<p>I recently attended a networking function where I met the CEO and founder of an established technology company. As often happens when I meet business owners and executives, this CEO complained about his company&rsquo;s attorney&mdash;though he did not name names (and neither will I).<br /><br />My CEO friend explained that his company recently received notice from the United States Patent and Trademark Office that it needed file a Section 8 Declaration of Continued Use for its trademark. When he spoke to his trademark attorney, he was told that the law firm would take care of this for a flat fee of $1,200, plus filing fees at the United States Patent and Trademark Office (USPTO).<br /><br />But what the attorney failed explain&mdash;and here my CEO friend&rsquo;s lawyer bashing began&mdash;was that the Section 8 Declaration of Continued Use is an online form at the USPTO website. The attorney also failed mention that it takes just a few minutes to complete this form online, and there is no reason for any company to pay an attorney to complete this step unless there is something unusual about the situation, which was not the case with my CEO friend&rsquo;s trademark.<br /><br />My CEO friend hung up the phone with his trademark attorney, conducted a simple online search, and learned how easy it is to file the Section 8 Declaration of Continued Use online, and he completed the filing online himself. In doing so, he saved his company $1,200 in legal fees, and he gained a lingering mistrust about his trademark attorney&rsquo;s interest in delivering true value.<br /><br />By offering to &ldquo;handle&rdquo; the filing of the Section 8 Declaration of Continued Use for a flat $1,200 fee without revealing how easy this can be done online, the trademark attorney did what a lot of attorneys unfortunately do; withhold access to legal information that can empower clients to address legal issues themselves. In doing so, this trademark attorney also failed to address the CEO&rsquo;s desire to only invest in legal projects that deliver high value. (There is no question that the Section 8 Declaration of Continued Use had to be filed and that there was great value in doing so). Regretfully, this happens all too often, and for this reason, companies are rightly fed up with the legal community.<br /><br />In my opinion, what this trademark attorney should have done is discuss the situation with my CEO friend to determine if the situation required anything other than filing a simple online Section 8 Declaration of Continued Use. Upon determining that the online filing was all that was needed, the attorney should have suggested to the CEO that he handle this step himself. Then, the attorney could have sent my CEO friend the link below, with an offer to answer any questions the CEO might have.<br /><br />If the trademark attorney took this approach, the legal fees would not reach $1,200, but the attorney could have avoided creating a situation of mistrust by getting caught attempting to sell access to legal information. This trademark attorney lost an easy opportunity to demonstrate the law firm&rsquo;s commitment to provide high value and a strong return on the company&rsquo;s &ldquo;legal spend&rdquo; investment.<br /><br />Some members of the legal community, perhaps many, will continue to charge for access to legal information. For this reason, clients must begin to ask their attorney to explain the steps involved in routine legal work like filing a Section 8 Declaration of Continued Use.<br /><br />Here are two tips you can use to help your company manage your outside counsel:<br /><br />1. Ask your attorney to explain the steps to complete the task. Press for details on the specific steps that are needed to complete the task and don&rsquo;t fall for legal mumbo jumbo; make your attorney explain the steps in easy to understand plain English.<br /><br />2. For any routine governmental filing that that is needed, ask your lawyer if this is something that can be done online by you or someone in your company. You may also want to ask your attorney to review the draft submission before hitting &ldquo;submit&rdquo; but this will save money because you will be taking routine legal work away from your law firm and completing it yourself or by someone already on the payroll.<br /><br />In my opinion, applying these two tips will make you stronger in business and make you a stronger leader within your organization. And, perhaps just as importantly, this will help you manage your relationship with outside counsel.<br /><br />For those that are interested, a Section 8 Declaration of Continued Use is a sworn statement that trademark owners must file at the appropriate time to keep their trademark registration alive. If the trademark owner fails to file the Section 8 Declaration of Continued Use, it risks cancellation of the trademark registration. For those that are interested or have a need, a link to the instructions and the Section 8 Declaration of Continued Use is provided below.<br /><br />http://www.uspto.gov/web/trademarks/workflow/prfaq.htm</p> 2009-07-14T20:38:39Z -5.218 188 5485 true 5 21035 stop-paying-attorneys-for-access-to-legal-information 4 2009-07-17T12:55:41Z 2009-07-17T19:56:14Z

Too many attorneys withhold access to legal information as a fee generating tool. This article may help business owners and executives gain control over outside counsel and reduce "legal spend" at their companies.

1 2009-07-18T02:07:40Z