For the last ten years, I have been acting as in-house/outside trademark counsel at MIPS Technologies, Inc. MIPS specializes in industry-standard processor architectures and cores for home entertainment, networking, mobile and embedded microprocessor applications.
The company was recently acquired by Imagination Technologies Ltd., a global leader in multimedia and communication technologies. Imagination Technologies creates and licenses multimedia IP cores for graphics, video, and display processing, multi-threaded embedded processing/DSP cores and multi-standard communications and connectivity processors.
I visit MIPS weekly at corporate headquarters in Silicon Valley. I have my own office where I work with the legal people and the business people on staff. I have learned the corporate culture, familiarized myself with the technology and the products, and appreciate the company’s risk tolerance/adversity. I celebrate birthdays and holidays with the legal team, even participating in the holiday gift exchange.
As part-time in-house/outside counsel, I am not an employee, but a contractor who performs like an employee. I confer with in-house lawyers, confab with the business folks, present project cost estimates, proceed as directed, and monitor the budget on a quarterly basis.
Administratively, the “embedded” nature of my work with MIPS is efficient. The director of IP is relieved of most day-to-day responsibility for administering trademarks, yet participates in all strategic decision making in regard to trademarks.
For me, it’s not merely a paycheck or technical management of a portfolio; I’m invested in the success of the company and its legal department. My standard for a conflict of interest rises above the ethics rules,and I get the level of animosity any dedicated employee reserves for competitors.
Strategically, being embedded in the company enables me to recognize the opportunities and threats by validly creating, exploiting, enhancing, and leveraging value in the company’s marks. The challenge is creating and managing the portfolio to leverage trademarks to complement patents, copyrights and trade secrets. With a perpetual life-cycle, trademarks have the potential to perpetually maintain exclusivity in a proprietary aspect compared to other forms of intellectual property that expire.
A fractional embedded attorney can be an excellent value for non-consumer product companies that can’t rationalize employing a full-time trademark lawyer, especially for technical companies where patents are the primary form of intellectual property. There can be a direct return on investment by relieving the director of IP from daily responsibility for the trademark portfolio. There’s clear value in having direct communication between the embedded trademark attorney and the business team without the need to relay company information, time-sensitive instructions, pesky specimens, etc. By integrating an embedded attorney as part of the legal team, the trademark attorney can internalize the company’s mission and deliver exponentially more in terms of strategy. Thus, the results can be more than merely executing instructions; it can strategically implement company strategy.
Some companies try to get by with assigning trademarks to a patent or corporate or other transactional attorney. These are no substitute for the specialized expertise of an expert trademark attorney who practices trademark day in and day out, an attorney who keeps up with changes in relevant law.
A fractional attorney can be the right choice for any company who wants cost-effectively exploit their trademarks. A fractional trademark attorney views trademarks as a business tool to make a company successful. Moreover, monitoring the company’s competitors trademark filings can be a form of corporate intelligence—knowing what the competition is doing and where they are they doing it. An in-house trademark specialist stays on top of the law in an arrangement that creates a degree of certainty about expense.
As that attorney, I’ve found it’s not enough to be merely amiable and gregarious, though walking the hallways and developing relationships is key to being effective in an embedded relationship. She should have the kind of passion for this area of law that a skillful attorney practicing trademark law 100% of time would have, or be willing to take risks by inserting herself, reaching out as a creative problem solver, and know how to apply this body of law to achieve company’s objectives.
As an attorney that had corporate experience (I was a former vice president of marketing, both strategic marketing and marketing communications), I had the know how to understand and appreciate the challenges associated with this business group’s activities. Setting me up as an internal team member eased the interactions between legal and marketing on trademark (and copyright) matters. For example, because I have conducted so many searches, I can form a preliminary opinion as to the strength of a mark and the enforceability of a proposed mark. I can forewarn about wasting time on a descriptive mark or one with dilute and ubiquitous techy components, e.g., onix. When presented with a weak mark, I can discuss with the marketing folks whether such a mark may be acceptable, e.g., for a minor product. Sometimes availability is the goal, rather than enforceability.
Having your fractional attorney onsite is a key advantage, even if only for one day a week. If space is not at a premium, assigning an office can make a difference in the results. Your dedicated attorney can work on some other client’s matters, thus maintaining the regularity and availability for establishing and maintaining relationships with the business team. Even if working on somebody else’s matters, the mere presence of the trademark attorney onsite helps build the relationships.