I do not think this means what you think it means: Wisdom from a trademark master, Lisa Widup

Lisa-? We met when I was just transitioning out of patent litigation into trademarks. The way in which you approached client management was incredibly down to earth and practical, whether you were working with a client on a few key trademarks or an expansive global portfolio. I think there is a lot you have to say about working cross functionally to manage brands and also teaching non-trademark folks about trademarks.?

What advice do you have for in-house counsel about approaching business leaders who perhaps have not had exposure to the world of trademarks before, or are unfamiliar with the level of investment required for a portfolio??

Always try to break the trademark advice down for your client in a way that’s easily understandable. If you launch into a multi-factor infringement test analysis, you’ll lose them. You want them to be engaged so they understand the most important points of your advice.??

Most people just want a high-level understanding, some may be interested in more detail and will follow up with questions, and some may need more detail from you if there is a nuance related to their issue that requires more explanation. Occasionally, business people can find it intimidating to seek out advice from their in-house counsel because they have to talk to “Legal” and are concerned about any consequences that could result from that.??

I always strive to make my clients feel at ease and build a real partnership so we can have an open conversation, and they feel comfortable sharing important details or asking relevant questions about trademark issues.

If there was one thing about trademarks that you feel is constantly misunderstood by business folks, what would you say that is??

That you can determine whether a trademark is clear by searching on Google or by securing a domain name or social media handle. It’s a process that requires searching domestic and international trademark databases as well, and should be done by a trademark expert who can assess the risk that any references poses.

How do you make sure you have enough time carved out in your day to focus on strategy? What helps you not lose the forest for the morass of trees when you’re working on large portfolios??

I use task management software to schedule periodic tasks of this kind - weekly, monthly, semi-annual, annual. I use this time to review the portfolio’s marks, countries filed, goods and services covered, etc. This time is also critical for reviewing the geographic reach of certain products if they’re not deployed worldwide, and other reviews of the company’s website and internal information. Prioritizing this time allows me to ensure I’m in line with the company’s key needs for trademarks, which countries to apply in, and the goods and services that are a priority for the business.?

What do you enjoy most about working in-house??

I like being integrated with the client and able to think deeply about how best to protect their IP.? When you’re at a firm, there’s always some distance that makes things a little bit harder. Being in-house allows me to be a part of the exciting work that my clients do in a way that you can’t on the outside. And there are no billable hours, which is a huge bonus - I don’t have to worry about how many hours I’ve spent on a project and can just focus on getting the work done.