“A potentially existential peril”: the barriers facing the next generation of trademark lawyers

  • Trademark expert hits out at unwillingness of firms to adequately train associates
  • Warns that junior lawyers are missing development opportunities due to cost pressures
  • Outlines steps firms, associations and associates can take to combat the problem

In this guest blog, Peter Sloane, chair of the trademark and copyright practice at Leason Ellis and vice-chair of INTA’s Law Firm Committee, warns that the lack of substantive training available for junior lawyers – primarily due to the drive to cut costs – could pose a long-term existential threat to the trademark industry. Importantly, in a bid to avoid a worst-case scenario, he outlines the steps that law firms, industry associations and associates themselves, can take to combat the problem.

Guest analysis:

Almost 25 years have passed since I started out as a summer associate following my second year of law school. I was extremely fortunate to land a position with a small but venerable trademark firm in New York named Nims, Howes, Collison, Hansen & Lackert (Harry Nims had written the seminal treatise on US trademark law before McCarthy on Trademarks was published).

My first day working that summer, I was given a billing pad and sent to the firm’s library, with its worn but comfortable leather chairs, and walls of federal court reporters, to research a legal issue and write a memorandum. Legal research and writing constituted the bulk of what I did over that summer, during my third year of law school (when I worked for the firm on off hours) and for the next two plus years as a full-time associate. Thankfully, this was back in the day when law firms could afford to have their associates hunker down in the library for most of the day to conduct extensive legal research and write lengthy memos and briefs.

The days of junior attorneys learning by reading the trademark canon are long gone. Today, almost all research is conducted electronically and memos to partners are a thing of the past. Partners now want their associates to go online and quickly find the answers to client questions or to draft discreet parts of legal briefs without providing them with the chance to become fully immersed in an issue or to work on a pleading from start to finish. The demand for efficiency is understandable given budget constraints imposed by clients. That clients are arguably more averse to litigation than ever also offers fewer opportunities for associates to research meaty legal issues in depth. This all comes at a cost as associates then lack the opportunity to learn the trademark laws from an immersive and holistic perspective.

Outside the library, there is also the matter of on the ground courtroom experience to consider. I was lucky enough to work for partners who took me with them to hearings in federal court, to discovery depositions, and even to an argument before the Trademark Trial and Appeal Board in Washington DC. These were seminal experiences for me in gaining an understanding of how litigation works in action beyond the dry written pleadings.

After almost three years in trademark litigation, I moved on to another firm as an associate handling US trademark prosecution. The legal research I had done in support of litigation provided me with a foundation upon which to provide clients with advice when it came to trademark clearance and counselling. Unless one knows the law, and the costs and risks of ending up in litigation, it is difficult to provide clients with knowledgeable and practical legal advice. With a background in litigation and a practice in prosecution, I was on my way to developing into a well-rounded trademark attorney.

Like litigation, though, trademark prosecution is under pressure. On one side, corporations are generally resistant to rate increases and some are even taking the work in-house. On the other side, trademark mills are providing rock bottom pricing (along with the service to go with it). This makes it difficult for law firms to invest a sufficient amount of time in training their associates with the skills needed to develop into a sophisticated prosecution practice.

The inability or unwillingness of firms to adequately train associates raises the question of where the next generation of leading trademark lawyers will come from. It behoves law firm partners and the trademark industry in general to confront this potentially existential peril.

Breaking through

Traditionally, there have been a couple of ways to break into trademark practice with a firm. Large firms tend to hire their junior attorneys as summer associates chosen from on campus interviewing at highly regarded law schools. These new associates typically rotate through different practice areas and end up in general practice groups such as litigation or corporate law. Whether such up and coming lawyers end up in trademark practice is usually by happenstance. The other way to gain entry to the field is by joining an IP boutique. The catch there is that, unless there is an ad hoc need for hiring, boutiques usually prefer to hire attorneys with prior experience since it is difficult for them to bear the cost of training. Indeed, some companies now refuse to pay for the work of first and second year associates.

The Benjamin N Cardozo School of Law in New York has one answer to the situation at hand with its Resident Associate Mentor Program (RAMP) program, which provides new graduates with opportunities to work as full-time associates at small and medium-sized law firms for one-year post-graduation. Firms participating in RAMP hire graduates as Resident Associates, at a cost-effective rate. In return, participating employers commit to train and mentor their Resident Associates for one year. The opportunity to employ new lawyers at an affordable cost allows them to invest the time in associate training.

Whether or not associates are hired through such a fellowship program, the challenge remains how to educate them about trademark law so that they know it as well as the current generation of trademark partners, can best serve the firm’s clients, and rise through the firm’s ranks. The issue becomes all the more important to address when one considers that most in-house attorneys are drawn from associates at law firms. It is essential that they have adequate training during their formative years in order to later give sound and nuanced trademark advice to their business clients and fully understand the issues when dealing with outside counsel.

One thing that law firms can do to train and inspire their associates is to get them out of the office more often. With litigation, today’s partners should make a concerted effort to have associates shadow them whether it be at deposition or in court, even if they are unable to pass the cost on to the clients. Better yet, partners should allow associates to argue motions, especially as judges have become more receptive to the practice and have even been known to order it. Providing associates with such opportunities is a fundamentally fair thing to do for their betterment. The enthusiasm it generates within them should pay off in spades as they become more engaged with their work.

As for trademark prosecution, particularly when it comes to international practice, it is as much who you know as what you know. Choosing the right local counsel is often the most important decision one can make in foreign trademark practice. This should work in the favour of firms sending associates to trademark conferences early in their careers. If these associates have no one to meet at those conferences yet, they can attend substantive seminars to learn more about trademark law and practice. As they advance in years, they will find themselves scheduling more and more meetings with local counsel. The connections they make should improve their ability to handle foreign matters and the relationships they develop should facilitate their efforts to bring in and handle domestic matters instructed from other countries. 

The Law Firm Committee of INTA, of which I am vice-chair, has a subcommittee devoted to associate concerns and development. The subcommittee is currently working on projects tackling substantive issues such as practical advice for a trademark prosecution associate like how to deal with an examining attorney, as well as issues of professional development such as how to identify and find a mentor as an associate and how to be a good associate and make partner. The hope is that INTA can provide associates with such educational opportunities to supplement those offered by their firms or to fill in when firms do not provide them.

To be sure, the burden to train associates should not be placed solely at the feet of law firms or industry associations. Associates, too, bear responsibility for putting in the time and effort necessary to develop an understanding of the law. As a practical matter, as much as millennials are not keen on the notion, this sometimes demands working late during the week and on some weekends. It also requires self-motivation whether it be in researching and writing a paper for publication or, although it might not be scintillating reading, boning up on sections of McCarthy on Trademarks or the Trademark Manual of Examining Procedure of the USPTO (or their foreign equivalent for those practicing in other countries).

There are also an increasing number of online resources from which associates can learn the law and its application to practice. Unlike in the past, it is no longer necessary to take a day or even half a day to travel and attend a lecture. Webcasts allow attorneys to learn about discrete topics of law anywhere and anytime. For example, Strafford Publications offers webinars on various trademark topics presented both live and on demand. Recent sessions have included probing topics such as the extraterritorial reach of the US Trademark Act and proving or defeating allegations of fraud in US trademark practice.

The above highlights just some of the issues and potential solutions in finding and cultivating a new generation of remarkable trademark lawyers. Ultimately, the concern about where those future trademark lawyers are coming from and whether they are adequately trained may be overwrought. Markets usually have a way of sorting things out and, as we know, every generation since time immemorial has lamented how things have changed from the past.

Unlock unlimited access to all WTR content