include being overly technical (ie, not appreciating the wider commercial implications) and being unable to listen – it’s not always about what you know, it’s about how it’s applied.

One well-known mistake that can hinder the interview process is to ask leading questions. An example might be: “I am looking for somebody who knows how to do X; do you know how to do X?” To combat this, Gundelfinger espouses a technique called ‘behavioural interviewing’, which focuses on open-ended questions that ask specifically for real-life examples. The goal is to reduce the amount of hypotheticals to arrive at a clear idea of a candidate’s current competencies.

Of course, asking about hypothetical situations can allow candidates who lack in-house experience to shine. In such cases the best strategy is to ensure that any such hypotheticals have no clear answer, explains Gundelfinger: “You want candidates to walk through their thinking about the legal issue. It should not be phrased as, ‘Would you view this as a trademark infringement?’, but rather, ‘Would you view this as a trademark infringement or not, and why? And depending on your answer, what would you do about it?’ The best candidates view the question from all angles and explain their thought process. The worst candidates rush to a particular conclusion.”

The interview should be structured so that when it comes to decision time, all potential red flags are already out in the open. This requires interviewers to ask questions that can reveal possible flaws in a candidate. These may not always be obvious; for example, if you do not ask about the thought process behind a particular legal or managerial problem, you may miss that a candidate is slapdash in his or her analysis; while leading questions could mean missing a candidate’s attitude problem or lack of independent thought.

Another red flag, suggests Pierce, is an overly aggressive approach to enforcement: “Where candidates answer questions about a third-party trademark conflict, it should be a worry if the first response is always litigation. The practical answer when working in-house is to look for leverage and ways to negotiate - an attempt to solve something creatively out of court. Litigation may be the right way to go; but in a recruitment setting, you should seek candidates who think outside the box.”

Ultimately, when it comes to making that final decision, Hampton’s advice is simple: follow your instincts. “A candidate can look really great on paper and then do really well in interviews, and it could seem like an easy decision,” she says. “However, you can quickly find that you are mutually water and oil. The key is getting multiple viewpoints; then it all comes down to gut instinct and intuition. You can find someone who has perfect capabilities, but you just don’t click - and if you get that feeling during the interview, stick with it, don’t ignore it.”

The final thing to bear in mind is that there is no one-size-fits-all solution to recruitment; what may work well for building one trademark team may not work for another. It is all about testing out different methods and finding out what works. Recruitment may be an imperfect art, but following this practical advice should set every hiring process on the path to success.

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