Re: An IP gripe

On Wed, 18 Aug 1999, Robert Cumbow <rcumbow[_at_]grahamdunn.com> wrote:
>
> My view is a little different. I think that trademark work is
> actually the bread and butter of most IP attorneys. It even, to my
> perception, sustains the practice of many patent lawyers, since it
> can be done more quickly and economically, much of it by a paralegal,
> while the practitioner devotes time to the long, slow process of
> drafting patent claims.

I think that it depends on your practice and your training.

When I was in private practice, most of the partners in my firm in which I was an associate had practices that tended to be 1/3 patents, 1/3 trademarks, and 1/3 litigation. Even the guys who did no litigation seemed to have an equal mix of patents and trademarks. They often stated that the two practices complimented each other quite well. But note that most of these guys had been practicing 20-30 years and had had the time to build up nice practices.

On the other hand, I think that you will find that the way that many start on their own is to get ahold of a small number of larger clients with enough business to support them. This probably tends to favor patent business. I have found plenty of practioners who did almost all patent prep and prosecution.

Also, trademark law differs from patent law quite a bit. It doesn't seem as black and white as patent law often does. Patent attorneys invariably have technical backgrounds, which tend to emphasize black and white thinking. I think that for these reasons, many patent attorneys have a reasonably hard time doing trademark law well.

Finally, it seems that having a lucrative trademark practice takes a certain critical mass. Sure, your secretary or paralegal can do most of the work, once you have her trained - but it isn't worth training someone at the level you would need to make them really efficient until you have a certain critical mass of trademark work.

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The preceding was not a legal opinion, and is not my employer's.
Original portions Copyright 1999 Bruce E. Hayden,all rights reserved
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Bruce E. Hayden                      bhayden[_at_]acm.org
Phoenix, Arizona                     bhayden[_at_]ieee.org
                                     bhayden[_at_]copatlaw.com