Under Armour v. Life Armour: Symbus Defending Another Trademark Bullying Case

Following its recent success in the Livestrong v. Kidstrong trademark opposition (Symbus Blog, February 19, 2013), Symbus has taken on another trademark bullying case, this one involving a trademark opposition filed by athletic clothing giant Under Armour against Symbus client Life Armour. The Under Armour v. Life Armour case is the most recent in a string of trademark bullying cases handled by Symbus—an area of law in which Symbus is developing substantial experience.

Under Armour opposed Life Armour’s application for the trademark LIFE ARMOUR, alleging that the mark violates its rights in the UNDER ARMOUR mark. The opposition is a classic example of trademark bullying given that the LIFE ARMOUR mark covers “rubber or silicon wristbands in the nature of a bracelet with a religious theme to represent events in the life of Jesus Christ”—products that clearly have nothing to do with Under Armour’s sports related products. Stripped of the legal verbiage contained in the complaint, which included nearly 600 pages of exhibits, Under Armour appears to be claiming that all marks containing the word ARMOUR, including marks identifying religious themed products, are confusingly similar to or dilute its UNDER ARMOUR mark, despite the fact that the LIFE ARMOUR mark is a clear reference to a Biblical passage.

Life Armour recently filed its answer, alleging that Under Armour’s claims should be dismissed because it has engaged in an “ongoing and systematic pattern of trademark misuse” by attempting to improperly extend the scope of its trademark rights against numerous third parties. The answer further alleges that the opposition should be dismissed on grounds of “unclean hands’ because Under Armour is seeking to assert exclusive rights in the word “ARMOUR” against Applicant and numerous third parties, “which it knows, or has reason to know, is an improper assertion under trademark law.”

According to Life Armour’s counsel, Janice Housey, “The opposition is another example of how large companies like Under Armour skew the litigation process in their favor by trying to make it too expensive for small companies like Life Armour to defend themselves.”

We will continue to report on developments in this opposition and other efforts by the Symbus team to address the trademark bullying problem.

Four Underutilized Tools at the Trademark Office

When you have been practicing trademark law for more than 20 years, you pick up a few tricks along the way.  Below is a list of tools that are available to all—but frequently seem to be underutilized, misunderstood, or both!

  • Letter of Protest.  These are a great tool to call particular facts to the attention of an Examining Attorney which might not be obvious from the record.  We successfully used this tool one time to call the Examining Attorney’s attention to the fact that “agave syrup” is indeed very similar to tequila since tequila is made from the agave (cactus) plant.  Unless the Examining Attorney is a tequila aficionado this fact would likely have escaped her consideration and she would not issue a refusal to register an identical mark filed for agave syrup despite our client’s earlier registrations for the mark for tequila.  Letters of Protest have specific requirements and require a fee.  See TMEP sect. 1715 et seq.  Generally, the goal is to provide evidence to support your position and a brief statement explaining why the evidence should be considered.  If the Commissioner of the Trademark Office agrees, the Letter of Protest will be granted and the material provided to the Examiner.  Note:  A Letter of Protest is not a substitute for an opposition, nor does the fact that a Letter of Protest is “granted” equate to a refusal to register being issued.
  • Going up the Chain.  It has happened to all of us: we just do not believe that the assigned Examining Attorney understands the nuances of our brilliant legal arguments.  In such instances, it is sometimes useful to get the Senior  Attorney or Managing Attorney for the Examining Attorney’s Law Office involved.  The Senior and Managing Attorneys for each Law Office are listed at:  http://www.uspto.gov/trademarks/Other_TM_Contact_Info.jsp
  • Consistency Initiative.  In the olden days, co-pending applications (i.e., trademarks filed by the same applicant for similar marks and/or goods/services) were assigned to the same Examining Attorney.  No more!  Your applications all filed on the same day for complex goods and services can be assigned to different Examining Attorneys and the results can be very different Office Actions regarding identifications of goods/services, disclaimer issues, or even citations to earlier applications/registrations.  The PTO now allows an Applicant (or its counsel) to raise concerns about inconsistent practices between recent registrations through pending applications.  See http://www.uspto.gov/trademarks/notices/consistency_permanent.jsp
  • Getting identifications added to the Acceptable Goods and Services Manual.   The Trademark Office is constantly reviewing and updating the Acceptable Goods and Services Manual (searchable at http://tess2.uspto.gov/netahtml/tidm.html ).  How can you get the Trademark Office to consider your proposed identification?  The process is relatively straight-forward.  You simply send your suggestion by email to tmidsuggest@uspto.gov.  There is one important catch:  you cannot have a pending Office Action regarding the suggested language.  Also, if your proposed suggestion violates the PTO’s general requirements for clarity and specificity, it will likely be rejected.  Also, if the proposed suggestion could include goods or services in multiple classes, it will also be rejected.  Despite the limitations, this really is a potentially great tool for those applicants who have very specific identifications that they wish to use over and over and do not want to deal with repeated office actions regarding the same identification.

I am sure every practitioner has their own favorite tools and suggestions.  What’s yours?

Key Considerations in Patent Monetization

Corporations and individual patent owners alike are more interested than ever in seeking to generate revenue from their patent holdings. That revenue can come in the form of a one-time lump sum payment, a running royalty stream, some combination of both or even some other creative financial structure. Companies both large and small may be willing to license or sell patents in their portfolio that are non-core to their business. Alternatively, a strategic decision may be made to license or sell a patent even if it does cover a core aspect of the ongoing business. In this latter case, the sale or license may be conditioned on a grant-back of license rights and/or other rights such as rights to improvements so as to minimize the impact to the company’s IP position in the context of such a sale or license. In the case of individual patent holders, the sale or license of patent assets may be more of a financial decision with less concern for the operational impact of such a transaction.
There exist a great many professionals that offer patent marketing services with the goal of generating revenue based on patent assets whether the ultimate transaction is a license or sale or some form of hybrid arrangement. These professionals come from a many diverse backgrounds such as patent attorneys, licensing professionals, marketers, business development professionals and technologists. Often, these service providers will comprise a team of individuals with the collective skill sets which are desirable in achieving the best result.
It is very difficult to determine a strict value for a particular patent or a portfolio given the many variables that go into the determination. In the end and in the context of a non-litigious business transaction, the patent or portfolio is only worth what a willing buyer will pay for the relevant patent assets. That being said, there are some key indicators that are important in assessing potential value of a patent portfolio. For example, one key factor is the scope of potential infringement (current, present and expected future) in the market. Another important factor is the inherent strength of the patent or set of patents. This includes, for example, the breadth and clarity of the claims as well as the extent and clarity of the disclosure in the patent. Patent strength is also dependent upon the prior art (of record and not of record) as that prior art applies to the issued claim set. An often overlooked factor in assessing potential value of a patent portfolio is the condition of the patent sale and purchase market at the time of the marketing. If there are many buyers at the specific time, then the portfolio is likely to fetch a higher price than if buyers are not relatively active, particularly if they are not currently active in the technology area represented by the portfolio.
There are many other factors that impact the ultimate expected sale price or license revenue which can be generated from a patent portfolio. If you or your company are interested in potentially unlocking the value of patent assets, then the best course of action is to locate a reputable patent monetization expert and ask for an assessment of your portfolio. In almost all cases, this can be done without charge and the expert should be able to provide a general idea of expected value and potential for a sale or successful licensing program. Some of these experts will market portfolios at no cost to the owner in return for a success based portion of the proceeds generated through the marketing of the assets.

Livestrong v. Kidstrong: Symbus Client Kidstrong Prevails in Trademark Bullying Case

We are pleased to report that the Livestrong Foundation has withdrawn its trademark opposition against our client Kidstrong Enterprises.

As we previously reported in this space, the Foundation filed an opposition against Kidstrong, alleging that Kidstrong’s application to register the trademark PROSTRONG, which covers dietary beverages, violated its rights in the mark LIVESTRONG. Kidstrong responded by filing an answer alleging, among other things, that the Foundation’s claims were unwarranted and that the Foundation was guilty of trademark bullying.

Kidstrong served several discovery requests on the Foundation, including several requests relating to its trademark bullying defense. The Foundation requested additional time to respond to the discovery requests and Kidstrong agreed. The parties engaged in settlement discussions, but Kidstrong refused to enter into any agreement limiting its rights in any way. Kidstrong also declined to consent to the withdrawal of the opposition, which would have given the Foundation the right to refile the opposition. The Foundation ultimately withdrew the opposition without Kidstrong’s consent and the opposition was dismissed “with prejudice.” As a result, the Foundation is precluded from challenging the registrabililty of the PROSTRONG mark in the future. According to Kidstrong’s counsel, Jan Bader, “Kidstrong is very pleased with the outcome of the opposition. Now that the proceeding has been withdrawn, Kidstrong can go about its business without further interference from Livestrong.”

While the Livestrong v. Kidstrong opposition is a single case in a sea of trademark bullying cases, the result of the opposition is important. The withdrawal of the opposition is a victory not only for Kidstrong, but for trademark bullying victims everywhere. The case shows that, in this case at least, standing up to trademark bullies works.

Is That A Trademark I Hear? TTAB Addresses Issues Raised By Sound Trademarks In Recent Case: In Re Powermat Inc.

While not common, sound trademarks have been registered in the United States on the Principal Register for over fifty years.  The United States Patent and Trademark Office (USPTO) website provides examples of sound trademark registrations at : http://www.uspto.gov/trademarks/soundmarks/index.jsp .  However, as the TTAB points out in the recent case In Re Powermat, (a copy which can be found at   http://e-foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=77715052-01-17-2013 ) not all sounds can be registered and the successful prosecution of sound trademark applications presents its own challenges.

The Powermat case involves two applications for sound trademarks as applied to battery chargers. The applicant in Powermat described the trademark in application Serial No. 77715011 as “ The mark consists of five short electronic chirps, lasting less than half a second, with each chirp increasing slightly in pitch from the previous chirp,” and the trademark in Serial No. 77715052 as “the mark consists of five short electronic chirps, lasting less than a half second, with each chirp decreasing slightly in pitch from the previous chirp.”

The Applicant argued that its sound trademarks should be entitled to registration on the Principal Register because the sounds are inherently distinctive and function as trademarks. Applicant asserted that it “created the sound to be a unique and fanciful source identifier and not the mere byproduct of the operation or function of the goods. The six (sic) note ascending note pattern in the key of C was developed under contract by a professional composer for Applicant to create a sound pattern that would act as a distinctive source identifier. The composer created over twenty (20) unique sound patterns that were submitted by Applicant for consumer testing and approval prior to adoption by Applicant and was selected as a result of consumer testing.” The TTAB held that regardless of the fact that Applicant specifically developed the sound to be distinctive, the case falls within previous precedent set by In re Vertex LLC, 89 USPQ2d 1694 (TTAB 2009) holding that “sounds emitted in the course of a product’s ordinary function can never be inherently distinctive and can only be registered on a showing of secondary meaning.”

In the past the TTAB has found that sound trademarks can be categorized as inherently distinctive or noninherently distinctive. It has found that “unique, different or distinctive sounds” sounds do not need proof of secondary meaning but that sounds that resemble or imitate commonplace sounds need evidence of secondary meaning to prove they have become distinctive and identified with a single source.  Furthermore, the TTAB has found that for goods that make a sound in the normal course of operation, such as alarm clocks, appliances with audible alerts (e.g., microwaves and clothes washer “beeps”), mobile telephones, cell phones rings and emergency alarms (e.g., smoke alarms, structure security alarms and personal alarms), that these sounds are not inherently distinctive and that registration can only be achieved with proof of secondary meaning under Lanham Act § 2(f). In the case of Powermat, the TTAB found that Applicant’s goods, i.e., battery chargers,  emit sounds in the ordinary course of operation and so the sounds are not inherently distinctive and cannot be registered without a showing of acquired distinctiveness.

In addition to the refusal on substantive grounds, the Applicant also faced procedural problems. In requests for reconsideration Applicant provided hyperlinks to its commercials on YouTube for the purpose of demonstrating the “distinctive nature of the sounds and the related consumer awareness and focus of the sounds as source identifiers.” The TTAB reiterated its previous decision that providing hyperlinks to Internet materials is insufficient to make such materials of record. The reasoning behind this policy is the transitory nature of Internet postings as websites referenced only by links may later be modified or deleted. The TTAB pointed to TMEP § 710.01(b) requiring that printouts of Internet materials need to include the URL and date on their face, or some other manner of verification. Of course, Applicant’s intent in submitting the materials had been for the Examiner to click on the hyperlink and to view the YouTube commercials themselves. The TTAB found that to support its arguments with commercials Applicant should have provided a CD, DVD, or videotape or that the Applicant could have submitted the material to TEAS@uspto.gov as email attachments as provided under TMEP §§ 807.09 and 904.03(f).

The teachings of Powermat are that sound trademarks for products that emit sounds in the ordinary course of operation are not inherently distinctive and cannot be registered without a showing of acquired distinctiveness. Also, when submitting Internet evidence to support arguments Applicants should not rely on hyperlinks but should adhere to the TMEP rules on submitting evidence.

Meritless Arguments Don’t Pay: $400K+ in Attorney’s Fees Awarded in Recent Trademark Case

Attorney’s fee awards are relatively rare in trademark cases, but when litigants make meritless arguments, attorney’s fees aren’t far behind. Proving, once again, that it doesn’t pay to make meritless arguments, the Middle District of Florida recently awarded Defendant X/Open Company Limited over $400,000 in attorney’s fees and costs as a result of the meritless arguments of Plaintiff Wayne R. Gray.

The parties’ dispute started in 2001, when X/Open filed an opposition in the Trademark Trial and Appeal Board challenging Gray’s application to register the INUX trademark on the basis of its famous UNIX trademark, both covering operating systems. During the opposition, Gray persistently alleged that X/Open never owned the UNIX trademark. In motion after motion, Gray argued that The SCO Group, Inc. was the lawful owner of the UNIX mark, despite clear evidence to the contrary, including SCO’s acknowledgement that X/Open owned the mark. The opposition eventually stalled over the confidentiality of certain documents and, in 2007, Gray filed a lawsuit against X/Open and codefendants SCO and Novell, Inc. in the Middle District of Florida. Amplifying on his theory that X/Open did not own the UNIX trademark, Gray alleged that the Defendants “conspired,” over a period of at least 15 years, to hide the true owner of the mark and enforce the mark against Gray and others. Gray also alleged that the goal of this vast conspiracy was to deprive Gray of his rights and “control certain software markets.” According to Gray, the Defendants’ actions violated the federal RICO statute, the Florida RICO statute, and various other laws, and caused him more than $100 million in damages.

After several heated discovery disputes, X/Open and Novell moved for summary judgment, arguing that the documentary evidence clearly established X/Open’s ownership of the UNIX mark and that Gray’s conspiracy theory was pure speculation. The Court had no trouble finding, based on the record, that X/Open owned the UNIX mark and that Gray’s claims were based on “mere suspicions and unsupported theories.” As a result, the Court granted summary judgment to Defendants on all counts of Gray’s complaint in 2009. Wayne R. Gray v. Novell, Inc., X/Open Company Limited, and The SCO Group, Inc., 2009 WL 425958 (M.D. Fla. Feb. 20, 2009).

Following summary judgment for the Defendants, Gray filed an appeal with the 11th Circuit, which affirmed the District Court’s judgment. Echoing the District Court’s summary judgment decision, the 11th Circuit found that Gray’s claims “lacked a substantial factual basis.” At about the same time, X/Open filed a motion seeking to establish its entitlement to attorney’s fees with the District Court, which was granted. The issue of X/Open’s right to attorney’s fees having been decided, X/Open submitted arguments concerning the amount of its attorney’s fees and costs in 2010, and was recently awarded approximately $410,000, plus interest. Wayne R. Gray v. Novell, Inc., X/Open Company Limited, and The SCO Group, Inc., Case No. 8:06-CV-1950-T-33TGW (M.D. Fla. Sept. 6, 2012).

Litigants should be expected to zealously advance their positions, but Gray v. X/Open shows they should refrain from making meritless arguments. When they do, the party forced to defend itself against such arguments can recover its attorney’s fees and, as this case illustrates, those fees can be substantial.

For more information about attorney’s fees in trademark cases, contact Evan Raynes, one of the principal attorneys for this case, at eraynes@symbus.com.

Establishing Internal Corporate IP Policies and Patenting Strategies

For most companies, IP policy is initially handled on an ad-hoc basis. The company is not developing that many new products or brands, and the future development of the company is too uncertain to warrant the investment of time and money involved in establishing official policies related to intellectual property. So the founders handle IP issues individually as they arise.

But as a business grows, formal rules and procedures for handling the internal development of intellectual property become more and more important. At some point, management has to stop bringing in the IP attorneys only when there is a specific need, and start looking at high-level IP issues proactively.

IP policies should scale with the size of your business, starting out simple and increasing in breadth and detail as IP matters proliferate and responsibility becomes more diffuse. Here is a short list of six major components of internal corporate IP programs, with brief descriptions and recommendations for the timing of their implementation:

1) IP-related Provisions In Employment Agreements

It is critical that you ensure all employment agreements include language protecting your business’s intellectual property rights and limiting the potential for litigation. This is an issue you should handle before hiring your first employee.

Common IP-related clauses in employment agreements include the automatic assignment of employee patent rights to your company, mandatory disclosure of all existing patent rights and other intellectual property, and non-disclosure and non-compete agreements, particularly as they interface with your company’s trade secrets.

2) IP-related Provisions In Vendor Contracts and Other Agreements

IP always comes into play when relying on a third party to assist with any aspect of product development, marketing or branding, and the like. Every contract should be reviewed with an eye towards preserving IP rights and reducing the risk of litigation.

Copyrights must be explicitly addressed in any agreement with an independent contractor regarding creative works, and may warrant a separate work-for-hire agreement. The automatic assignment of any patent rights developed by a vendor during the course of your project is also critical. Non-disclosure provisions and other clauses to protect and handle trade secrets should also be included.

3) Employee Handbook/Policies

Any of your employees may encounter situations where they have to decide how to handle intellectual property. They need clear rules directing them to the proper actions to avoid exposing your company to litigation or a loss of intellectual property rights. Potential issues include the proper handling of third-party trademarks and copyrighted matter in marketing materials, use of open-source and third party code in company software, and guidelines regarding disclosure of potentially patentable subject matter.

4) Invention Disclosure Program & Inventor Incentives

Once your business is undertaking enough research and development activity, it becomes difficult for upper management to keep track of all the areas in which individual employees are conducting research, and even more difficult to keep track of the daily progress of such investigation. At that point, a formal invention disclosure program becomes a necessity.

You want decisions about whether to patent an idea or keep it a trade secret, and whether and when to allow publication, to be handled by upper-level personnel according to your company’s patenting strategy. And to ensure that decision-making personnel always know about the latest ideas and developments, a formal disclosure program coupled with inventor incentives for disclosure and successful patenting activity should be maintained.

5) Patenting Strategy

As your business grows, you will need a principled basis for determining whether to patent new developments or keep them as trade secrets, whether and where to file internationally, whether to file provisional patent applications, and the like. These decisions should be made at a high level and should be guided by the company’s business strategy, priorities, and competitors.

Developing a formal strategy to be implemented throughout your organization ensures that valuable intellectual property is not discarded and that resources are not wasted on filings that do not support the revenue-generating portions of the business.

6) Branding and Marketing Procedures

When your company has dedicated marketing personnel and develops new brands on a regular basis, trademark law principles should be integrated into the process for developing new brands. Your marketing department should be developing protecatable trademarks for your new logos and product names and should be clearing them of conflicts at an early stage to limit litigation risks and support branding campaigns. Marketing personnel should be educated on the proper and consistent usage of your trademarks to maintain strong trademark rights.

Effective internal IP policies encourage the development of new and valuable IP assets, ensure that your company is identifying potentially protectable IP it is creating already, assist with determining what IP to protect, and how, on a rational basis, and reduce litigation risks at all stages of development. Implementing these high-level intellectual property policies will pay substantial dividends over the life of your business.

Janice Housey of Symbus Appointed to INTA Panel of Neutrals

The International Trademark Association (INTA) has appointed Janice Housey, a partner at Symbus Law Group, to its Panel of Neutrals. INTA created the Panel as a part of its alternative dispute resolution program (ADR) to resolve trademark and unfair competition disputes without litigation.

INTA maintains high standards for its neutrals. To meet these standards, neutrals must have substantive legal knowledge coupled with training in mediation, be held in high regard in the legal community, and  make a commitment to continue to gain relevant knowledge through experience and training during their tenure on the Panel.

Ms. Housey was chosen among a large number of qualified applicants, cited by INTA as an attorney whose experience and proven abilities will permit her to make a significant contribution to ADR in the field of trademarks.

The INTA Panel of Neutrals is the world’s only panel of mediators who are skilled in both trademark and unfair competition law and trained in mediating disputes.  According to INTA, the success rate for mediation as a tool for resolving trademark disputes is about 70%.

Symbus is committed to helping its clients seek cost-effective solutions to its intellectual property issues and believes that meditation and other ADR solutions should often be considered for many types of intellectual property disputes.  Ms. Housey’s appointment recognizes the Symbus commitment to being innovators in the practice of intellectual propert y.

Symbus Receiving Significant Press Coverage for Role in Trademark Bullying Case

Symbus has recently received significant press coverage for its defense of Kidstrong Enterprises in a trademark case filed by the Lance Armstrong Foundation. This is an important case because Kidstrong’s defense is based, in part, on allegations of “trademark bullying”—a trademark owner’s unreasonable interpretation of the scope of its rights for the purpose of intimidating an opponent into compliance with the owner’s demands. Trademark bullying has become a huge problem and the Kidstrong case may help shed some light on how the Patent and Trademark Office views the issue. We will provide periodic updates about the progress of the case in this space.

The typical trademark bully (generally a larger company) files a claim against a competitor (generally a smaller company), claiming a likelihood of confusion between marks containing common words, and this case is no different. As explained in a July 31, 2012 Business Wire press release, as well as numerous articles based on the release, Symbus is defending dietary supplement maker Kidstrong against a trademark opposition filed by the Foundation in the Trademark Trial and Appeal Board (the administrative law division of the Patent and Trademark Office). The Foundation opposed Kidstrong’s application for the trademark PROSTRONG after the mark was approved by the Patent and Trademark Office. The Foundation claimed that the PROSTRONG mark, which covers dietary supplements, is likely to be confused with and dilute the Foundation’s LIVESTRONG mark.

Kidstrong responded by claiming that the Foundation is engaging in trademark “misuse” and “unclean hands” by seeking to prevent Kidstrong from obtaining a trademark registration for PROSTRONG simply because the mark contains the word “strong.” Kidstrong also claimed that the Foundation is guilty of trademark “misuse” and “unclean hands” because of its efforts to stop numerous other companies from obtaining trademark registrations for marks containing the term “strong.” In a nutshell, the Foundation’s opposition and other enforcement efforts amount to an attempt to claim exclusive rights in the word “strong.” These efforts go far beyond any reasonable interpretation of the scope of the Foundations rights and qualify as classic case of trademark bullying. Surely, the Foundation has rights in its LIVESTRONG trademark, but do those rights encompass any use or registration of the word “strong”? The Foundation seems to think so, and that makes the Foundation a trademark bully. The Foundation should be commended for all of the good it does, but its trademark policies, like the trademark policies of other trademark bullies, are misguided.

As Janice Housey, one of Kidstrong’s lead attorneys, stated in the July press release, “The Lance Armstrong Foundation is one of the most prolific filers of trademark proceedings in the United States Patent and Trademark Office and I think many of its supporters would be dismayed by the pattern of conduct. We will continue our efforts to obtain a trademark for our client’s PROSTRONG beverage.”

A quick review of the TTAB’s records shows that the Foundation has filed dozens of oppositions against trademarks containing the word “strong.” There’s no way to know how much money the Foundation has spent on these oppositions, but since the Foundation tends to hire large law firms, it’s reasonable to assume the figure is fairly large.

More importantly, most of the targets of the Foundation’s enforcement efforts, including Kidstrong, are smaller companies. It goes without saying that this is the crux of the trademark bullying problem. Most trademark bullies go after smaller companies who generally don’t have the resources to fight larger, well-funded companies. The result is that these companies are generally forced to quickly surrender. More often than not, they wind up signing agreements that make them waste significant amounts of time and money destroying inventory, reprinting brochures, redesigning websites, adopting new trademarks, and/or developing new business plans. All of this stifles competition and discourages innovation.

Trademark bullying is also “economically inefficient” in law-and-economics parlance. The significant amount of money that larger companies spend defeating their smaller opponents increases their costs, and this results in higher prices and harms consumers.

Finally, as many victims of trademark bullying will tell you, it’s simply unfair to force a smaller opponent into submission by asserting an unreasonable interpretation of the law and then outspending the opponent. As Janice Housey noted in the above press release, “The attempt of a large organization with vast resources to assert a legal position with the primary goal of outspending a smaller company is objectionable on many levels. The Lance Armstrong Foundation engages in a pattern of conduct in which it attempts to intimidate many companies that legitimately seek to use the word ‘strong’ as part of a trademark.”

While trademark bullying has received an increasing amount of attention in recent years, unfortunately, there is very little case law on the subject since most trademark bullying cases settle. Stay tuned to see how the Kidstrong case develops.

Need A Trademark Or Patent Lawyer To Manage End Of The Year Projects? Consider In-House Secondment Attorney Services

Now that summer is drawing to a close in-house counsel must gear up to address those end of the year rush projects. I worked as in-house counsel for over eighteen years and without fail the fourth quarter always proved to be our busiest. After a summer break our in-house clients worked feverishly to accomplish those end of the year objectives and Management pushed to complete any deals that may have been in process so that the Company could improve the end of the year bottom line. Everyone in the legal department felt the onslaught including the Intellectual Property Department.

If you are experiencing pressure to complete a deal or resolve a matter that involves a complex patent issue, litigation, multi-country trademark license, a worldwide filing project, or similar task, perhaps you should consider retaining an in-house secondment Trademark or Patent Attorney. Such an attorney can provide on location assistance with these types long term projects and needs that would be costly and complicated to “farm out” to outside counsel. With an on location secondment attorney you can provide direction on the spot, the attorney can interact with in-house clients as needed and can access necessary files and data easily. Also, depending upon the firm you choose to work with you may find that you can negotiate for an hourly rate or flat fee arrangement that permits you to do this well within your budget.

Not familiar with secondment services? U.S. attorneys are often unaware of the concept of secondment attorneys although they are widely used in the U.K. and Europe. The term secondment derives from the days when the British army officers were given temporary assignments outside their regular regiment. The practice benefited the new regiment that received an additional set of hands and a fresh perspective from an experienced officer. In the legal world, this practice means that an experienced attorney from a law firm that offers “secondment” services can be placed in-house on a temporary basis. The attorney can then assist with complex projects and provide client support “in the trenches” and often do so with minimal supervision and training on the part of the hiring manager. When the project is completed the “secondment” attorney returns to her law firm work with a greater understanding of the company’s business and legal needs and can now work more effectively and efficiently with the company on a traditional basis.

Companies requiring special coverage for any of the following situations often use secondment services:

  • Long term projects, such as negotiating intellectual property licenses, managing global trademark recordal assignments, filing name changes, or conducting  foreign license recordals
  • Global search and filing of a new brand
  • A legal department that wants to bring their intellectual property portfolio in-house but does not need full-time Patent or Trademark Counsel
  • Assistance with setting up in-house intellectual property operations
  • Switching to a new trademark or patent management database
  • Resolving foreign conflicts for trademarks or patents that are no longer of top tier importance
  • In-house litigation support
  • An attorney on maternity or sick leave

How does hiring a secondment attorney differ from hiring a temporary attorney from an agency or borrowing an associate from a law firm? For projects requiring specialized skills and knowledge, such as for intellectual property matters, temporary attorneys from agencies rarely come with the necessary experience to “hit the ground running”. The hiring manager must often train and closely supervise the attorney. Once the project ends, even if the attorney has been of great assistance, the nature of temporary work is that the temporary attorney is unlikely to be available the next time the hiring manager needs an attorney since such attorneys are often on other projects or have taken permanent positions. For these reasons, the time spent training and supervising the temporary attorney usually does not provide a long-term benefit. Likewise, borrowing an associate from a law firm can be an inadequate solution since traditional law firms often insist on billing the attorney at an hourly rate and often will only provide an associate with one or two years of experience. The hiring manager is left to provide training and supervision. To make matters worse, particularly for specialized intellectual property work, even the less experienced associates at traditional firms are often billed at hundreds of dollars an hour. For these reasons, hiring a secondment attorney is often the preferred solution for addressing temporary in-house legal assistance needs.

If you are interested in getting some much needed help for those end of the year rush projects, Symbus Law Group can provide secondment services to companies seeking trademark or patent attorneys to work on a temporary (long term or short term) basis in their offices or ours. Secondment services can be on a 1-5 days/week basis for anywhere from 1 week to 6 months. Call me and we can discuss a cost-effective strategy for addressing your needs, either on an hourly basis or at a flat rate. Symbus intellectual property attorneys are available to work at in-house locations in the greater Philadelphia, Washington, D.C., Northern Virginia, areas. For more information, contact me, Teresa Anzalone, at 610-420-7731, or by email at tanzalone@symbus.com.