9 Sep
2020

Michael J Leonard

Fox Rothschild LLP

What led you to a career in intellectual property and what advice would you give anyone considering a similar route?

After university, my first full-time position was as a temporary legal assistant at a boutique IP firm. I soon found that trademarks and branding were very interesting to me, as I enjoyed the practical business aspects of the field. I worked as a paralegal for more than five years before deciding that it was time to take the next step to become an attorney. My advice to anyone considering a career in trademarks is to work in the field first and make sure that the practice holds your interest and curiosity.

Drawing on your experience before the USPTO and TTAB, what are the key skills that a US trademark litigator should possess and how can these be honed?

My success at the USPTO and TTAB has been based on a strong desire to provide practical and cost-effective advice and results because, if I were a client, I would expect my counsel to provide just that. As 90% of US opposition and cancellation proceedings settle before judgment, I believe it is in the client’s best interest to retain counsel that is willing to pursue settlement early, rather than spending time and effort in merely posturing.

You manage the global trademark portfolios of multiple clients in a variety of industries. How have IP owners’ priorities changed in recent years and how has your practice adapted to this?

IP owners now require creative and cost-effective representation – there is no room for spending time and money to learn about a business or technology. Fortunately, the Internet enables attorneys to quickly and easily become knowledgeable in the basic background of a client or potential client’s business. Thus, before taking on any new client, it is essential to take the time and effort to research their business and particular needs.

You have experience representing clients in internet and domain name disputes, including via UDRP proceedings before the National Arbitration Forum. With ICANN scheduled to review the UDRP this year, is there anything that you would like to change about the way that such disputes are decided?

ICANN must be careful in balancing the needs of brand owners and non-commercial entities/holders and academics who do not appreciate the importance of brands and merely seek to establish an Internet without control or respect for the rights of IP owners. The UDRP has offered an effective cross-border dispute resolution process to protect IP owners from bad-faith domain name registrations. These rules are valuable and necessary to ensure that not only are brand owners protected, but consumers are as well. Thus, it is essential for law enforcement, IP owners and others to maintain access to full and accurate registrant data in order to have a means to pursue claims against the bad-faith registration and use of domain names.

What key trends do you expect to see shaping US and global IP activity in the next five years?

IP owners of all sizes are increasingly seeking cost-effective and responsive representation. Justifiably, there is decreasing tolerance among IP owners to pay for their counsel to undertake simple tasks, such as reviewing and monitoring dockets or billing fees for the ‘attention to files’. On the other hand, while many brand owners may seek increasingly flat fees, it is encouraging to see that many IP owners still value the need for creative and strategic advice. The challenge for practitioners is to balance the two while ensuring that IP owners continue to secure the necessary level of protection that enables them to protect and grow their brands.

Michael J Leonard

Partner
[email protected]

Michael J Leonard is a partner in the IP department of Fox Rothschild LLP. Clients consistently rely on his strategic counsel on the availability of trademarks and the management and enforcement of national and global trademark portfolios. Mr Leonard also possesses extensive experience in the prosecution, defence and settlement of opposition and cancellation proceedings and trademark infringement actions. His education in Europe informs his unique understanding of the international needs of his clients.

Fox Rothschild LLP

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Pittsburgh PA 15219

United States

Tel +1 412 391 2486

Fax +1 412 391 6984

Web https://www.foxrothschild.com/