30 Aug

James A Dimitrijevs

Dinsmore & Shohl LLP

"The best IP attorneys remain curious and committed to resolving their own curiosity"

James A Dimitrijevs


How did you choose a career in intellectual property and what has been the key to your success?

In law school, I worked with a firm in a different practice area – asbestos litigation. My responsibilities were mainly summarising the medical records of people with terrible illnesses alleged to have been caused by exposure to asbestos. The summaries were used to depose the claimants. When the firm needed assistance in intellectual property, I jumped at the opportunity to do something else. I was blessed with incredible mentors, Chrysso Sarkos and Jeanne Longmuir, who helped me to learn the nuances of trademark practice and how to manage client expectations. Practising with them was incredibly fun. Now, I am fortunate to work with a talented group of lawyers, paralegals and employees, both in-house at our clients and at Dinsmore. The keys to success have been diligence, attention to detail, a commitment to solving problems with a sense of ownership and assembling a team of people who buy into these principles.

What qualities make for an elite-level attorney, and how can they be better developed?

I have been fortunate to work with several outstanding IP attorneys. The best IP attorneys remain curious and committed to resolving their own curiosity. This leads to asking questions of yourself, your clients and your colleagues. Being committed to answering your questions or the questions that others pose to you will lead to a greater understanding of issues and potential solutions. To become successful, young lawyers serve themselves well by working with a purpose. It is important to learn from mentors and colleagues, but it is also important to chart your own course, informed by your own experiences and the experiences that others have shared with you. Having a business plan can provide a framework for a purpose-driven career, but it is important not to be so tied to your business plan that you are not responsive to the needs of your colleagues and clients, which could also help to guide your career path.

What do you think leadership looks like in the IP world and how can it be developed at an individual level?

Leaders in IP law are people who have and seek an understanding of the needs of their clients. Leaders spot issues, devise solutions to address issues and effectively communicate these issues and solutions to their clients. Leaders are gatherers of information. They are prepared to offer recommendations to their clients for complicated situations, but realise that their ideas are not always the best. They allow for the possibility (even the likelihood) that a colleague with a different background or set of experiences may offer a more effective solution. Leadership can be nurtured at an individual level by creating opportunities for less experienced lawyers to be exposed to challenges posed by clients and to offer solutions. Not only will this model help to develop leaders in the profession, it will also give more experienced lawyers the opportunity to benefit from the fresh perspectives of newer lawyers.

What tips can you share about how to remain at the forefront of industry developments when you have a broad IP-related practice?

I recommend that IP lawyers identify reliable sources for developments in their fields of interest, including blogs or online resource materials published by trade organisations, governments or multi-jurisdictional agencies. Further, I recommend that they develop a network of colleagues locally and internationally to share information about developments in local IP laws. Organisations such as INTA do a great job of making resources available.

While developing an international trademark practice, I had the opportunity to develop invaluable relationships with trademark practitioners in my local community, throughout the United States and in multiple jurisdictions globally. Within that network, I have been able to share information freely with my colleagues in other firms and in other countries. We all appreciate the pressures of having a profitable law practice and we look for opportunities to help each other be successful, but we also appreciate that every question is not necessarily a billing opportunity. We genuinely look for opportunities to enrich each other by sharing information. I am extremely grateful for the colleagues who have helped me to learn through them and their generosity. In addition to identifying reliable resources and a trusted network, I also recommend that developing lawyers seek projects that take them outside of their comfort zones. It is easy to settle into a practice area in which you are comfortable, but it is important to develop diversity in your practice. Having exposure to different practice areas and people with different backgrounds and experiences will make you a more valuable adviser and increase your opportunities to succeed.

Which case has been your most memorable and why?

For the past several years, my practice has been focused largely on managing international trademark portfolios. This has given me the opportunity to be involved in some incredibly interesting aspects of international trademark protection strategy and international trademark enforcement. My experiences with this international practice have been the highlight of my career, mostly because of the incredible team of people – in-house lawyers, colleagues at my firm and colleagues at firms throughout the world – with whom I have had the honour of working. However, at different points in my career, I have been involved in IP litigation and dispute matters involving trademark, patent, copyright, false advertising and trade secret issues. Many of those cases have been memorable because of the unusual subject matters (eg, trademarks and copyrights associated with a scientific exposition of dissected, preserved human and animal bodies, as well as other anatomical structures), determined clients or unreasonably zealous lawyers on the other side. One of the most memorable cases involved a rather mundane product, but it stands out because it went on for years, involved many different claims – including false advertising and patent claims – and was extremely consequential to the parties involved. After years of discovery and motion practice, the case finally settled just days before it was set to go to trial. Managing that case was like landing a jumbo jet that has run out of fuel and has malfunctioning landing gear. We knew that the jet would soon come into contact with the ground, but it was hard to tell how smooth the landing would be. Fortunately, the settlement resolved all of the various issues in a way that both sides seemed moderately pleased (which probably means that both sides were also moderately displeased).

You manage due diligence investigations for mergers and acquisitions. Is the role and importance of brands in such deals changing?

For some of the world’s largest companies, brands are among the most valuable assets. This is true for both service companies and manufacturers. CNBC reports that the value of the Amazon, Google and Apple brands range from $309 billion to $315 billion. Brands have likely become more significant assets of major companies because of the ways in which consumers obtain information and shop, and the greater access that they have to products and services due to technological advancements. Working to protect brands globally, it is easy to understand how the value of brands that are mismanaged (eg, through use or protection strategies) can diminish quickly, or how brands can appear to be more valuable than they are. For example, a brand may appear to be protected adequately through valid registrations in multiple jurisdictions. However, if those registrations are vulnerable to cancellation because there is insufficient use to maintain the registrations, the portfolio can be significantly less valuable than it appears. Thorough due diligence must be conducted to understand the deficiencies and vulnerabilities of a portfolio of brands. Further, we have seen the use requirements in many countries change in recent years. The greater value of brands to many companies and the changing trademark protection laws make thorough due diligence more important now than ever.

How are client demands changing and what effect has this had on your practice?

Client demands have evolved in response to technological advancements. In light of the changing landscape, we have to work with our in-house counterparts to anticipate the new ways that clients’ trademarks can be used, enforced, infringed, diminished or attacked. This makes it even more important to use resources and networks to stay informed of changes that are relevant to the interests of our clients.

What are the key qualities that you look for in law firm counsel when building and maintaining a global network and sending work overseas?

It is important to find counsel who are responsive with competitive rates. However, it is also important to associate with counsel who can adapt to our clients. The need for adaptability may arise in invoicing protocols, correspondence policies that help us to be more efficient or corporate strategies that sometimes change quickly, requiring counsel to change course in the most efficient way possible. It is helpful to work with local counsel who understand our clients’ business goals and offer solutions and strategies that are consistent with those goals. Occasionally, we find ourselves working with local counsel using a one-size-fits-all approach that does not necessarily correspond to the needs of our clients. I understand that this is likely the result of counsel attempting to be efficient, but it is important for local counsel to recognise when a more thoughtful approach should be substituted for efficiency or speed.

What do you see as the major upcoming challenges for trademark owners and, by extension, their expert advisers in the coming years?

With advances in technology, the world will continue to get smaller. Consumers are more likely to become aware of and have access to products and services across jurisdictions more quickly, so trademark owners may have less time to develop and implement trademark protection strategies that pre-empt infringements before they can adequately protect their marks. Moreover, as vendors refine their trademark search platforms, an exponentially larger amount of information about the trademarks and enforcement strategies of others will become available more quickly. While more information is good for trademark owners, expert advisers will have to come up with new, efficient ways of analysing all of the available information.

AI has been a big talking point over the past year – what effect do you feel it will have on trademark practice?

AI is one way that expert advisers can effectively analyse more information in assessing the risks associated with proposed trademarks. It is likely that trademark lawyers who work with coders to develop software to process large amounts of information about trademarks and their owners (essentially, helping to make search and assessment tools more intelligent) will be valuable to clients, particularly those that require protection quickly in multiple jurisdictions.

Finally, for those starting out in a career in trademarks, what is the one piece of advice that you would give?

You are entering a service job in which you will always be helping others to accomplish their goals. To succeed, you will constantly have to demonstrate how helpful you can be to them. Initially, it will be most important for you to be helpful to more senior associates and partners. You will likely do that through research and writing. Eventually, you will want to find ways to be helpful to your peers so that you can develop the network that I have described. This may include serving on committees in your firm or serving in professional organisations. Throughout your career, you should always be looking for ways to help your employees succeed. If all goes well, at some point, you will find yourself in a position of being as helpful as you can directly to clients. This will require you to stay on top of developments in the law, the ever-changing needs of clients and the idiosyncrasies of each of the individuals with whom you communicate. The job will be most rewarding when you are able to find ways for others to succeed.

James A Dimitrijevs

Partner[email protected]

James A Dimitrijevs advises domestic and international clients, including major retailers, consumer products companies and industrial manufacturers, on the worldwide strategic management of IP assets – including the protection and enforcement of trademarks and copyrights, and the licensing, acquisition and sale of such assets. He works closely with in-house counsel to manage assets and provides counsel and representation for disputes – many of which he has litigated in federal court – involving trade secrets, false advertising, trademarks and copyrights.

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