Jordan Weinstein about trademark tacking and issue preclusion – Adrian Dayton about LinkedIn for attorneys – How to win nice Christmas mugs from Germany

Jordan Weinstein

Jordan Weinstein

Jordan Weinstein analyzes two recent trademark decisions from the Supreme Court. In the first case, the Supreme Court discussed whether the Trademark Trial and Appeal Board’s finding of likelihood of confusion in opposition or cancellation cases can be issue preclusive. The second case is about trademark tacking – slight alterations to the mark after filing. And fellow attorney Adrian Dayton tells us how to use LinkedIn more effectively.

IP FRIDAYS

Co-Presenters:
Rolf Claessen and Kenneth Suzan

Episode 18 – December 26, 2014

RC = Rolf Claessen
KS = Kenneth Suzan
JW = Jordan Weinstein
AD = Adrian Dayton

Hello. This is Mark Lemley from Stanford Law School and you are listening to IP Fridays.

KS: Hello. Happy Holidays and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

Both Rolf and I are very happy that you have decided to tune into our podcast today. The response to our joint efforts has been remarkable. We look forward to sharing IP news, interviews and developments with you in the coming New Year. To celebrate this holiday season, we invite you to leave us a voicemail by clicking on the button on the right side of our website at IPFridays.com or use the feedback page to leave us a comment at IPFridays.com/feedback.

Following a random drawing of names, we will choose and announce a total of three winners who will receive complimentary Christmas mugs from an authentic German Christmas Market in Cologne, Germany (Rolf’s hometown). We will take care of shipping no matter where you may be. Make sure to note your e-mail address so we can get in contact with you should you win. We encourage you to stay in touch with us so we can get to know you as our listeners. Also, feel free to note any topics or recommend interview guests that would be a good fit for our program.

From Cologne, Germany to Minneapolis, Minnesota and all points in between and worldwide, we wish you and yours a wonderful Holiday Season and Happy New Year.

RC: Today is Friday, the 26th of December, and you are listening to the Christmas edition of IP Fridays. I hope you enjoyed the introductory music and I hope you will enjoy the Christmas music at the end of this edition of IP Fridays. We have a very special treat for you today. We have, in fact, two interviews for you. The first interview will be with Jordan Weinstein of Barnes & Thornburg LLP and as a second guest for this episode we have Adrian Dayton who is an attorney and now specializes in teaching attorneys how to use social media and, in particular, LinkedIn and Twitter.

But before we head into the interviews, I just want to let you know that we are giving away three really beautiful mugs from a German Christmas Market. A picture can be seen in the show notes so, if you want to win one of these mugs, you simply have to comment on our podcast, any of the episodes, or in the general feedback form, or leave us a voicemail at ipfridays.com/voicemail and make sure you mention your e-mail address so we can get in touch with you. So, now it is time for our first interview. Ken, you had the chance to interview Jordan Weinstein.

KEN SUZAN’S INTEREVIEW WITH JORDAN WEINSTEIN

KS: Thank you Rolf. Today I am joined by Jordan Weinstein. He is a partner in Barnes & Thornburg’s Washington, D.C. office and a member of the firm’s intellectual property department. Jordan has a number of professional affiliations locally and nationally. He is a member of the International Trademark Association’s Editorial Board for the Trademark Reporter and was co-chair of the Association’s Annual Meeting in Washington, D.C. He is former co-chair of the American Bar Association’s Trademarks and the Internet Committee and a member of the Association’s Intellectual Property Law Practice Management Sections. Welcome Jordan to our program.

JW: Thank you Ken and Happy Trademark Week to you.

KS: That’s right. Why are we calling this Trademark Week at the Supreme Court?

JW: Well Ken, for the first time in history, the Supreme Court is hearing two trademark cases on days back-to-back. So, they just heard one yesterday, December 2nd, and are hearing another one in fact not only had they heard that case already today, December 3rd, while we speak, but the transcript has already been uploaded to the Supreme Court’s Website.

KS: Oh, fascinating. What are the main issues before the Court?

JW: Well, the Supreme Court has considered two procedural issues. One with far-reaching consequences for people who practice before the Trademark Trial and Appeal Board and the other with more esoteric but still important consequences for those with older trademarks. The first case asks whether the Trademark Trial and Appeal Board’s finding of likelihood of confusion in opposition or cancellation cases can be issue preclusive. In other words, can it have collateral estoppel effect on a Federal District Court that is looking at the likelihood of confusion in infringement proceedings. The second case asks whether trademark tacking is a question of fact for a jury or a question of law for a judge and obviously there will be much more on that in a little while.

KS: Yeah, so tell us about the issue preclusion case. What is the caption and what is issue preclusion?

JW: Okay, so first of all, the case that was heard yesterday, December 2nd, was B&B Hardware Incorporated vs. Hargis Industries, Inc. It was an appeal from the Eighth Circuit Court of Appeals and concerned issue preclusion of the Trademark Trial and Appeal Board’s decision that the two parties marked “Sealtight” for building fasteners and “Sealtite” in the aeronautical industry would be likely to cause confusion. Now let’s go back for a second, Ken. Issue preclusion is where a party that litigates an issue to a final decision is then precluded from litigating that same issue, not necessarily the same claim, but the same issue against the same party in a later case. There are five elements necessary for issue preclusion to apply. First, the party sought to be precluded must have been a party or in privity with a party to the original suit. Second, the issue sought to be precluded must be the same as the issue involved in the prior action here before the Trademark Trial and Appeal Board. Third, that issue must actually have been litigated in the prior action. Fourth, the issue must have been determined by a valid and final judgment. Then fifth, the determination of that issue must have been essential to the prior judgment.

KS: So there is a definite test there that the Courts look at?

JW: Absolutely. The manner of the test and how it is applied is really not in dispute here. The question is whether preclusion should be applied at all to Board proceedings by Federal District Courts that are deciding infringement; not as an appeal from the Trademark Trial and Appeal Board, but in a separate infringement action.

KS: So with this case, what is the background? What brought the parties up to the Court?

JW: Well, the petitioner here, B&B, makes and sells a fastener product that, as I mentioned, is called “Sealtight” and it is used predominately in the aerospace industry. Hargis, the respondent, makes a line of self-drilling and self-taping screws that it calls “Sealtite.” Now really the difference between the marks is that B&B spells its mark S-e-a-l-t-i-g-h-t and Hargis spells its mark S-e-a-l-t-i-t-e.

KS: But the pronunciation is the same, Jordan?

JW: As far as we know the pronunciation is the same and neither of the parties were arguing that the pronunciation would be different.

KS: Okay.

JW: There is some testimony that Hargis uses its mark as Sealtite Building Fasteners but that’s a little bit too involved for the moment. I can get into that a little bit later.

KS: Sure. Now, the parties’ positions, can you tell our listeners what they both are in a short and succinct way?

JW: Well there is a good bit of history here that I will need for background and as to why the listeners might be interested to know are we talking about preclusion at all.

KS: Sure.

JW: Back in 1996, Hargis filed an application for its Sealtite mark for its self-drilling self-taping screws. B&B sued Hargis for trademark infringement and a jury found for Hargis against trademark infringement in 2000. But the basis of that decision was not based on likelihood of confusion or no likelihood of confusion, it was based on the fact that the jury found B&B’s mark to be descriptive. Well, Hargis then turned around and petitioned to cancel B&B’s registration on those same grounds. The Board first granted that petition and then reversed on reconsideration because the petition was filed after the registration became incontestable and it was too late for Hargis to petition. So before the reconsideration was decided and when the petition had been granted, Hargis’ own mark was published for opposition and B&B opposed that. In 2007, the Board found that there was a likelihood of confusion based on B&B’s statutory rights. Remember, its common law mark had been found descriptive, but its federal registration could not be cancelled. It was too late. But at any rate, the Board in that decision, found that there was likelihood of confusion between the two marks, it denied Hargis’ registration, and Hargis did not appeal the Board’s decision. That is an important fact. B&B then turned around and sued Hargis for trademark infringement based upon its federal registration. B&B asked the Trial Court to have the Trademark Trial and Appeal Board’s decision on likelihood of confusion preclude any further litigation on that issue because it had already been litigated and decided by the Board. The District Court refused to grant that motion and also refused to admit the Board’s decision even into evidence so the jury never saw it as the Trial Court thought it would mislead the jury. The jury eventually found for Hargis, finding that when the marks were used on the respective goods of the parties in their respective purchasing environments confusion would not be likely.

So then we move, of course, up to the Eighth Circuit. The Eighth Circuit affirmed on both of those issues. It refused to grant the Board’s decision any preclusive effect and it affirmed the jury decision of no likelihood of confusion.

KS: So what do you think, Jordan, will be the outcome here when the Court issues its decision?

JW: Well, before the Supreme Court we have some competing arguments. On the petitioner’s side, the Trademark Trial and Appeal Board and the Federal Court, petitioner believed, were considering the same issue. The Lanham Act doesn’t draw any distinction between likelihood of confusion for registration and likelihood of confusion for infringement. The parties had litigated the same marks, on the same goods, and the same theories before the Board as they did at trial. The Eighth Circuit might have disagreed with the balance that the Board struck in comparing the mark and evaluating the market, but under the aw of judgments, issue preclusion should apply when the question has already been answered and it doesn’t matter whether you like the answer or not. The respondent countered to that that although the likelihood of confusion tests appear to be similar, on close inspection of the statute, they are actually different. When it comes to registration, the Trademark Trial and Appeal Board is determining whether a mark so resembles another mark as to be likely to cause confusion, whereas for infringement, the respondent argues, that it is the mark’s actual use in commerce that is at issue. The respondent says that the Board’s decision is not binding on U.S. District or Article III Courts because the Board and the Courts serve different purposes and decide different rights. The Board proceedings decide the right to register and the Court proceedings include the full procedures of civil litigation and determine the right to use a mark.

KS: So essentially there are two different things going on or is it two different worlds or not as you compare the two?

JW: Well, my take is that in a way there are two different worlds. Because the Board deals only with the right to register a trademark, it answers the question of likelihood of confusion by examining the mark as it appears in the application. If a mark is actually used with a design, but that design doesn’t appear in the application, the Board can’t really consider it. If there are trade channels that are limited in actual use but they are not limited in the application, the Board can’t consider those limitations. If prospective purchasers are sophisticated the Board can’t consider that fact unless the goods are of a type purchased only by those sophisticated purchasers or it’s actually listed in the application. So as a result, even if the Board considers all the 13 Dupont factors (those are the factors of confusion or likelihood of confusion that the Board considers in oppositions and cancellations), often it must ignore those limitations if the application doesn’t include them.

KS: So practically speaking, what do you think the outcome of this case would mean for brand owners once we have the decision on the books?

JW: Well, I think the stars really need to align to create the exact scenario at issue here, or to recreate it. You’d have to have a losing party that chooses not to appeal the Board’s decision on registration and then the parties litigate likelihood of confusion in a whole separate Court action where the Board’s decision is not at issue. Often what happens Ken is that the losing party appeals the Board’s decision to a trial court that will consider the evidence de novo and often before a jury and then the other party will add a claim to decide the question of infringement on top of the question of the right to registration. The other thing that happens is that one party will, concurrently to the Board proceeding, bring a court action and they will request the Board then to suspend its own proceedings which the Board does almost as a matter of course. And in neither of those situations would the issue of preclusion ever arise.

KS: There is another case I know that is before the Court and that is a tacking case. What is the caption for that case and tell me about tacking?

JW: That case is Hanna Financial vs. Hanna Bank, actually that is the Ninth Circuit Court’s caption. It is Hanna Bank vs. Hanna Financial before the Supreme Court and again this case involves trademark tacking which is the right to modify or update your trademark without losing its priority of use date. As we know in trademarks, first in time is first in right and a federal registration merely serves as notice to the world of what that first date is because it is listed right in the registration. But a brand owner should not have to lose rights in a long-established mark simply because it updates that mark slightly. For example, if you remember the Morton Salt label, there is a girl holding an umbrella with a container of salt spilling out. Over the years, Morton has updated that logo to change the girl’s haircut to look more modern, to make her dress a little more updated and all of those times Morton has retained its right because the commercial impression of that mark has never changed. But a brand owner should not be able to introduce a mark with a different commercial impression and then be able to back-date that to the older and different mark’s first use date. That is because the Federal Register of Trademarks really serves a notice function and that function would not be served if a registrant can materially change the mark yet keep its own registration rights.

KS: In this case, what happened with parties? Why are they in litigation?

JW: So what happened between these parties is Hanna Bank, back in 1994, adopted a mark “Hanna Overseas Korean Club” offering financial services to Korean ex-patriots living in the U.S. They publish newspaper ads with the name “Hanna Overseas Korean Club,” in English, and the name “Hanna Bank” in Korean letters with what they call a “dancing man” logo. The next year, the respondent, Hanna Financial (I will just call them “Financial” just for purposes of keeping them straight), adopted their name “Hanna Financial” in connection with factoring and other financial services. In 1996, Financial obtained their own Federal registration for “Hanna Financial.” In 2000, Hanna Bank changed its name from “Hanna Overseas Korean Club” to “Hanna World Center” and they tried to register “Hanna World Center” but their application was refused. In 2007, Financial filed suit against Hanna Bank for trademark infringement and related claims. Hanna Bank counterclaimed to cancel Financial’s federal registration. Financial sought to exclude Hanna Bank’s 1994 advertisements for “Hanna Overseas Korean Club” and “Hanna Bank” in Korean arguing that those advertisings were irrelevant. Financial asserted that the marks were not virtually identical and therefore it would be improper to tack the earlier mark that appeared in those advertisements onto the later mark “Hanna Bank” for purposes of establishing priority all the way from today back to 1994. That motion, the motion to preclude the advertisements from coming into evidence, was denied. The jury then found that Hanna Bank had used its mark in commerce in the U.S. beginning prior to April 1, 1995, Financial moved for judgment as a matter of law, and lost, and Financial appealed to the Eighth Circuit Court of Appeals. Now at that point the Eighth Circuit comes up with, and as I mentioned this is kind of an esoteric case, a discussion of the standard of review that really is important to understanding the outcome here. In the Eighth Circuit, they consider the question of whether two marks are sufficiently similar for tacking to be a question of fact and as a question of fact, a verdict of tacking will be upheld if it is supported by substantial evidence even if it would be possible to draw a contrary conclusion from that evidence, but for now the Court found that although the evidence could be construed to support Financial’s position, that wasn’t enough. The Court couldn’t set aside the judgment if Financial could not show that its interpretation of the evidence is the only possible one. So the Court noted that other Circuits viewed tacking as a question of law. Those same Circuits also happen to view likelihood of confusion as a question of law and in those Circuits, the Eighth Circuit noted, a different conclusion might be reached and this was because a question of law would have been reviewed de novo by the Circuit Court with no substantial evidence standard to meet and the Appeals Court could substitute its judgment for that of the District Court and guess what, that’s exactly what Financial is asking the Court to be able to do.

KS: Ah, so the question of law/the question of fact is what is comes down to is which road do we take?

JW: Exactly, so in seeking cert to the Supreme Court, Financial noted this split of the Circuits as to whether tacking was a question of fact or a question of law. In their main brief of course they assert that tacking should be a question for the judge to resolve because the question posed by tacking, whether two marks are legal equivalents is they say by definition a legal question. It should be resolved by resort to legal precedent and not to facts and the proof of that is in the result of this case, they say. If a Court were to apply the correct legal standard, they would not have reached what they call the perverse result of considering Hanna Overseas Korean Club, Hanna Financial Center and Hanna Bank to be legal equivalents. Tacking questions they say are historically resolved by comparing two marks against those addressed in other tacking cases and determining whether those marks at issue more closely resemble circumstances in which tacking was permitted or resembled cases in which tacking was rejected. Financial believes that a jury is not capable of making that determination because a jury works in isolation, quite literally, it lacks the information and experience needed to place particular marks in the context of a wider legal universe, and they typically had no knowledge of the treatment that had been accorded comparable marks in the past. Hanna Bank argued that tacking is an issue of fact that considers whether two marks convey a continuing commercial impression. That requires a subjective assessment of the trademark’s respective impression on the relevant consumers and surprisingly Hanna Bank argues that tacking is an inquiry best suited for a jury. A second public perception suits jurists best because they reflect community standards better than a single judge in the judge’s ivory tower. Assessing consumer perception is not something judges often do or something that they do better than jurors or something that requires specialized legal training. Hanna Bank argues that Financial’s argument about tacking being a legal test relies solely on the presence of that word “legal” in the legal equivalence test but really all that is, says Hanna Bank, is a conclusion that you draw after you apply the factual tacking test whether the two marks convey the same continuing commercial impression. Now functional considerations really support treating tacking as a factual issue says Hanna Bank and I tend to agree with them here. Tacking involves a comparison of the trademark’s respective impressions on ordinary consumers, just like likelihood of confusion requires a determination of consumer’s potential misimpression of a trademark. A jury panel provides a broader prospective and better represents the average consumers than a single judge so the jury really is better suited to evaluate the issue of consumer impression.

KS: Does this issue come up a lot in cases that you handle? Have you seen this come up over the many years of your practice?

JW: I have seen it come up occasionally. But just occasionally. It’s not that often that one of these cases arise. But, obviously, it is something that the owner of an older venerable brand needs to keep in mind because when it comes time to freshen or update a legacy trademark, one will want to be aware that they either want to be able to amass all of this evidence and keep that in their back pocket the next time they are going to have a litigation so that that can be brought up before a jury, or are they going to be cautious about modifying their trademark because they know that it is going to be up to a judge and they are probably have to get a legal opinion as to whether that modification is going to make sense for them in order to maintain their rights.

KS: That’s definitely something you really have to consider and think carefully about before you start making changes to your mark.

JW: Absolutely, and obviously we will have more guidance for trademark owners and the lawyers that represent them when the Supreme Court hands down its decision.

KS: And what do you think the Court is going to say?

JW: My belief is that the Court will come down on the side of this being a jury issue mostly because it is so akin to the likelihood of confusion issue. This is a consumer perception issue and really the best judges of consumer perception are the ones that are closest to being consumers.

KS: Yes, I agree with you on that as well. Do you think, Jordan, there was a reason why these two cases were scheduled to be heard back-to-back here in early December, 2014?

JW: Well, I guess one reason the Court may have wanted to schedule these two cases back-to-back is so that the Justices don’t have to refresh themselves twice on the arcana of trademark administration and trial court practice. But I do think that the cases also do have a couple of unifying themes. In both cases, the effect of granting the appeal would be to nullify a jury verdict. Where, actually in the case of B&B it would be to nullify two jury verdicts, the effect for future cases would be to keep these particular issues from the jury. A second theme is that both cases revolve around whether the issue can be resolved in each case by a mere comparison of the marks or whether the marks must be compared in their purchasing environments. In Hanna, that is the difference between the parties position. In B&B, one of the sides argues that the Trademark Trial and Appeal Board is limited to a comparison of the marks, they so closely resembles test, while the other side argues that the Board compares, or at least can compare, the marks as they are used. But interestingly, back to back, each petitioner is arguing for the opposite type of review. In Hanna, the petitioner obviously wants the judge to compare the marks alone and in B&B the petitioner asserts the Board should review the marks by comparing the way they are actually used and not just in the abstract.

KS: Excellent. Jordan, it is not often that we have two trademark cases in the same week, right?

JW: Not only is it not often, but it may be a first ever for the Supreme Court. So that’s fun for us and it brings us kind of back to where we started. The Supreme Court’s decision in B&B might have long-term effects on how parties to Trademark Trial and Appeal Boards conduct those proceedings and even on how they choose to apply for trademarks. Although the Hanna decision is unlikely to have such wide-ranging repercussions, it will still be important to any mark owner that wants to update its mark.

KS: Thank you very much Jordan.

RC: If you want to hear more about Jordan Weinstein, please go to IPFridays.com/jordan.

Ken also had the chance to interview Adrian Dayton who has switched to teaching attorneys about Twitter and LinkedIn. So, here is the interview for you…

Adrian Dayton

Adrian Dayton

KEN SUZAN’S INTERVIEW WITH ADRIAN DAYTON:

KS: Rolf, I am joined today by Adrian Dayton who lives and works out of Buffalo, New York. Adrian is an internationally recognized speaker on social media and business development. He writes a weekly column on social media for the National Law Journal and is the author of two books, LinkedIn & Blogs for Lawyers: Building High Value Relationships in a Digital Age and Social Media for Lawyers: Twitter Edition. He is also the founder of ClearView Social, a new social media tool built for attorneys. His consulting business, Adrian Dayton & Associates, has been engaged for the last three years with Global 100, AmLaw 250, Canadian and Australian firms helping them to increase profitability through effective use of digital media. His most popular programs include: LinkedIn training, law firm retreats, law blog strategy, group coaching, social media audits and implementation.

Adrian, welcome to the program.

AD: Hey, thank you so much Ken. It’s so good to be on.

KS: Excellent. So Adrian, tell me a little bit about your business and what you are doing these days.

AD: I guess I need to kind of start at the beginning. I started out as a practicing lawyer doing M&A work in Western New York. Then, one day, the economic downturn hit and at the same time I discovered social media so I actually brought in my first client through Twitter and so I was thinking, “Wow, you know, nobody knows about Twitter, but it is a really powerful tool. I wonder if I could start a business to help lawyers through social media.” And then one day the head of my department came into my office and shared with me a few words I will never forget. He said, “You’re fired.” Well, you know, they had to let me go with the downturn there was no work and so I called my wife and I said, “Honey, I lost my job.” She was crying and I said, “But it’s okay because I am going to start a new business teaching lawyers how to use Twitter.” Of course, then she just cried harder. Anyway, she is actually very supportive and over the next few months I wrote my first book, Social Media for Lawyers and then social media exploded and I was in the right place and the right time. A few months later, I was hired by my first Am Law 100 firm and that was kind of the first domino. I have done work for that firm for the last five years but I’ve also had the chance to work with over a dozen Am Law 100 firms and some of the largest law firms in the world. Just earlier this year, we recognized one big problem they had is that they could teach their lawyers how to use social media, but often they wouldn’t engage. They wouldn’t get online and talk or share or do anything like that. So back in February I launched a software company called ClearView Social and we will have time to talk more about that later but basically it is software that makes it very easy for firms to get their lawyers sharing on LinkedIn and a few other social media networks.

KS: How have you found the response to that product?

AD: To be honest, the response has been pretty tremendous. We launched with the largest law firm in the world just a few weeks ago and we are currently being used by eight of the top 100 firms in the United States.

KS: That’s excellent.

AD: In addition, we have about 50 other law firms that are currently using the software as well. So for having just left beta in October, we feel like it has been a tremendous response. The market was, I think, really ready for a tool to help simplify the way firms get their lawyers sharing.

KS: While on the topic of your social media tool, what exactly does it do?

AD: Well, to put it very simply, law firms create a lot of content and they want their lawyers to share that to the individual lawyer network, but the only way to get them to do that is by getting the lawyers opt in and so before our software, the firm could send an email out saying, “Hey, John Smith was quoted in Wall Street Journal. Please copy this link then go over to LinkedIn, log in, go to the Home Page and in the status update box paste in the link and hit share.” For lawyers that are like you and I, Ken, that are pretty tech savvy, that takes all of 20 seconds and it’s no big deal, we just do it.

KS: Sure. Yes.

AD: But for the average lawyer, I mean, I have seen it all. I taught a lawyer a few months ago who has been practicing for six years and he did not know how to copy and paste.

KS: Wow.

AD: It’s funny. I explained it to him and after he figured it out he was like, “Wow, that is so easy. So that’s what copy and paste is.” Anyhow, you get the sense that there are a lot of lawyers that are just not tech savvy so what software does is it lets the marketing department send out an email which just has a button embedded into it so all the lawyer has to do is open the email and click the share button and it will share the article with whoever you want.

KS: That is excellent. So it really makes the tools available and makes things easy to do in the social media space.

AD: Yeah, and what we would like to say is it decreases the activation energy that is required so, you know, rather than taking 20 seconds, they can just take five seconds and share it and even though that’s not a big difference, for a busy lawyer it may be the difference between sharing and not sharing.

KS: Are there analytics behind it? Can law firms see how effective this is? Any tools like that?

AD: Yeah, yeah, absolutely. So, if you have used Bitly or Hootsuite before, every time you share you can see how many clicks you have received and whether or not people are reading what you share. So, our tool has those same analytics. The advantage that it has over Hootsuite or Bitly, is that you can not only see your analytics, but you can see the analytics of everyone in your organization and you can also see the analytics for the article so what are the most successful articles being shared in an organization and because I believe that success this way can beget more success so when you see someone share something that has been a big hit, you can reshare that to your network knowing already that people like it and it’s being clicked on a lot when Lawyer A shares it so there’s a good chance that when Lawyer B shares it, it will also be successful.

For those of you who are a little more advanced with analytics, you can even drill down and see the companies that have been clicking on the articles you share. So we actually do an IP lookup for every click that comes through. So, you can see the name of the company, if they have a known name or IP server, large companies and educational institutions will have known IP addresses, otherwise we have filtered out all of the junk results so you are not going to see Time Warner, Comcast, you will just see the big companies that are clicking and, because we are integrated with LinkedIn, we can also show them who they know at the companies that have clicked on the article. So, anyway, some pretty exciting analytics. The firms that have been using it right now have been thrilled with it. It has been very sticky so once we get lawyers started using it, they almost always want to continue.

KS: Wow that is really an amazing product. I think there will be lots of firms I bet that will be interested in seeing it and demoing it in the future. You know, a lot of our listeners are IP lawyers themselves. Are there other things that you think about in the sense of what lawyers should be sharing on social media platforms? What they shouldn’t be sharing? What are your thoughts on that?

AD: Yeah, well let’s just start with the very basic question of why should lawyers share articles at all? I know it may be obvious to people like you and I who have been doing this for a while, but let’s just step back and say, why should they share? I think what we need to think back to is, you know, did you ever have, Ken, an old mentor that would cut out an article, put it in an envelope, put a stamp on it and mail it to you? Did you ever have that happen?

KS: All the time. In fact, I received one a few weeks ago in the mail.

AD: And you think about how does that make you feel when someone picks out an article just for you and sends it to you?

KS: Well, I think that it shows that they are caring and that they are interested in your practice.

AD: That’s right. It shows they care and are thinking about you, specifically. And unfortunately it is a small percentage of lawyers that take the time to show they care and to share articles with their most important contacts, right? They all should be doing it but it is only the precious few that are doing that right now. So, at the very basic level, we share articles with an individual to show them that we care and that we are thinking about them, okay? Now, when we share an article to LinkedIn, we are not only sharing with one person, we are sharing it publicly to many people as an update, so it is put out there in a passive way for people to see. And while you don’t get the same effect of showing the personal touch, you know where one person cares about you, what you do see, as an IP lawyer you’ve got a pretty impressive body of knowledge, Ken, about what information is important to your clients and when you read 20 articles and you pick the one that is the most relevant and the most important for the decision maker of these companies and you share that, that is valuable work product. That’s valuable information and by you doing that, in a way, you are showing off. You are saying this is important. Because of my knowledge, I know that this is important and if you read it, you will see that it is important, and the more you share the more you do that and demonstrate that it builds your reputation as someone who is really on top of the market place, on top of what is happening.

KS: Yes, that is well said. I assume your product allows the lawyers who are using it to get to that place.

AD: Yeah, that is the hope. And you don’t need the software obviously Ken. And actually you have done an amazing job of sharing over the years and building an international reputation. I mean, I talk to IP lawyers. I talked to an IP lawyer in Boston the other day and I said, “Oh, do you know Ken Suzan?” and he said, “Oh, you know I don’t know him well, but I see his tweets.”

KS: Excellent.

AD: So you are connected into this massive global network that never would have known about you before but now you are creating this cool content. So, yeah, that’s kind of the basic answer to your question. That’s why you should care about sharing.

KS: For sure. Now let me ask you, lawyers have limited time. How can a lawyer be effective in social media? I mean, is there a magic number of hours or minutes that they should do it every day? What do you think about that?

AD: Yeah, that is a great question. I think by far the most important thing a lawyer can do is have a process. Okay? Everybody has the same hours in the day, but the difference that separates the exceptionally successful people and the average people is process. And so I am not going to tell you that you have to spend an hour a day on social media, but I will tell you that if you want to be successful, you’ve got to have a daily and a weekly process. Okay? For me, my process is very simple. In the morning and at night, when I get to work and when I finish work, I spend about 15 minutes checking LinkedIn, checking Twitter, sharing an article, reading an article, commenting on something someone shared. And then one day per week I sit down and I carve out time to write an article. So I create information and then I also participate and that’s my process and I’ve seen a lot of lawyers start and stop using social media and they give up before they see any results. But then I have also seen lawyers who have brought in hundreds of thousands and millions of dollars of business and those lawyers all have a process that’s locked in. So, I don’t care how much time you choose, but you just got to have some time that you set aside every day and every week to make it happen.

KS: Adrian, do you see any trends in 2015, you know we are just a little bit away from the New Year. Anything new that our listeners should be apprised of?

AD: Yeah, you know, there are a bunch of new things. People always want to know what’s the new social network. And, you know, it’s kind of funny because for six years people have been saying to me what’s going to replace Twitter? What’s going to replace Facebook? What’s going to replace LinkedIn? But here we are six years later and all three of those are ten times as big as they were six years ago and they are not going anywhere. Those big three are sticking around. And there are other sites that matter. You know, Pinterest and Instagram — all these things matter, but the big trend I see coming is a trend in microsites. So lawyers are realizing that their online identity is very important and they can’t trust it to their law firm to completely create their online picture of who they are because, you know, a single bio sitting on a crowded website is not going to get attention. So I see the big trend being lawyers creating their own microsites to take ownership over their practice. LinkedIn already gives you the ability to create a pretty cool microsite right on the page. As you know, now on LinkedIn you can include PowerPoint presentations and interviews. I mean, my LinkedIn profile, as you have seen, is a multi-media presentation of who I am. It has me being interviewed on Bloomberg Law, it has a picture of me giving a keynote in London, it has a PowerPoint slide of me speaking about how to use social media to reach general counsel and I think these microsites might be the same thing. It’s going to be a very simple way to very quickly get a picture of who the lawyers are, why they are exceptional, and why they should be fiercely considered for the legal challenges that businesses are facing. So, that’s a trend I have seen just kind of starting. I think it is going to get a lot bigger in 2015.

KS: Excellent. Now, with respect to your page, it sounds like you are usually updating it from time to time. I assume that is part of your program and plan?

AD: Yeah, absolutely. That has to be part of the process. I talk to a lot of lawyers where I say, the two glaring things that are missing in partners bios on LinkedIn, number one they are missing a picture and number two they are missing a summary. Then I ask them, I drill down, and I say, “Well what was the process you used to create that firm bio? Have you updated it within the last few months? Have you changed it?” I mean, I had one lawyer say to me, “Oh, well, five years ago when I joined the firm, I just looked at someone else’s bio and I just kind of followed and wrote mine the same way they had written theirs.” Well, that’s a terrible way to strategically position yourself. Right? So I tell lawyers that not only do they have to create a very thoughtful and strategic summary on LinkedIn, but they have to update it regularly because they have to stay on top of the latest issues and the latest things that are happening in their industry.

KS: That’s good Adrian. Adrian, I know you are on top of all the latest Apps and technologies, I’m curious, on your own Smartphone, could you tell our listeners three Apps that you regularly use or that other attorneys would find useful on their Smartphones?

AD: Yeah, sure. You know, it’s funny. When you said that you were going to ask this question, I was like well do I tell them about Candy Crush? Just kidding! But I assume when you say which apps are the most useful, you are asking from a business standpoint what are the most useful apps?

KS: Yes.

AD: I will tell you honestly that the Apps that I get the most use out of might kind of surprise you. Okay, so the App that I find the most useful is Google’s new Google Map App because the App gives me so much information. It shows me where things are, it gives me the phone number to the place, and it gives me a link to the Website. I know it’s not very exciting to talk about, but the Google Map Wpp is the most used App that I have on my phone. Okay?

KS: Excellent.

AD: For social media, I think Hootsuite.com has a great App to track everything that is going on with Twitter.

KS: Can you spell that for our listeners?

AD: It is H-O-O-T-S-U-I-T-E. Kind of like Hoot and then suite, like an office suite, .com. It’s a free download and it’s a great App. Now, another thing that may sound kind of surprising and I know most lawyers are kind of closed minded to this, but the other App that I get the most use out of is surprisingly enough the Facebook App. So Facebook has changed so much over the last couple of years. They have figured out how to get better and better at delivering to you just the types of information and the messages that you want to see. So I used to get on Facebook and I would see all these people that I barely knew from high school or college and I see them posting all this dribble. Well, what Facebook has realized is that they have reviewed their software so if you click on something on Facebook, Facebook remembers that so they remember whose pictures you care about, who you comment on, and what they start to do is they are going to start to filter out anything you are not interested in.

KS: Wow, so Facebook is becoming smarter and smarter as we go.

AD: Yes. People say what is going to take over Facebook and the truth is that they have such a huge advantage because not only do they have the population, but they’re not taking that population for granted. They are continually getting better. And Twitter and LinkedIn are doing the same thing, probably not as quickly as Facebook, but if you used to be using Facebook and you gave it up a couple years ago because you got annoyed by all the meaningless stuff, you might want to try it out again because it really is great and I have seen more business stuff there now more than ever. There is a legal marketing group on Facebook that is currently the most active social media group in legal marketing across all the platforms, more than LinkedIn and more than Twitter and it is on Facebook.

KS: Can you repeat that for us?

AD: Well it is called Legal Marketers Extraordinaire. I don’t know who named it but clearly they have an ego.

KS: Sure. Adrian, how can people get in touch with you? I know you are always very busy and flying all throughout the country and the world. What is the best way for people to find you and communicate with you?

AD: The best place for people to start a conversation with me is on Twitter, so @adriandayton is where they can find me and I am a LinkedIn Open Networker so please connect with me on LinkedIn. I would love to have a conversation and I’m always very open to meeting anybody and seeing what you are doing and finding out if there are people that I can collaborate with.

KS: Adrian, thanks so much for joining us today on our program.

AD: Thank you Ken. It was a thrill.

RC: If you want to know more about Adrian Dayton, please go to www.ipfriday.com/adrian.

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