Neal Gerber Eisenberg
"It is critical to identify and distinguish between passing trends and tectonic shifts"
How did you choose a career in intellectual property and what has been the key to your success?
As an engineering student, I considered law school, but decided to try out the corporate world first, working at MCI Telecom on a management training programme. While I learnt a great deal about business, management and leadership, I decided to pursue a career in law. Being an engineer led me to IP law at a boutique and later at a general practice firm. Spending six years climbing the ladder in a large corporation taught me about the internal pressures that my clients face and the types of communication and counsel that enable them to be effective. I was also seconded three times to the IP legal department of one of the world’s best-known brands, which reinforced the lessons I had learnt from MCI on client service and communication. Finally, I have had the incredible fortune to learn from supportive mentors and colleagues throughout my career.
As co-chair of an IP group, what does leadership in the field of IP law look like to you?
Leadership in the field of IP law means staying on top of dizzying changes in technology, business and society. I remember conducting trademark use investigations by relying solely on outside investigators, when suddenly one day a client introduced me to a brand new search engine called Google. Our ability to investigate competitors and advise clients changed instantly, and the pace of our practice increased. It is also critical to identify and distinguish between passing trends and tectonic shifts such as the Internet, social media, data governance and blockchain. While technology and the law are evolving rapidly, the importance of maintaining professionalism and relationships endures. When I was a new law clerk, one of my mentors warned me how small the world of IP lawyers can be, and it is true; reputations stick, good or bad.
What tips can you share on how to ensure that you remain at the forefront of industry developments and can continue to offer high-level services to a roster of clients?
Given the speed of change, it is hard to stay current. Every morning I read through legal journals and newly filed cases to keep tabs on issues that affect our clients. I also speak and write frequently to keep my knowledge sharp and up to date. But no matter how much you read or write, it is impossible to be an expert in every facet and nuance in intellectual property – from design patents to trademark oppositions and data governance. Fortunately, I am part of a team of 40 IP attorneys, and we each excel at specific facets of the practice, so we can leverage our collective skills and knowledge for our clients. For example, our team includes a PhD in neuroscience, a former space shuttle rocket engineer, several electrical, chemical and mechanical engineers, a former journalist and accomplished jury trial litigators. Thus, we always have multiple authorities on any given technology or legal discipline.
What are the key skills that a trademark litigator should possess, and how can these be honed?
A litigator’s most important skill is communication. While this is often viewed solely as having outstanding oration or engaging writing – which are both critical to success – I think it starts with listening rather than talking. Being a good litigator means achieving your clients’ goals and if you do not start with a clear vision of what those goals look like, you cannot succeed. The same is true for anticipating what will be most persuasive to a judge or jury. Once you understand the goal, you can hone your writing and oral presentations, through editing and re-editing, to keep the message concise, powerful and ultimately persuasive.
Finally, how different do you feel trademark practice will be in five years, and how can practitioners best prepare for the future now?
The basic principles of trademark law – avoiding consumer confusion and deception – have not changed during my career, but the novelty and complexity with which these issues arise continue to evolve at an increasing pace. Smartphones, apps, social media, influencers, e-commerce and emerging technologies drive new ways for owners to leverage the power of their brands – and for competitors to contend with them. It is up to IP lawyers to delineate the foul lines, so that owners can maximise their brands’ value, competitors can drive prices down and increase choice, and consumers are not confused in the middle.
Michael G Kelber
Michael G Kelber is a partner, co-chair of the IP group and a member of the executive committee at Neal Gerber Eisenberg. He helps enterprises and entrepreneurs to strategically develop and protect extensive global IP portfolios. He has prepared and prosecuted thousands of successful US and foreign trademark and patent applications and has served as lead counsel in trials before state and federal courts throughout the United States.