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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Julia Matheson, Partner

Trade mark prosecution strategist, Finnegan partner Julia Matheson outlines successful portfolio management

What do you see as the main points that differentiate Finnegan from your competitors?

Because Finnegan focuses on intellectual property, we have resources at our disposal that are simply not available at other firms.  Those resources include:  (1) in-house investigators that assist with investigations for clearance, acquisition, and enforcement to determine, among other things, whether trade marks are in use and the scope of that use, the nature of the customer trade channels, the price points for such goods, etc.; (2) foreign-filing specialists with extensive knowledge of international filing and recordation requirements who stand ready to assist at a moment’s notice with global filing projects and convention-based filings; and (3) dedicated paralegals with specialized knowledge of TTAB practice and requirements. 

And, because we work in client teams rather than on a project basis, we are able to provide a level of continuity to our clients that is often absent at other firms.  This continuity ensures familiarity with client portfolios, client risk tolerance, and the nature of our clients’ business. 

Given the specialized nature of our practice, we have experience with virtually every issue that a client can encounter as part of its trade mark practice.  This institutional knowledge, team approach, and our customized document management system allow us to easily draw upon our collective expertise in favor of providing our clients with the most sophisticated and efficient level of service available.  We also pride ourselves on providing timely, practical, business-centered counsel—and we hear constantly from our clients that this approach differentiates us from our competitors.

Which practices do you see growing in the next 12 months? What are the drivers behind that?

From an online perspective, and given the advent of a wide range of new domains, we find that our clients are relying on us more heavily (as contrasted with their internal IT departments), to track sunset periods and keep them advised as new and potentially relevant names become available for registration.  We also have seen an uptick in the number of domain name disputes we are handling due to the increased availability of potentially infringing domain names. 

From a registration perspective, given the increased stringency of U.S. Patent and trade mark Office examination and the USPTO pilot program (from 2012-2014) focused on the identification and elimination of “dead wood” on the Register, our non-U.S. clients are looking to us for more hands-on assistance in crafting specifications that are more U.S.-centric, rather than relying upon extensions of protection into the United States that use European-style descriptions.  We are also seeing more European clients filing directly in the United States, rather than relying on Madrid extensions due to the complications inherent in prosecuting those types of applications.

The significant increase in online shopping has highlighted the continued problems that large retail platforms face from counterfeit and gray market goods.  Online retailers such as eBay, Amazon, and Alibaba, to name a few, have been forced to devote more resources to formalizing and improving the functionality of their policing programs in the face of a significant increase in the overall number of take down requests filed with those same retailers. 

What's the main change you've made in the firm that will benefit clients?

Over the past year, we’ve made a number of changes that significantly benefit our clients.  With the increased need for predictable budgeting, we added in-house resources to allow us to better track, predict, and report on expense levels.  We continue to refine our systems for fixed and capped fee prosecution and monthly or quarterly set fees.  We are very experienced in working closely with clients’ in-house legal teams to learn the ins and outs of their billing cycle, and adjust our billing policies to ensure our systems are as streamlined as possible. 

In recognition of our clients’ expanding enforcement needs in China, we have hired native speaking attorneys skilled in the strategic challenges of registering and enforcing marks in Asia to assist our client teams.  We have increased the number of trade mark legal assistants on our team, who work closely with Finnegan attorneys and serve as indispensable members of our client service teams.  These professionals not only keep our clients’ portfolios running smoothly, but also serve as key points of contact for trade mark prosecution matters.

Is technology changing the way you interact with your clients, and the services you can provide them?

Absolutely, yes. As technology continues to evolve, so do our methods of communication and information gathering. As electronic communications have become the norm, Finnegan has modified the format of our opinions, investigations, and reporting letters to accommodate the trends. We routinely provide our clients with personalized extranet sites that offer 24/7 access to their portfolios, dockets, and enforcement databases. Each extranet is designed with a particular client in mind—to accommodate needs that can vary based upon portfolio size and other factors. When we meet with potential clients, Finnegan’s extranet capability is often cited as a key factor in their decision to add us to their team.

Can you give us a practical example of how you have helped a client to add value to their business?

When devising a trade mark filing strategy for a new client, our first order of business is to review and compare their existing trade mark portfolio to business descriptions in press releases and on their websites to get a true picture of their business.  From there, we create visual aids that identify key jurisdictions, and provide an overview of coverage gaps and inconsistencies.  We and our clients are often surprised at the gaps this process locates and the cost savings from identifying aspects of the portfolio that no longer need to be maintained.

We use this audit process to generate a top-to-bottom strategy for new filings that will secure the client the coverage it needs to move forward with domestic or global activities.  As part of this process, we work with the client to identify its current and future business footprint and develop goods and services descriptions that ensure protection for the present and the future.

Our audit and new filing recommendations help clients reenergize their portfolio and transition our role from reactive to proactive, dynamic representation.

Are clients looking for stability and strategic direction from their law firms - where do you see the firm in three year's time?

With the increased activity in the merger and acquisition space, and increased health of the economic landscape generally, has come a significant uptick in the amount of due diligence work.  And given the employee turnover that is a necessary consequence of this type of activity, we find that clients are looking to their law firm more and more to be their repository of institutional memory.  In many cases, outside attorneys have more experience with a company and its IP history than the in-house team.

The clients who are sophisticated enough to come to our firm for assistance recognize that the trend towards commoditizing portfolio maintenance may offer present savings, but does not offer the best long term value.  They come to our firm for strategic, proactive, practical, and consistent counsel on national and worldwide issues.  They expect their counsel to keep on top of international legal developments, maintain international relationships, and approach their portfolio with an eye towards business and resource realities.  We do that now and fully expect to continue to evolve our services with marketplace and legal changes over the next three years.

Legal Developments worldwide

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