Episode 15 – Jess Collen: Taking an Unconventional Path to Building a Top IP Firm

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Jess Collen

Jess Collen

Co-Founding Partner, Collen IP Intellectual Property Law, P.C.

Jess Collen took an unconventional path to becoming an attorney and co-founding a firm with his wife. They started their careers by first building a retail business together. They continued to run it during law school and even afterwards, while rising up through the ranks at a law firm in Manhattan. When they launched their firm in 1996, their business experience enabled them to hit the ground running. And they found they could also relate very well to the issues their clients faced. Today they handle IP work for top brands.

Full Interview Transcript

Michael: My guest today is Jess Collen, a partner and co-founder of Collen IP, an intellectual property law firm based in New York. They represent world famous brands from Omega and Swatch, to Archie Comics. They also do copyright work, patent filings and litigation. Jess also writes regularly for Forbes magazine on IP topics. Thanks for joining me, Jess.

Jess: It’s my pleasure.

Michael: So I was trying to capture all the things that your firm does in that intro and honestly, I didn’t even scratch the surface. Maybe you could give me a bit of an overview because you guys really do cover the gamut of IP.

Jess: We do. We try. We have a lot of different initiatives going on. The heart of our practice when we started and what we build from is the trademark registration practice, protecting our client’s trademarks in the US Patent Trademark Office, helping them clear the trademarks, search them, find new marks and then protect them. That’s still, and has always been, a core thing that we do. But we also have one of the country’s more active practices, most active practices I believe, before the US Patent and Trademark Office, Trademark Trial and Appeal Board for disputes within the trademark office.

It’s actually litigation, but within the trademark office instead of the federal courts where once…it gets into the whole trademark process, but once an application is allowed by the trademark office, then the public gets a crack at it and it’s published for opposition. And then any competitor or any other entity which thinks they have a problem with that trademark, has the right to initiate an opposition proceeding, which is really like a court action claiming that for whatever any number of legal reasons, the people applying for this trademark really shouldn’t have the legal right to protect it or register it. We do a lot of that type of work…a lot of that type of work.

We also have registered patent attorneys who help clients protect their inventions and designs in all the usual ways for, whether it’s a mechanical invention, a medical device, a new electronics component or product and the whole gamut. And we also have I believe also one of the more active dockets for so-called design patents, which really just protect the appearance of how a product looks. We do a lot of work in the luxury goods segment, so in the watch industry, in the fashion industry, for things like handbags and sometimes even high-fashion shoes and other articles.

The biggest single piece of what we do is actually federal court litigation all over the country in any kind of patent trademark, copyright, advertising-related litigation. Most often, we are plaintiffs trying to protect and enforce our clients’ rights, but sometimes our clients get sued as well, and we certainly defend them. So we work extensively in that area and a lot of our attorneys spend virtually all their time litigating in federal court. We have an advertising law practice which is an offshoot of, we think sort of…for the last several years, and as an off-shoot of our litigation practice and our overall advising clients. A lot of times, there’s a real interplay between Copyright Law, Trademark Law and advertising-related issues.

And then for the last several years, also, one of our partners who’s been with us a long time has been developing our privacy and data security practice which is, of course, an enormous field and we have a small, but growing, practice in that area. We’re fortunate to have a pretty good level of expertise there. So that’s not so much in a nutshell.

Michael: And also, I saw that you work in the restaurant segment as well.

Jess: Yeah, we do. We do, and that touches on many of those different practice areas that we work in. We work in the restaurant hospitality industry, advising restaurants. And it’s interesting because obviously it’s a huge segment of the economy, and restaurants have all sorts of issues. We sort of came into the restaurant industry, besides always having had some traditional clients in that space, from the social media side, which is really related to our advertising practice because social media is such a huge thing in the food service industry in particular, but in hospitality in general.

Restaurants and hotels live and die, for better or worse these days, by the reviews they get on social media sites; Trip Advisor and Yelp and all those places, and there’s lots of advertising and promotion that goes on there. We were just giving a seminar the other day, me and Kristen Mogavero, one of our associate attorneys, to a group we belong to called The Luxury Marketing Council. And we were talking about some of these issues that come up in the hotel industry in particular, and the fact that hotels and restaurants have all sorts of pressures to have good ratings because as I said, so much of their business success is based on how highly consumers review them. And it’s very tempting for people to incentivize customers and clients to give them a good rating.

And there’s a legal line to be drawn between on the one hand, encouraging your people, your customers to say, “If you like what we did, we’d be happy if you’d give us a favorable rating.” That’s fine to either give people some financial incentive to do that, whether it’s a $25 coupon or in some cases, by so-called influencers to pay hundreds and sometimes thousands of dollars to write a favorable review you can’t do because essentially, it’s a form of false advertising. You’re making it appear as if this is an unsolicited testimonial, where in fact, it’s a paid advertisement. So there’s a lot of gray areas there on the social media side and that’s a lot of what we do in the hospitality industry.

Michael: And it’s interesting, too, because it occurs to me that there’s a legal framework and there is the right thing to do, but then it also seems like maybe there’s a question of, “Well, who is tracking this?”

Jess: Yeah.

Michael: Why not do it? If you’re small potatoes, does it really matter?

Jess: I have to say because I have to say, yeah, it matters. But it’s like almost anything in the law. Basically, you can do whatever you want if you don’t get caught. I mean, that line comes up in income taxes. You can deduct…I’m a tax lawyer, you can deduct whatever you want, as long as you don’t get audited. It almost reminds me…one of the clients we’ve worked for, for many years, is the Andy Warhol Foundation. Andy Warhol was famous for saying, “Art is whatever you can get away with.”

So yeah, you can do that stuff, and if you’re a small operator and you do whatever you want…look, it depends on harm to competitors, too, so who is going to complain? If you’re a local restaurant and you have a fierce competition against another local restaurant, and you are paying or just even getting your friends to write stuff about the fabulous salad that they had at your restaurant and the person hasn’t even eaten there, then your competitor is going to have a complaint. What they can really do with it, whether they’ll spend the money to go to court, whether they just write you a letter…but in a worst case scenario, you can’t do it.

There is this concept that Kristen was talking about in our presentation the other day called astroturfing, which is exactly that. Astroturfing, in that setting, is where you get people to basically write phony reviews to prop up your ratings. You are landscaping your online space with fake grass.

Michael: Right, right. I like it.

Jess: Yeah.

Michael: That’s awesome. Well, okay, so take me back. Tell me about the founding of the firm. What were you doing before that, and then what led to the decision to move forward in your own firm?

Jess: Yeah. Well, there’s nothing traditional about any part of my career path. I started out…first of all, I founded the firm. This firm we founded 20 ago. We, meaning me and my wife Jane, who is also a trademark lawyer. So we started this firm with the two of us and a part-time associate. We had come from another firm that we had both worked with in Manhattan, starting in the mid-80s. And by the time we started this firm, we were partners in that firm and we just had the usual agreement to disagree, in a sense, with our former partners and we decided to go off and work on our own.

During the time that we were working in Manhattan, we also had…and having very, very young children, we also still owned businesses in Massachusetts, which is what we were doing. We’ve worked together. By having married 37 years, Jane and I not only worked at these two law firms, but we also owned these businesses together before we even ever went to law school. We went to law school together while we were, at the same time, working seven days a week in the retail industry.

So we were going back and forth from midtown Manhattan up to western Massachusetts on the weekends, almost every weekend. We did that for years, which was kind of insane, but that’s where I think I got a good sense of the trademark world, by the way, from being in business. And I think that’s one of the things that gave me a business background, in terms of what might be valuable in running a business and growing a business because when you come out of law school…it is a little different today because law is so competitive and because the legal industry right now is really retrenching in many ways. And it’s tough for law school; their applications are way down, jobs are much less available than they had been, say 10 years ago, and certainly before the Great Recession.

So having come in with a business background I think was extremely valuable to me because as I was saying, law schools didn’t teach you any…I mean, when I say they didn’t teach you anything, they taught me literally nothing about the business of running a law firm and I don’t believe that there was even a course that was available as an option. And I think curriculums are a little different today and the practical training is more important. So that’s where we came from. So we started this firm in 1996 and grew from there.

Michael: You mentioned retail businesses, what are the businesses that you own?

Jess: They were retail pharmacies, drug stores.

Michael: Okay, but that wasn’t challenging enough, you decided to go out and pursue a legal career?

Jess: Sure, why not? Why not? Actually, my goal…at some point before I got derailed saying it wouldn’t be a bad idea to go to law school, I said there is really nothing traditional about my career path and Jane’s career path. We actually decided to go to law school because we were running these businesses and at some point, we thought it wouldn’t be a bad idea to go to grad school. And so we were thinking about going to grad school at the…this was in western Massachusetts, so we were thinking about going to the University of Massachusetts in Amherst for an MBA program. But it turned out that Western New England University in Springfield, Massachusetts, which has the only law school in the Commonwealth of Massachusetts east of Boston, was an easier commute so we decided to go to law school instead.

Michael: Okay.

Jess: And so it just happened.

Michael: It’s interesting because you…I mean, sometimes when you’re in it, you can’t always see the distinction but I agree with you, that comment about having business experience is invaluable towards being in the law firm environment. Do you think you could identify what was different about your perspective than some of the peers that you’ve met once you got out into the world of law firms?

Jess: I think there’s a couple of things. One is actually a practical background that I had that I think helped me significantly in my chosen area of practice and principally, that although we’ve worked actively in all these areas, I’ve done more trademark law than anything else. And being in the retail industry gave me a really good feel for trademarks and the importance of brands and how products sell, and even how manufacturers will create their packaging and their product names to mimic a successful market leader; even to the extent of dealing with salespeople every day who would come in and have a new, improved product that they would say, “Put this right on the shelf next to,” I don’t know, pick an item, “Tylenol.”

And it’s the store brand thing that everyone is so familiar with today. But when I was in the retail business, so say in the early 80s, private label brands were always around but not nearly the way they are today in the sophistication of packaging and similarity to the store brands. And there’s a very fine line between looking like a national brand and infringing rights, but I really had a very good first-hand sense of what that was. So from a professional point of view, I think that was a huge advantage to me in understanding trademark law issues from a running a business perspective. Just the concepts of having to make a payroll, the concepts of actually promotion and advertising were things that I always assumed that you needed to do.

And again, at the risk of sounding like an old guy, which I guess I am at this point, when I started out practicing law, promotion was almost taboo and it was very traditional. You would do speaking engagements, you would join clubs, you would meet people and it was really the mavericks who were marketing. I remember actually being astounded, and this was probably around 1987, when I received a cease and desist letter on behalf of a client from a firm out in Minneapolis that was a trademark and advertising law firm.

And they had this splashy letterhead with the firm name written vertically on the left margin and some big logo, and it was all in bright green. I remember thinking, “That is what a trademark law firm letterhead should look like. And it should share your creativity and you should be part of the marketing team with your client. So that, again, somewhat feeds the substance but at that time, people weren’t thinking about marketing and promotion so much.

But even the basics of running a business and…a cost benefit between what employees you have and what work they are doing, allocation of resources. I was very early-on involved in digitizing all of our…I mean we’ve had all of our…it was astounding and we’ve had all our records electronically captured for a long, long time. It was actually astounding to me that about two weeks ago, we were looking to recall an old document that I had remembered from a case that we had done in the mid-90s or something. And I couldn’t believe that we could access it on our network in electronic form, that we could actually have electronic records at this point that go back 20 years. So, looking forward to how we could invest in things like that.

I hear from different vendors and accountants and people that…I used to hear, I don’t think it’s so much the case anymore, that lawyers aren’t necessarily good businesspeople. They don’t necessarily run a business, they think they’re running a profession and they don’t make the correlation between the fact that yes, it is a profession but if you don’t run yourself as a business properly, you won’t have a profession to carry out.

Michael: Right. It’s interesting because I think part of the challenge, especially in the early days of a firm, is you might have a perspective of being a business leader, but you are also the product.

Jess: Yeah.

Michael: I mean, it’s your time, right? So that really limits your ability to invest effectively in doing things that create the foundation for the future success.

Jess: Yeah, it’s definitely a conflict because at the end of the day, you certainly have to execute for your clients and you have to provide good service, which again, is one of those things that everybody says but it’s absolutely true and that’s why everyone says it. You have to be able to deliver. And it’s not at all uncommon actually to have different things on your desk that are competing priorities between, “We’ve got this issue coming in from the client, but there is this speaking engagement that someone has asked us about.”

I just had this happen two weeks ago because we were on…Jane and I were actually on a client-visiting tour and just by coincidence, we had travel going on all over the place; in the US and then in Europe, and a lot of meetings set up in a short period of time. And at the same time, I had committed to doing several different presentations. I had four different PowerPoints that we were trying to put together at the same time. But all that’s happening in the background of having federal infringement cases we had to deal with.

And as much as you want to get all that stuff done, everything isn’t equal and you are the product. At the end of the day, there is no question; the priority is taking care of your clients’ issues, but it’s tough and it’s tough to juggle those things. And it’s tough to not always go after what one of my colleagues calls “the next shiny object” when you’ve got work that you have to do sitting on your desk, and it makes it hard to address those other issues.

Michael: Okay, so you started out the two of you and an associate. When did things start picking up in terms of adding people to the firm?

Jess: I think it started within probably a couple of years. We had steady business going on. I can still remember the first piece of work that anyone asked us to do once we started off on our own, and even though it was a very routine trademark search that we would do all the time from a client who we’d already known, it was a big thrill to actually have that work keep coming in.

So we didn’t start from scratch; we had existing contacts from relationships for over a decade so it was just a question of how many clients would stay with us and fortunately, most of them did. And then through a number of different issues happening with some of our clients in their businesses, we got very involved in a bunch of infringement issues that had been very hot in one of our clients’ industries. We get very involved in some patent litigation for a couple of other clients and we essentially expanded to keep up with that.

Michael: So let’s see, it also looks like you’ve, your current configuration, you have a lot of folks who have come over at the partner level with experience from other firms. When did that start happening, or what were the things that you did that enabled you to be attractive to those folks?

Jess: I’m not exactly sure what made us attractive to those folks, but I think I’ve always encouraged collaboration. There is a lot of politics that goes on in law firms, like any other business, revolving around money and how people exactly will share revenue if they come in with clients and so forth. I’ve always been very open to sharing revenue because getting a percentage of new work is a lot better than getting zero, or…I’m sorry, of getting 100% of zero. So to me, it’s not a difficult thing.

I think I have, over the years, had the ability to also work with people with all different perspectives and needs. Not everybody would agree with this, but I tend to see myself as easy going and really seek out ways to collaborate with people to give them what they need to achieve as well. And I have a lot of long-term relationships with several of those people who have joined us. I’ve worked with on and off, in the past, over the years and when they found themselves in a position to want to make a change in their lifestyle or their firm or whatever, we were able to work out a useful relationship.

But I think the lesson is really like with client development; everything is about relationships and you have to nurture every relationship. And I hate to say this because it just sounds all cliché, but to me at least, it’s just true. You have to treat people with respect. You have to understand what they want, what they need, and then try to see if you can satisfy it and if you can’t, you can’t, and then you need to be honest with yourself and them about it as well.

So you don’t, for example, say, “Hey, here’s an attractive piece of business that this client has and we’d love to work with this company. So sure, we can join forces on this,” and then ignore the fact that there may be a number of fundamental issues or different goals. You can’t just get in the work, just to take the work. You have to really make sure it’s going to work or it’s not going to be a success for anyone.

Michael: It’s interesting though because sometimes it’s hard to judge those things because it’s healthy to pursue opportunities that you’re not 100% certain how you’re going to deliver on because that’s part of the growth process, right?

Jess: Yeah, yeah.

Michael: So do you have a perspective on…how do you perceive when you’re overreaching in that regard?

Jess: I think it’s somewhat of a gut check. I think when any of us make decisions, sometimes you have a sense and to me, the hardest decisions, even what seem like the most risky decisions like starting your own firm, didn’t seem risky to me. It just felt like the right decision to make at the time, and I had a sense that there were enough clients to support what we wanted to do and it would really be beneficial to have the flexibility to grow our practice exactly in the way that Jane and I had hoped to develop it.

And that didn’t seem like a risky thing to do it and in fact, in adding a lot of the relationships that we that we’ve added, none of them really felt risky to me because it just seemed like a great fit. I think there is that intangible where you tend to know if you’re trying to force a square peg into a round hole, and if something tells you that that’s the case, you have to take a good long look at it and try to analyze, honestly, whether in fact you are trying to just hopefully wish.

A business development book I read several years ago is called “Hope is Not a Method,” and that’s very true and you can’t just wish it to be so. But on the other hand, there’s lots of things that give us all anxiety and concern because it’s new and it’s scary and it may be risky. You have to be able to define the difference between something that’s causing apprehension just because it’s new and it’s unknown and something that’s causing apprehension because there’s just something deep in there that you really…your instinct tells you this may not be the right opportunity or it may not be the right client or the right relationship.

One of the other clichés is the best client may be the one that you never work for. When you talk to a potential client and you know, as much as their work may be interesting and challenging and exciting and possibly profitable, that it’s just not the right person to work for. That doesn’t happen all that often, but we’ve all had that experience. And I’ve certainly had the experience of, I don’t really like the term but sort of firing clients on occasion when we just know it’s not working anymore or their expectations of us are not really what we are prepared to deliver or can best deliver. Or sometimes you just know that the client contact person or the client itself is just sort of too demanding or has unrealistic expectations.

I separated from a guy in the middle of a very contentious trademark infringement lawsuit once because we were down in Texas, deposing the opposing party, and this guy was all over me at a break saying…but he’s giving you all these answers and you know that they’re wrong and you’re not…and he is yelling at you and you’re not yelling back at him. That’s not the way to practice. That’s not going to be effective in a deposition.

My theory is that there’s a time and place for everything, but most of the time, you’re there to get information. You want to learn from the witness and figure out what they’re going to testify about a trial so you let him talk. But this guy, the client, said, “But he’s making us look foolish because he’s saying all these things that aren’t true.” And I said, “I know, that’s the point. That’s what we want.”

So I was having dinner with him at night and he was expressing his concerns again and I said, “You know what, Jesus? I think we really…you should really, when we get back to New York, interview some other law firms.” Said, “No, no, no I’m not saying I don’t want to…” I said, “I really think you need to do that.” We separated from him on that lawsuit after about two months, and then I followed the course of the case afterwards and he’d ended up going through two other firms before he got to trial. So there’s all those instincts that you have to listen to on relationships, whether it’s the people you work with or the people you work for.

Michael: Yeah, that one’s really interesting to me because, I mean, what was your sense…? I realize in your telling the story, he came across as fairly reasonable in listening to you, but did you feel that you couldn’t move forward effectively because of what he was trying to get you to do? Or you just wouldn’t enjoy the experience of it?

Jess: Yeah, I mean, partly he was trying to…it wasn’t really that reasonable, actually. He wasn’t that reasonable about it and he got offended at first, saying, “What do you mean you don’t think you’re going to work for me?” But I think it was really a matter of if we had continued…what I told him actually is…I tried to just make it objective and say…I certainly didn’t say you’re a difficult character. I said, “Here’s what’s going to happen. If we take this to trial, I am going to litigate this case the way I think works and the way my experience and training tells me is the best way to take this forward. And if you’re looking for different skills or traits in your lawyer, you should find them now because there’s no guarantees at trial.”

He knew that we had a legitimate case. It wasn’t a great case, it wasn’t a weak case. I had told him that any number of times. I said, “Neither of us is going to be happy if this case at the trial level doesn’t turn out the way we want. You’re going to be second guessing yourself saying, ‘I knew I should have changed lawyers’ and nobody’s going to be happy.”

Michael: Right. Yeah, yeah. Can you think of another example of an opportunity that was available to you that your gut was telling you not to pursue, whether or not you did in fact honor that feeling?

Jess: I’m sure there are many. I mean, nothing is jumping to mind right at this minute, honestly.

Michael: Fair enough.

Jess: Yeah.

Michael: Well, I’m also curious in terms of the growth of the firm, was there a time where a lot of folks started coming over who had that high level experience? Was there a shift that occurred or was it pretty organic, just a little bit at a time the whole way?

Jess: It wasn’t so gradual. We actually made a conscious decision several years ago not to grow beyond a certain level. We had taken on additional office space and several additional lawyers, and part of it was all dictated at that time by some litigation that we were handling. At the end of the day, it was much busier; many more things to do, in theory, but it wasn’t any more rewarding and it wasn’t necessarily…it didn’t seem like it was that much more profitable.

And I actually started to do some digging and found all sorts of surveys that showed the profits-per-partner level of firms didn’t escalate in lockstep with the size of the firm because there were certain efficiencies that you had, up to a certain level, and then you reached another level of people and you had new levels of management and technology and so forth that you needed. And the difference between being, say, 20 lawyers and 30 lawyers wasn’t necessarily more profitable for anybody.

And my goal was never to have the next giant IP law firm, I figured that that had been done. It’s been done many times over the last 100 years and it didn’t really seem like a goal. And I had other things that I was interested in along this theme that I raised of unconventional so…Jane, for instance, who has always overseen our firm’s trademark application practice, which as I said was really the core or the heart of our practice, got involved in writing books and then children’s books. And she’s actually published several children’s books and is close to finishing a longer novel, not a children’s book. So she’s spending a lot of time writing.

I also took some of my entrepreneurial interests and had been supporting my son in his effort and providing advice and counseling, together with a couple of the other lawyers here, including one of our colleagues, James Hastings, on a new business that he started up in Boston. And his business is…it’s called Cognate and it’s actually a trademark service business which provides a new paradigm for protecting trademarks by providing a forum for people to register their rights and their trademarks, apart from the Patent and Trademark Office.

And I think that’s a whole other issue, but I’ve really been interested in working with him on that. Actually, I was just in Boston a couple days ago where his company was invited to a meeting that was being sponsored by The Boston Business Development Council, and they had the director of the Patent and Trademark Office, a woman named Michelle Lee as their guest in the small groups meeting. So he was able to invite me to go along. So I really had a lot fun doing that and trying to expand my entrepreneurial instincts in a related field, but in a way I can be in and out.

Michael: And they’re called Cognate?

Jess: Cognate, yeah.

Michael: Just looking for their website, is it cognate.com?

Jess: Uh-huh.

Michael: Got it. Okay, common law trademark registry.

Jess: Right, right. So the idea is that when you do the math…and part of this obviously comes from some of my experience. And one of the things that Bennett, my son, has been telling potential partners and investors is that he’s…he graduated from a Boston College about five years ago now with a degree in environmental…with a BS in Environmental Geo-science, which has nothing to do with what he’s doing right now. Part of his spiel is telling people that he got his law degree at the kitchen table with his two parents being trademark lawyers.

But part of the issue here is that if you actually do the math, the percentage of names and words that are used in commerce in the United States, that are actually registered with the US Patent and Trademark Office, is extremely small. It’s probably a few percent, at most. And way over 95% of the other names that are used in business are never registered, for a whole bunch of different reasons. Principally, they’re small businesses, companies that aren’t aware of the trademark registration system, they are daunted by the cost and the time and the complications.

It can be easy to register a trademark in the US; you can go online and do it yourself and if all the stars are aligned, it can be nothing. You can literally file your application and nine months later, you get a registration. But more often than not, the process doesn’t run like that at all, and so this is sort of a trademark registration for the rest of us.

There’s also a raft of things out there that companies use. For example, cosmetic companies which have hundreds, thousands of names they invent every single year for shades of nail color and lip gloss, and paint companies which have a shade for everything and everything has got a name. None of those are registered and it doesn’t make sense for them to register those things because they’re transient, they only take a couple of years and it’s not a major product name. And if there’s a problem with them, they’ll move on to some other name. No one’s going to not buy this shade of color they like because it’s not called “mint green” and they have to call it something else instead.

But nonetheless, there’s no home for all of those millions and millions of names that are used, so that’s what his business is doing. And so I’m advising on…obviously, there’s lots of trademark law issues and we’re trying very hard to be sure that nothing misrepresents, that this is never presented as an alternative to federal registration because it’s not. It’s just different. So I had a lot of fun with that.

Michael: I was wondering what the benefit to the registrant is, if it’s not tantamount to proper federal registration?

Jess: To the registrant on the Cognate site?

Michael: Yeah, yeah.

Jess: Well, what it does is it allows you to lay out your claim since anybody who uses a trademark or a name in commerce can acquire common law on registered rights. The way the US legal system has evolved, the first person to use a name, owns superior rights in it regardless of whether it’s ever registered with the Patent and Trademark Office. So when you use a name without registration, which is most of these names, it’s very easy to be flying under the radar and nobody knows.

Maybe an easier way to do it might be to back up, just briefly, if we have time. So the traditional way for somebody to clear rights in a name would be to do what’s called a “full search.” And a full search of a name encompasses federal registrations, the registration records of all 50 states plus US territories, each of whom has their own separate registry and then common law trademark use.

So the companies which are adept at doing trademark searching, of which there are really only a handful, Common Law trademark searching, access all these records of not just websites, but business directories and publications and so forth; of state registration records, not of trademarks, but of business names and company names. And so to clear rights in a trademark, you try to see if anybody has ever used this name on a similar good or service, and you should only go forward and use it once you’re sure that no one else is using this thing.

The current system though, because of the way it’s this intricate…the search firms claim to look at literally tens of thousands of different data points to find out if this name is out in public. Trademark searching is a little bit like needle in a haystack. You look at huge mountains of information, and maybe you find one little bit of information.

The Cognate concept is exactly the opposite. Well, if you’re using a name, all you have to do is sign up and people will find out. And you can put in the same information that the Patent and Trademark Office will allow you to do so there’s public notice, so no one will adopt your name by mistake. And when a company is trying to clear its rights to a name, they’ll know you’re out there.

So you self select. You say, “Here is my name. Here’s how I’ve used it first. Here is a sample.” All of it’s the same information you give the Patent and Trademark office. And so now it’s out there are no one can claim, “We didn’t know your name was there” because you’re on this database. So I mean, the idea would be that every company and every name uses this as the first line of defense.

And then they’ve got some other benefits that they add to that like if you put your name on the database and you sign up for the Cognate service, you will also be alerted when anyone files a federal trademark application for the same name or a similar name for a product and service. You’ll automatically get an email telling you what’s going on, so it gives you a little bit of monitoring benefit as well so you can keep an eye on what’s going on.

Michael: Got you. Yeah, I appreciate that. I also wanted to ask the process of…so you write regularly for Forbes…

Jess: Yeah.

Michael: …and I’m curious how that started. Maybe you can just tell the story of how that came about?

Jess: Yeah, sure. That just came about from…I had been contacted a couple of times over the years for quotes. I knew a guy at the time who was with Forbes, and just coincidentally, he was in the process of…Forbes’s did a major reorganization of the way it did business. Like every other print publication, they couldn’t continue on as they were.

And they made a concerted effort to have different, what Forbes calls channels, or different lines of business. And they started this entrepreneur channel on Forbes.com and were looking for people who could write about topics that were of interest to entrepreneurs. So at one point, my friend, a guy named Tom Post, reached out and asked if I would be interested and available to sign up to do that for a while and I said, “Sure.” It’s really as simple as that.

Michael: Okay, okay. So I’m curious just in terms of…I mean look, a big part of being a leader at a firm is just being visible, but I’m curious if you’ve ever seen a direct relationship between your writing, in that context, and people reaching out to you?

Jess: I have. I’ve heard from a lot of people and sort of on two different…so from a marketing standpoint, two different levels. One is I certainly hear from people who just read what I write and contact me, sometimes for, “Oh yeah, I had this happen to me,” sometimes for free legal advice and then a couple of cases, too. We really haven’t had any major client relationships develop out of that that I can think of, or at least that I know of, which is one of the other things; you never really know why people come to you or where they come from. And I don’t actually always see every new piece of business that comes into the firm, but they come through other people or I’m not in the office when someone contacts us or whatever.

But there’s the two levels. There’s the direct contact, which I’ve certainly had. And then there’s also everything that gets put on Forbes, also gets sent out, and links to my LinkedIn page, for example. And I will hear from lots of colleagues at various times, making some reference to something that I’ve published at a Forbes piece in a given week. So to the extent, I’m not personally a big social media guy. Our firm tweets stuff out every day on IP issues, but I personally don’t do social media stuff because part of my other thing which ties into our privacy practices, and it’s probably generational, too, but I still maybe have a stronger sense of privacy than maybe some people who are younger than me do.

But nonetheless, I do get a fair amount of response on LinkedIn from people who see our…a lot of times colleagues, other IP lawyers. We do a lot of work with IP lawyers in other countries and when they have issues in the United States, they contact us. It’s a big part of our practice and we do work for their clients in the United States, and that’s very common in the IP field which tends to be very international.

A lot of us IP lawyers in the US and everywhere else attend a lot of international conferences and meetings where you make and sustain relationships with firms in other countries which have clients which will need work to be done in United States. And we also have clients in the United States who have work that needs to be done overseas. So when we need to have someone overseas, we know exactly who we’re dealing with and we have really good, long-term relationships and it’s not just a blind referral.

Michael: Got you. The other thing I wonder about was, so let’s say that you are bringing in a prospective client through some other means. The fact that you’re doing that writing in that forum is also a mechanism for demonstrating credibility.

Jess: Yeah, I think so. I think so. Sometimes, actually, there’s a particular thing that I may have written that’s on point. And other times, I think a lot of things that lawyers do, I mean the two principle things being speaking and writing, also reinforce that you have something to say. The big buzzword these days is “Thought Leadership,” which also isn’t a one of my favorite expressions but that’s a big thing.

And it’s a competitive world and clients want to know that you’re more…look, there’s a lot of good lawyers out there. There are a lot of smart people who are lawyers. There are a lot of really smart people in our field. There are a lot of outstanding IP lawyers in the United States, whether it’s for trademark registration, whether it’s for litigation, and clients and prospective clients want to know that you really are thinking about issues.

I think it gives you some kind of credibility when you speak or write about things that you have a different perspective or you’re capable of having a different perspective, and looking at a client’s problem maybe with fresh eyes and with a good, creative, hopefully cost-effective and efficient approach, as opposed to just going through the traditional route. And I think writing and speaking, in particular, have probably always been ways that lawyers have helped to advertise, if you will, that they’re interested in the profession.

And there is also that piece that comes from writing and speaking about, just sharing your knowledge on what you’ve learned over time and helping people out. There’s only so many opportunities, for example, for pro bono in this profession or at least a lot. If you’re a criminal lawyer or of you do housing and things like that, those are like everyday life’s issues and I have great admiration for the lawyers that actually do that stuff.

Corporate lawyers of any stripe provide what I think are very valuable services to our clients and their assets, but it’s a different type. And we’ve actually handled some fairly complex, interesting litigation on a pro bono basis over the years in trademark copyright cases, but to the extent that by writing or speaking, you can help somebody move their company one step further or keep themselves out of trouble. That has its own benefits as well.

Michael: Right. Well, the thing that strikes me about that is also the process of preparing to speak and writing on topics helps you to clarify your own understanding and thought, and so it’s really valuable in that way, too. So here’s the other side of that, is it takes time and energy to do those things. You’re running the firm; you’ve got, I presume, direct client responsibilities. Do you have any thoughts about how you’ve managed to fit those pieces together and not get overwhelmed with the sheer volume of the work?

Jess: I have a lot of thoughts on it, but nothing that’s very helpful I think to people; it’s just work hard. A lot of people work hard and work long, and you have to try to work smart. You have to keep it in perspective. I’ve got four kids who are all grown now but when they were younger, I also did all the parental stuff and coached sports teams and got involved with the church stuff, and all across the board, at the same time, litigating a national practice and keeping in touch with clients, internationally.

There are some people who are traveling every week, sporadically, depending on what’s going on. But almost every year, certainly every year for the last God knows how many, almost since I started, I go overseas two, three, four times a year. That takes time and it takes time away from practice. Sometimes, that’s been specifically for a case. I was in court in Europe a few months ago when I was there, but I was also in Europe two weeks ago, mostly for meeting with clients and making a presentation. There is no magic bullet. You just have to try to keep your perspective why you keep busy and be prepared to…just hard work, one of the many other clichés.

Michael: I have a sense, although we don’t know each other well, I have a sense that you are enjoying yourself.

Jess: I am. I am. I feel very fortunate, particularly in this area, because it’s really fun. I mean trademark law and copyright law are a lot of fun. We had a copyright infringement case we did, and a trademark infringement case for the Andy Warhol Foundation over a famous, iconic banana design.

We do a lot of work for, as I mentioned, for a lot of luxury brand owners, for Yves Saint Laurent, for Omega watch company, and trademark issues are really fun. One of my colleagues this morning was just talking about a case they’re doing which is a trade dress infringement case over a cleaning product. But you get market surveys; you really get out and figure out what consumers’ minds are.

It really is, it’s an interesting field. I’ve been very lucky in a way because I started when trade, first of all, when intellectual property was not a term that was even known, really. Even within the legal community, it was not unknown to say you were an intellectual property lawyer to another lawyer and they would somehow think you were saying you were like a real estate attorney or a property lawyer and that you thought you were smart or something. But it really wasn’t a well-known firm. It was a patent trademark copyright firm, is what we dealt with.

And then along came the internet which changed everything and fell into our lap as IP lawyers. I remember giving a series of lectures with this organization that had asked me to speak across Canada, actually, probably 20-plus years ago on internet domain name infringement. And I was having a hard time finding anyone who wanted to join me on the panel because courts really hadn’t dealt with that issue yet. They said, “Well, how can we talk about case law? There’s no case law.” And I said, “Well, that’s what makes it easy. You don’t have to worry about…”

Whenever you give a speech to lawyers, there’s always some guy in the back of the room who just had that case the day before you and is sure they know twice as much as you about the subject, and they probably do. In that case, that wasn’t an issue. So I somewhat fortuitously fell into an area that’s really grown.

On the patent side, things have changed remarkably as well. Some aspects of patent litigation haven’t changed quite as much and although what is patentable is a whole new world from what it was when I started, it’s changed a lot more about the nuts and bolts of the practice of law. But where we look for things like infringement in trademark and copyright. I mean, imagine copyright, right? When I started as a copyright lawyer, you needed a copyright lawyer if you wrote books, if you were a musician, if you were an artist.

One of the first copyright cases I ever had actually was about an industrial brochure and it led to a copyright infringement case because our client had had a breakup with its former supplier and after that breakup, our former supplier just took all of our client’s materials and copied them, literally. So that was a copyright infringement case, but other than that, it wasn’t so much an everyday realm.

Think about today with music downloading and video downloading and every company has copyright issues because everybody has a website. So where do you get the pictures from? Where you get the content from? What do you link to? How do you present this information? None of that stuff existed when I started in this field and so I’ve been very fortunate in that way. So it is fun because it’s changing all the time.

Michael: Well, man, so many awesome comments. I really am enjoying the conversation. I wanted to maybe look back to one thing and I don’t want to go too long, but when we were chatting before we started, you talked about some of the things that you share with some of the attorneys in your firm about your perspective around building business. I wonder if you could just go back to that.

Jess: Sure. Sure, building business in any business…and again, I think that you can’t…in many ways, every business, particularly service businesses, is the same. All of us in our own businesses…and I learned this from dealing with clients, everyone says, “But you have to understand, our business is different. Our business is really competitive.” And that’s everybody’s business.

If I have a client…which I did, actually for a long time, coincidentally, who made eye glasses and I’d go to their trade shows with him. And you could have the entire Javits Center in New York filled with eyeglass products, hundreds of thousands of square feet of display space, but it’s no different for us. When I go to the International Trademark Association meeting which next occurs in Orlando in May, there will be 10,000 worldwide trademark lawyers there.

So every business is competitive, but every business I think shares this in terms of developing relationships. The metaphor I like to use is agriculture, and that is you plant seeds and sometimes for certain varieties, you plant seeds and they bear fruit pretty quickly. But most of the time, they don’t and they have to be cultivated. And in our field, that cultivating those relationships…because people, when they hire someone, are hiring…it’s really about trust and they need to get to know you and trust you.

It takes time and it commonly takes years to develop, literally years to develop relationships with people which may then turn into business. If you go and expect every time you speak to be surrounded afterwards with people clamoring to purchase your services, you’re probably going to be disappointed. Every once in a while, you’re in some area where that just happens to be the right thing. But all of us have spoken, way more often than not, to groups where you collect a lot of business cards, you have a lot of discussions and sometimes five years later, someone who still had your card hanging around now has a need for your services. So you really have to be patient and you have to cultivate. That, to me, is really the key and I’m sure it’s not unique to the legal profession, but at least that’s been my experience.

Michael: Have you seen maybe associates who were very hungry to build their book or business who went about those same activities with a desire to close business immediately and have that create a negative result because they’re approaching it incorrectly?

Jess: Yeah, that’s a great question. And absolutely yes because when you do all this effort, and as you had said earlier, Michael, it takes a lot of time and effort away from your practice of law and other things in your life to prepare for speaking engagements and write stuff and all those things. So you want to see tangible results. And so if you press it and/or let’s say you make a relationship, because it is about trust, you can’t then just…it’s great to follow up with a phone call or an e-mail, but even better with a phone call, but you can’t then be immediately pressing, at least in my experience, and maybe that’s personality. Maybe other people are much more successful than I am, doing it a different way, but I don’t feel that you can call up and say, “Okay, so maybe you can turn over your company’s entire IP portfolio to us because we met you yesterday and we seemed to get along well, and you’ve said you thought that I did a good job.”

Not only doesn’t it work, but it’s counterproductive because then no one wants to feel harassed in a sales pitch either, let alone for an area like the law where there are substantial important rights at stake. And you want to feel like you’re hiring this person because you trust them.
And so yes, I have had that experience, many times over, over the years with different people who have either pushed the buttons too hard, too soon, or have shied away from doing more of the efforts they should because they feel it wasn’t fruitful.

Michael: Yeah, what’s the point?

Jess: Yeah.

Michael: Yeah, and also what can happen if you’re trying too hard to close a deal at the wrong time, it almost feels like you’re desperate, and who wants to hire an expert who is desperate for business?

Jess: Agreed. I agree with you. People want to deal with people who are successful. I think that’s another great point.

Michael: Well, thank you so much. I really enjoyed this conversation.

Jess: Thank you, I have, too.

Michael: It seems like you’re really in a nice flow with the different things that you’re doing. I enjoyed this opportunity to get some insight into the firm.

Jess: Well, I enjoyed talking to you, so thanks very much.

Michael: Yeah, you bet.

Key Links

Show Notes

  • Collen IP covers many different aspects of Intellectual Property law [0:50]
  • Addressing legal issues around advertising and promotion for restaurant clients [4:30]
  • How should small clients think about compliance with legal requirements? [6:45]
  • Astroturfing: the practice of encouraging people to write phony reviews to prop up online ratings [8:25]
  • The unconventional path Jess with his wife to founding their own law firm [8:55]
  • Getting a good sense of the trademark world by having their own retail business [10:30]
  • Some of the benefits that having been in business provided when they started running the law firm [13:20]
    • Being in the retail industry gave him a really good feel for trademarks and the importance of brands and how products sell [14:00]
    • Having to make payroll [15:10]
    • The importance of promotion and advertising [15:18]
    • Other business basics like the allocation of resources [16:30]
  • The challenge of being both the businesses leader and also its product [17:50]
  • Juggling priorities effectively means always putting the client’s needs first [19:30]
  • Attracting high-level attorneys to the firm through collaboration [21:15]
  • Having an open perspective towards sharing revenue with partners [21:47]
  • Finding the balance between thinking big and stopping short of over promising [24:05]
  • Recognizing when a prospective client is not a fit [26:15]
  • Separating from a client who was questioned his approach [27:00]
  • Making a conscious decision to stop growing [30:55]
  • Advising his son’s business, Cognate.com, a service that provides a forum for people to register their rights and their trademarks, apart from the U.S. Patent and Trademark Office (PTO) [33:20]
  • Cognate allows registrants to lay out their common law claim on trademarks or names they are using but haven’t yet registered with the U.S. PTO [37:45]
  • How Cognate simplifies the “Full Search” process that has to occur before a trademark registration [38:40]
  • How Jess began writing his Intellectual Property column for Forbes Magazine [41:20]
  • The impact of being a Forbes columnist on business opportunities [42:55]
  • Being very busy but having fun in his practice [49:05]
  • How the internet changed everything for the practice of intellectual property [51:39]
  • Agriculture as a metaphor for building a business: planting seeds and nurturing them; things don’t grow over night [54:50]
  • The benefits of taking a measured approach to marketing and sales and not coming on too strong too early [57:05]