Would it surprise you to learn that not all trademark types are created equal? I didn’t think so. Like any profession, some of the professionals are better and more gifted than others. A few are much better. And, if bell curves have any application here, a few are much worse too.

In the inaugural post for DuetsBlog, last March, we introduced a type of trademark attorney known as "Dr. No," and we discussed how he or she likes to focus on the "Parade of Horribles" instead of creative solutions to difficult and important problems:

The underlying personal brand promise for this lawyer is to say “no,” early and often, believing an enormous hourly rate is still justified by citing a multitude of technical and valid legal reasons in support of the unhelpful answer. He is obsessed with saluting to the Parade of Horribles.  He is typically part of the problem, not the solution.  Perhaps repeated frustration with this kind of Dr. No is what motivated one cartoonist to brand (uh, jab) the “trademark attorney” as “the most basic figure," at least in the world of Art.

Avoiding the "Dr. No" moniker and mindset should not be the only goal of trademark types. There is clearly room for improvement in our profession in other areas too.

Gather ’round, it’s time to meet J.D. Waffler.

Waffler’s initials are J.D. because he or she has earned the coveted Juris Doctor degree. One of the valuable skills J.D. learned in law school is how to spot all the possible legal issues in any given fact scenario — no matter how remote the risk of each might be. Another important learned skill is to be able to identify the strongest legal arguments on each side of an issue. Who wins? Well, you might be surprised to know, that’s not as important in law school, so long as you can make the arguments on both sides of the issue. But, who wins is important in the business world, so good trademark lawyers must learn to adapt and evolve, in order to become useful members of any multidisciplinary team.

In short, J.D. Waffler’s problem is, well, a proclivity for waffling. He or she doesn’t practice the art of taking a position, at least on a regular basis. Perhaps fearful of choosing the wrong side makes sitting on the fence the preferred course of action for J.D. Waffler. He or she is much more comfortable telling you both sides of the story and ends up providing this kind of invaluable advice: "It could go either way," "you could really flip a coin on this one," "it’s six of one and a half a dozen of the other," or "it’s no better than a 50/50 shot." Let’s just say, that is pretty safe advice, assuming the clients don’t demand more.

Taking a legal position and providing valuable advice — in the trademark world — is definitely an art, not a science. Trademark decisions are highly subjective, fact intensive, and they often involve balancing and weighing multiple factors and keeping track of all the unknowns. In many instances, these are not the easiest of legal risk assessments. Moreover, unlike going to your favorite M.D. who is able to tell you with complete confidence there is a 2% chance of x, y, or z happening, when they perform a particular surgical procedure, your favorite J.D. doesn’t have access to those kinds of reliable statistical resources. Nevertheless, this legal deficit doesn’t excuse failing to pick a side.

Yet, lawyers are smart, especially trademark types. Some of them have learned they do need to pick sides, take and defend a position, at least barely, even when it comes to their communications with clients. I’m hoping we can agree, however, that phrases like "better than even chance of winning" aren’t a huge improvement from the flip-of-the-coin mindset. It still begs the question of how much the lawyer really likes or dislikes your argument, defense, case, or proposed trademark.

We don’t make this stuff up. In a trademark litigation where we were arguing for our adversary’s bad faith adoption and use of a confusingly similar mark, opposing counsel provided a copy of the search report and opinion in the hope of refuting the bad faith allegation. What the documents revealed, however, was the trademark attorney’s opinion that the client had "a better than 50% chance" of success. Taken literally, the flip side also means the attorney believed the client had a 49.999% chance of losing, so how valuable is that opinion, really?

Trademark Types: We can and should do better.

Marketing Types: You can and should expect more.

So, given all that, in your opinion, what are the attributes that move a trademark type from being good to great? And, where does the quality of "taking a position" rank for you in the mix of those attributes?

  • Taking a position is absolutely necessary. As a marketing type I need clarity from the trademark types. I recently interviewed three law firms to help settle an infringement issue. The last was chosen, and ultimately successful, not only for their belief they could win but that they would manage the costs of their services. No waffling at any point. Now that’s a win-win.

  • This reminds me of the old joke about the law school dean who told the graduates at the commencement ceremony, “You now have a law degree. You can now say, with great authority, ‘it depends.'”

  • True waffle. The good lawyer is the one who wins the 50/50 case. As the odds worsen, victory requires a better lawyer. Greatness is therefore inversely proportional to chance of success.
    When it comes to business advice, all lawyers should be able to provide advice that helps a business decision to be made and not stop at ‘could go either way’. This is no different than a plumber saying ‘it’s gonna cost ya’. This is a common complaint and if you want valuable real world advice, the trick is to use an attoney that has some relevant real world experience.
    But, don’t forget, the lawyer assesses the risk and doesn’t create it.

  • In trademark practice, risk often equates to costs down the line. As a result, the attorney’s ability to take a clearer position often depends on his/her understanding of the client’s business practices, time and budgetary constraints. Rather than just parade the horribles, I find it helpful to have anticipated with the client what they/we will do in the event that the more likely of those horribles occurs and how much doing that will likely end up costing. With a clearer picture of the risk and associated costs, the client is better equipped to make what is ultimately a business decision.

  • Steve, I actually think that for a good trademark attorney to be great, he/she needs to do much more than be technically skilled or even a good communicator. One needs to understand the client’s business and evaluate where considerations about trademarks and related issues can add value and/or mitigate risk. I also think that great trademark attorneys need to understand other areas of law to determine how the trademark issues fit in the bigger picture of a particular matter.

  • Great thoughts, thanks all for sharing. Bret, I couldn’t agree more.

  • First, and always, establish what is good for the client.
    Not any client, but THIS client.
    Then look at possible restrictions, like cost, but also legal restrictions. And do everything you can to make what is good a viable option. This is where creativity entes into the equation.
    Many clients cannot assess the quality of your advice and have to steer blind. If you don’t aim for what is best for them, how can they expect to get the best?
    It’s the only way. And while it may sound obvious, I am sure we can all see that it does not always happen like this.
    And obviously all other answers in this discussion are valid!