2 Sep
2019

"Well-rounded, passionate lawyers make better advocates"

Venable LLP

How have you developed a 360-degree view on IP protection?

For one of my first jobs, I worked in the copy room at my father’s IP boutique firm. Trademark lawyers were under-represented, but I got a foundational sense of intellectual property, literally from the ground floor up.

At Venable, I represented two mobile phone companies on a global basis. The first company allowed me to work closely with a client contact who had an extensive background in all areas of intellectual property, including anti-counterfeiting and e-commerce platform enforcement. When he came back to Venable, we represented the second company in the same broad way.

Meanwhile, I was building one of the largest non-profit trademark practices in the United States. My clients confront a different range of issues but also seek trademark lawyers with a broad view. My team comprises practitioners with significant prior experience (eg, USPTO examiners). The combination of my unique client base and talented colleagues helped me to develop a 360-degree view on IP protection.

How have client demands changed during your career?

Working at my father’s firm, I watched patent lawyers attempt trademark work and bill off the typical fee schedule; full-time trademark lawyers were not yet common. When I started practising, clients wanted trademark lawyers but would happily wait a month for global search results. Later, I noticed that many firms were adopting a model where a partner would set the strategy to be executed by a paralegal team.

Today, clients expect to work with a full-time, highly responsive trademark team of attorneys and paralegals that plays an active role in managing foreign associates. They like the focus on counselling and transparency that comes from hourly billing. Clients want personalised and responsive service from an attorney who has the strategy to handle problems globally and who can manage a strong team to execute that strategy.

What are the major upcoming challenges for US trademark owners?

The United States continues to be the global leader and standard setter for the protection and enforcement of IP rights. For US owners, the major challenges will likely focus on solving problems outside of the country, especially in countries that lag significantly behind the United States in terms of IP rights protection and enforcement. Challenges in China, in particular, will likely continue as a key focus for the coming years. This means that those representing US trademark owners need to be global practitioners.

How important are social activities in terms of professional development and at what stage in their careers should practitioners seek to ‘do more’ to benefit the wider ecosystem?

Well-rounded, passionate lawyers make better advocates. My passions outside of work include playing electric guitar and advocating for diversity. I combined my love of music with charitable fundraising for Together We Bake, a non-profit that helps formerly incarcerated women get back into the workforce. Noise in the Basement – a band which features several Venable attorneys – has raised more than $60,000 for charity.

I am equally lucky to have close relationships with many diverse individuals, including on my own team and with leaders at Venable. Our team worked on the TIME’S UP brand in its high-profile global launch to address sexual harassment and gender inequality in the workplace. Those experiences enhanced my development and have given me a better perspective from which to understand and advocate for diversity. I recommend that practitioners identify their true passions and find ways to integrate them into activities that benefit others, which makes contributions more authentic, successful and rewarding.

What advice would you give to younger practitioners looking to pursue a career in trademarks?

I am proud of mentoring a promising paralegal for 10 years, culminating in her graduation from law school summa cum laude. She moved to the United States alone before becoming a paralegal at a major hosting company and Venable client. We bonded and I encouraged her to attend law school. She is now a trademark lawyer for a major payments company. It has been rewarding to help someone who did not have the benefit of much parental guidance, since I benefited from having a father who was an IP lawyer.

For those looking to pursue a career in trademarks, I recommend getting a job as a paralegal, bonding with a trademark lawyer and identifying the strengths that you can bring to the profession. For me, this meant reading Now, Discover Your Strengths and deciding that I was not meant to be a litigator but that I could use my skills to avoid litigation by settling difficult cases.

Venable LLP

600 Massachusetts Avenue, Northwest

Washington DC 20001

United States

Tel +1 202 344 8156

Fax +1 202 344 8300

Web https://www.venable.com/

Andrew D Price

Partner

[email protected]

Andrew D Price, co-chair of Venable’s trademark, copyright and licensing group, is a globally recognised IP attorney who helps clients to establish, protect and profit from their brands worldwide. Mr Price manages large portfolios of trademarks, exploits IP opportunities and controls crisis situations for clients of all sizes – from start-ups and celebrities to non-profits and multinationals. He focuses on brand strategy, as well as clearing, registering, licensing and enforcing all types of trademark worldwide.