I recently talked with Matthew Ladenheim and Bill Bryner, newly certified as specialists in trademark law, about their certification and its impact on the practice of trademark law. Matthew served as chair of the Trademark Specialty Committee and led the effort to create the specialty. He attended Mary Washington University in Virginia for his undergraduate degree and Penn State University’s Dickinson Law School. Following law school, he held a clerkship in the Washington State Supreme Court for a year before heading to North Carolina to begin his practice in trademark law. Bill completed his undergraduate degree at Brigham Young University and his law degree at Duke University. Upon graduation, he began working for the Winston-Salem firm that became Kilpatrick Townsend & Stockton. Several trademark projects landed in his lap and he found that he enjoyed the work.

Q: Why did you pursue certification?

Matthew: About four years ago I had several clients in a row come to me because bad advice from previous lawyers led them into litigation. This series of clients convinced me that lawyers who merely “dabble” in trademark law can get their clients into serious trouble. I mentioned this to David Sar, who was the vice-chair of the Bar Association’s Intellectual Property Section at the time. We agreed that this situation was a concern for trademark lawyers. Unlike patent attorneys,1 who identify themselves as being registered with the US Patent and Trademark Office (USPTO), dedicated trademark practitioners lack the ability to distinguish the specialized legal services they provide. David suggested that I gauge interest at the next section meeting. Shortly thereafter I found myself leading a State Bar committee in creating the new specialty.

Bill: Early on in the process, Matthew contacted me to see if I supported the creation of the specialty. I assured him that he had my full support. He kept me in the loop throughout, and when the exam was offered for the first time, it was a no-brainer for me to apply.

Q: How did the specialty committee write the first examination?

Matthew: The process was significantly more intensive than I had anticipated. The Bar puts a great deal of emphasis on creating a transparent, fair, and statistically valid specialization exam. Throughout the entire process, our committee worked with Dr. Terry Ackerman, a specialist in exam drafting and statistics from the University of North Carolina at Greensboro. Dr. Ackerman led our committee in establishing everything from the content outline, to the question format, to the passing score and grading outlines.

Q: Did the exam meet your expectations?

Bill: Yes, I expected the exam to be straightforward and not designed to trick the examinees. I appreciated the fact that the content was based on practice and contained a broad range of subject matter. I felt that it was pitched at the right level of difficulty. It’s a day-long exam, so that was a challenging day, but overall I thought the experience was good and the exam was fair.

Q: Was the certification process valuable to you in any way?

Matthew: Absolutely, I feel that I’m a more well rounded practitioner today than I was three years ago before this process began. The exam drafting made me look at areas that I don’t see in my practice on a daily basis. The members of the trademark specialty committee come from very different backgrounds, including firm size, location, and type of practice. That diversity was incredibly helpful as we prepared the exam questions. We learned a tremendous amount from each other.

Q: How do you envision certification being helpful to your practice?

Bill: I think of it largely as another marketing arrow in my quiver. I am now one of a small number of lawyers certified in trademark law by the State Bar. Clients and potential clients should look at that and understand that it shows my commitment to this practice area.

Matthew: I also see certification being helpful to the practice of law in general. The entire purpose of trademark law is to prevent consumer confusion in the marketplace. Specialization will help further that purpose. Often members of the public, and members of the Bar, erroneously assume that an attorney who is licensed by the USPTO is necessarily proficient in trademark law. Specialization provides a mechanism that allows dedicated trademark practitioners to distinguish themselves from dabblers. I also believe certification will increase the quality of practice in our state—even seasoned trademark lawyers will benefit from the exercise of becoming board certified.

Q: What have your clients, staff, or colleagues said about your certification?

Bill: Thankfully my clients were not surprised; they believed in my ability to pass the exam. I have been pleasantly surprised by the welcoming and congratulations I received from colleagues who are certified in other practice areas as well.

Q: How does your certification benefit your clients?

Matthew: The process of creating the exam led me to re-examine what I know and fill in the gaps. I would think that the same is probably true for those who studied for and took the exam. During the course of this process I developed a deeper relationship with the other committee members, which obviously gives me a wider network of lawyers with whom to collaborate and to whom I can make referrals with confidence. The networking opportunities, along with the deeper knowledge base, are benefits to all of our clients.

Q: Are there any hot topics in trademark law now?

Bill: One current topic is the decision of The Internet Corporation for Assigned Names and Numbers (ICANN) to allow more flexibility in top level domain names. In early 2012, ICANN began to accept applications for generic top level domain names so that a corporation could apply for a “dot anything” name and no longer be restricted to .com, .org, etc. It is anticipated that this could change the face of the internet and allow for more creativity and innovation, but it is a slow and ongoing process, and brand owners are rightly concerned about its implications.

Q: How do you stay current in your field?

Matthew: Beyond my participation on the specialization committee, I speak at CLE seminars, and follow some excellent trademark law blogs. The International Trademark Association (INTA) offers a broad range of resources, including educational and networking opportunities and online international legal guides and updates.

Bill: I am fortunate to also have good partners who communicate case developments and updates. We offer in-house CLE programs, and as a firm maintain a commitment to keep each other informed.

Q: Is certification important in your practice area?

Bill: I think it is very important. There are a relatively small number of lawyers who practice trademark law exclusively, but a greater number who dabble under the radar. I saw the results of bad legal advice and wondered what the original lawyer was thinking. On one hand there’s a perception that intellectual property law is complicated, and on the other hand there’s a perception that trademark law must not be as complicated as patent law. It’s important for clients to be able to readily identify a level of genuine expertise in trademark law.

Q: Is certification important in your region?

Matthew: Yes, I think certification is important in North Carolina, but it is also important beyond our region. In trademark law, so much of what we do involves federal law. I would guess that about half of my client base is in North Carolina and the other half is spread throughout the country. Often my out-of-state clients find me because they are planning to file a lawsuit in North Carolina. Being able to identify myself as a specialist is a great way to let potential clients, from North Carolina and beyond, know that I dedicate my practice to this area of the law.

Q: How do you see the future of legal specialization?

Matthew: I think that the days of a traditional general practice are probably numbered. As the law continues to become more complicated, lawyers will naturally gravitate toward specialized fields. I wouldn’t dream of taking on a DUI case because I might do the client more harm than good. By the same token, I firmly believe that legal matters involving trademarks are best left to lawyers who dedicate their practice to that area of the law.

Bill: As the law continues to grow, I see a greater push toward specialization and even subspecialties within a practice area like trademark law. This allows us all to draw on the expertise of others and not reinvent the wheel every time an issue surfaces. This provides better service to clients and a better use of financial resources.

Q: What would you say to encourage other lawyers to pursue certification?

Matthew: The process will absolutely make you a better lawyer. From day one to year 15, there are still things to learn and ways to grow in your practice. Certification will encourage you to continue to improve and to be better today than you were yesterday.

Bill: I have already encouraged colleagues to pursue the certification this year. The benefits far outweigh the costs, and as a career enhancement, it should be a simple decision to pursue something that will enable you to market your professional accomplishments to the public. It is nice to be able to say that I am one of a few lawyers in the state recognized as a specialist in this area. The State Bar says so.

For more information on the State Bar’s specialization programs, please visit us on the web at nclawspecialists.gov.

Endnote
1. A lawyer who is admitted to engage in patent practice before the U.S. Patent and Trademark Office may use the designation “Patent Attorney”. Rule 7.4 of Rules of Professional Conduct, cmt. [3].