Top Lawyers: Marc P Misthal On The 5 Things You Need To Become A Top Lawyer In Your Specific Field of Law

An Interview With Chere Estrin

Get out of the office. To some extent this goes hand in hand with the prior point, but being a lawyer is not about staying in your office. One way to develop client relationships is to go to their place of business so you can better understand their business. If you go visit, sometimes you will see something that you did not know the client was doing, and that might be something that should be protected by a patent, trademark and/or copyright. If a client is having a product launch or some other event that you are invited to, go to it if you can. The client will appreciate that you took time out to support them.

The legal field is known to be extremely competitive. Lawyers are often smart, ambitious, and highly educated. That being said, what does it take to stand out and become a “Top Lawyer” in your specific field of law? In this interview series called “5 Things You Need To Become A Top Lawyer In Your Specific Field of Law”, we are talking to top lawyers who share what it takes to excel and stand out in your industry.

As a part of this interview series, I had the pleasure of interviewing Marc P. Misthal.

Marc is a principal of Gottlieb, Rackman & Reisman, P.C., a Manhattan-based intellectual property boutique that celebrated its fiftieth anniversary in 2020. He counsels a wide range of clients from around the world, including businesses in the fashion, apparel, restaurant, entertainment, jewelry, luxury goods, home goods, furniture, cosmetics, retail and consumer goods industries. As part of his practice, Marc has represented clients in federal courts around the country, defending and prosecuting claims of trademark, trade dress and infringement, and, when necessary, obtaining injunctive relief. He also represents clients in Opposition and Cancellation proceedings before the U.S. Patent and Trademark Office and in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). Marc’s experience also includes negotiating license agreements, working with law enforcement to combat counterfeiting, filing and prosecuting trademark applications before the U.S. Patent and Trademark Office and filing applications to register copyrights with the U.S. Copyright Office.

Thank you so much for joining us in this interview series. Before we dig in, our readers would love to get to know you a bit more. What is the “backstory” that brought you to this particular career path in Law? Did you want to be an attorney “when you grew up”?

Thanks for inviting me to participate. I was an English and history major as an undergrad, so my course load was heavy on reading and writing. I was trying to figure out what I wanted to do, and a lot of my friends were headed to law school. It seemed like a natural fit since I was used to a lot of reading and writing. And I had always been interested in stories, often in the entertainment field, about accusations that one movie or book copied another, so intellectual property seemed like the right area for me. This will date me, but while I was an undergrad there were a lot of jokes about intellectual property on late night TV shows because David Letterman had just left NBC, and NBC was trying to stop him from using certain bits he had done on his show on their network. That may have been a factor, too.

Can you tell us a bit about the nature of your practice and what you focus on?

My practice focuses on copyrights and trademarks, largely focusing on protecting products and their brands. So that means I help clients register their trademarks and copyrights with the appropriate office in Washington, D.C. If someone copies a client’s work, I’ll work with the client to have that stopped — that can mean sending a notice letter, filing a lawsuit, having something online taken down, or, in the case of counterfeit products, working with law enforcement. And I’ll defend clients against claims of infringement. I’ll also help clients with license agreements, or when they are involved in the sale or purchase of a company.

You are a successful attorney. Which three character traits do you think were most instrumental to your success? What unique qualities do you have that others may not? Can you please share a story or example for each?

I have always been a voracious reader. Since law school, my leisure reading has declined, but the reading I do for work has picked up significantly. New cases always come out, and it is important to stay on top of developments in the law so that you can use them for your client’s benefit. I frequently have stacks of cases that I pull to read, and on several occasions, I have found cases that either support a position a client is taking or suggest a new argument that they can make.

Be prepared to work hard to accomplish your client’s goals. At the end of the day, being a lawyer is about helping your client achieve a business goal. I have always been willing to put in the work to see those goals come to fruition. Several years ago I was working on a trademark case, and the client was opposing a motion for summary judgment made by the other side. I spent weeks with the door to my office closed, going through the documents produced by the other side to identify documents that would support the client’s position; I then used those documents in drafting the opposition to the summary judgment motion. Ultimately the court ruled in our client’s favor and denied the motion.

I can be very patient when necessary. For example, several years ago a client told me they wanted to move some work to me, but they had to get their partners on board with the move. Nothing happened immediately, and every so often I would ask the client if anything was happening with it. Eventually, the work was moved to me, and we are still handling that work today. In another example, we were handling a trademark portfolio for a different client. The client decided to split the portfolio and brought in another firm to work on part of it. While I wasn’t happy about it, I made sure that we continued doing good work for the client. After a few years, the client moved all of the work back to our firm. I’d like to think that reinforcing to the client that we do good work and that we keep their interest in mind eventually caused them to shift the work back to us. I’m sure there were some other reasons, but I’m also sure that played a role. Sometimes patience is required, either to achieve a client’s goal or to grow business. It is important to remember that patience can often be a useful tool.

Do you think you have had luck in your success? Can you explain what you mean?

I have been very fortunate in my career to have been in the right place at the right time. I started with my firm as an intern during law school. When I joined the firm full time after I graduated, a new policy for dealing with domain name disputes had just been launched, so I was asked to read it and learn it. Shortly after that we had clients who were having domain name disputes and who wanted to take advantage of the new procedure, so I wound up being the person who prepared all of the papers to submit and who managed the proceeding. Since I had that knowledge, I became the “go to” person for domain name disputes. And eventually we had one that was so hotly contested it went through the new procedure and then to court — all the way to the federal court of appeals. I worked on the case throughout, with several of my colleagues.

Do you think where you went to school has any bearing on your success? How important is it for a lawyer to go to a top-tier school?

I got my internship with my firm through a law school externship program, so in that sense where I went to school definitely had a bearing on my success. To me, all law schools teach the same thing, black letter law, and so I am not sure from that point of view that where you go to school matters. Law school is also a place to make contacts that could help you later in your career, and in that regard where you go to school could have an impact.

Based on the lessons you have learned from your experience, if you could go back in time and speak to your twenty-year-old self, what would you say? Would you do anything differently?

The one thing I would tell myself would be to take more science classes as an undergrad, so that I could sit for the patent bar. If you do not have enough science credits you cannot sit for the patent bar. Having a patent background would have been valuable in helping clients protect what they create; passing the patent bar would have allowed me to prosecute patents before the Patent Office. But my colleagues have been very good about teaching me about patent law when I need to know something about it, and in helping out when necessary.

This is not easy work. What is your primary motivation and drive behind the work that you do?

I want to help clients achieve their goals; one of the things that we do is to become intimately familiar with our clients, and we want them to succeed. And, of course, I want to do as good a job as possible so that they continue to work with us and so that they refer others to our firm.

What are some of the most interesting or exciting projects you are working on now?

In the past year and a half or so I have had two different matters where clients were using specific colors on their products, and each received a notice letter claiming that the use of those colors infringing someone else’s rights in a similar color. One case involved a shade of green used on garden hoses, and the other involved a shade of blue used on prosecco. Another matter I am working on involves a ring developed by one of our clients that was knocked-off and sold for a far lower price by a home-shopping channel.

Where do you go from here? Where do you aim to be in the next chapter of your career?

I think my interest is really in just helping people protect themselves and what they create, and my firm has been a good platform for that. Education is a really important part of being a lawyer, since you have to educate clients about what they need to do and why they need to do it. So maybe I would get more involved with that, or with teaching law students. Life is so hard to predict, who knows what will happen next?

Without sharing anything confidential, can you please share your most successful “war story”? Can you share the funniest?

We were working on a case where our client was accused of trademark infringement; we brought a lawsuit asking the court to declare that there was no infringement, and the other side moved to dismiss the case, claiming there was no dispute that the court needed to resolve even though they had sent a threatening notice letter. I worked on the opposition to the motion, heavily editing an early draft. When the court ruled on the motion in our client’s favor, it issued an opinion that borrowed significantly from our brief. It was satisfying the see that the court agreed with our arguments.

Another success that is memorable for me, involved trademark applications we filed for a client seeking to register the configurations of five well-known pieces of furniture as trademarks. We took a unique approach to the filings, and while we were confident that we would be able to secure registrations, it was all up to whether the Trademark Office Examiner would accept our submissions, and there was no way to predict that. Hearing that the applications had been approved was something that we celebrated, and of course the client was happy because we had achieved what we told them we would do.

Ok, fantastic. Let’s now shift to discussing some advice for aspiring lawyers. Do you work remotely? Onsite? Or Hybrid? What do you think will be the future of how law offices operate? What do you prefer? Can you please explain what you mean?

Right now I am working on a hybrid basis. I think there are benefits to being in an office and benefits to working remotely. Working remotely of course gives you more flexibility (and no commute time) and more family time, but to me, it is also more isolating and less collaborative. Yes, you can collaborate online, but it is just not the same thing as working together in person. We are social beings and need to be around other people. I have seen lawyers go after each other over e-mail while working remotely, and I don’t think it would have happened if we were physically in the office at least some of the time. And I think that one of the reasons our firm was able to succeed during the pandemic is because we all know each other from being in the office together.

How has the legal world changed since COVID? How do you think it might change in the near future? Can you explain what you mean?

Like other industries, there was a rapid transition to doing things remotely, whether meeting with clients or court conferences. That includes working remotely, as we already discussed. Some of that very well may continue in the future. I’m not sure that we’re going to go back to a world where lawyers are in their office five days a week. But I am also not sure that in the future lawyers are going to working remotely five days a week. And that is going to lead to questions about how much office space a law firm needs. A lot of people also think that broadens the pool of available employees, but that could raise tax issues and questions about the unauthorized practice of law. At this point it is very hard to predict.

We often hear about the importance of networking and getting referrals. Is this still true today? Has the nature of networking changed or has its importance changed? Can you explain what you mean?

Networking and referrals continue to remain important. You never know where your next opportunity will come from. Several years ago I was introduced to a client who I did a little work for; a few years later they recommended me to someone they knew who was looking for a new IP attorney, and that introduction led to one of my most important clients.

Based on your experience, how can attorneys effectively leverage social media to build their practice?

To me, social media is really a tool to reinforce who you are. If someone has been recommended to you, they can look at your social media presence to make sure that you are the right attorney for them and are knowledgeable about your area of practice. This can be by posting about news articles relevant to your practice area, or successes that you or your firm have had. It is also a good way to follow what your clients are doing, and to see if there is anything they are doing that should be protected.

Excellent. Here is the main question of our interview. What are your “5 Things You Need To Become A Top Lawyer In Your Specific Field of Law?” Please share a story or an example for each.

1. Don’t be a jerk. This would seem self-evident, but it isn’t. There are practicing attorneys who believe that they should be as difficult as possible and that they should not agree to requests from opposing counsel unless doing so advances their client’s interest. Several years ago, I was working on case and the partner I was working with had an upcoming pre-paid vacation for significant wedding anniversary. The other side moved for a preliminary injunction (the case had already been going on for some time), and our papers would have been due while the partner was away. The partner called opposing counsel, explained the situation, and asked for an extension of a few weeks. Opposing counsel refused to grant it, and we had to make a motion to the court, which was ultimately granted. Who did that benefit? How did refusing that request advance the other side’s goal? I’m not saying to acquiesce to every request from opposing counsel, or not to zealously advocate for your client. Clients don’t want to hear that they have to pay for these types of disputes, and courts really want attorneys to be able to work these things out among themselves.
2. Know how to say no. Like doctors, lawyers (particularly intellectual property lawyers) have to develop a bedside manner. Clients will come to you for advice on what they can and cannot do. Often, they will act and not ask for advice until after they are doing something. In either case, a lawyer’s job is not to just say no — if you develop a reputation for just saying no, then clients won’t be so willing to work with you. They have a business goal they want to achieve, and a lawyer’s job is to help them achieve that goal without violating the law. Sometimes that means saying that something can’t or shouldn’t be done. Other times it means making suggestions about how something can be modified so that it does not run afoul of the law. We are regularly asked to give opinions on whether trademarks are available for registration and use. While we do sometimes say that a trademark is not available, we frequently will advise on ways a proposed trademark could be modified to avoid potential issues down the road.
3. Client relationships are important. Being a successful lawyer is not all about the law. It’s also about being human, and recognizing that your clients are human. Many of our clients have been clients for a long time — ten years, twenty years, even thirty years; I’d like to believe that those clients have stuck with us because the strength of our relationships with them (and because we have done good work for them). For example, when the terror attacks hit Paris in 2015, I reached out to one of our Paris based clients to make sure that they were OK. Of course, I was concerned about business, but I was also concerned about the people, who I had been working with for several years. When the pandemic started in 2020 and business nearly ground to a halt, the same client came to us, explained their situation, and asked for a discount, which we agreed to, as an investment in our continuing relationship. And more recently, when Tropical Storm Ida came through the New York/New Jersey area and caused horrible flooding, the same client reached out to see how we were doing and to make sure that we had not been affected by the flooding. Reaching out to clients when good or bad things happen in their lives is important.
4. Get out of the office. To some extent this goes hand in hand with the prior point, but being a lawyer is not about staying in your office. One way to develop client relationships is to go to their place of business so you can better understand their business. If you go visit, sometimes you will see something that you did not know the client was doing, and that might be something that should be protected by a patent, trademark and/or copyright. If a client is having a product launch or some other event that you are invited to, go to it if you can. The client will appreciate that you took time out to support them.
5. Earn the trust of others. Whether it is clients, referral sources or even opposing counsel, earning trust can go a long way to success. This is done in large part by giving good advice or by making referral sources look good. It requires keeping aware of current developments in the law and the client’s business, and sometimes it requires making a sacrifice (this could be not charging for a particular piece of work, or supporting something the client is working on). Once you have earned that trust, you will become the “go to” person for the client, even on things that you might not be able to help with. And having that trust will help when things on a particular matter don’t go as you had anticipated. Be careful though — trust can take a long time to earn, and it can be destroyed very quickly.

We are very blessed that some of the biggest names in Business, VC funding, Sports, and Entertainment read this column. Is there a person in the world, or in the US with whom you would love to have a private breakfast or lunch, and why? He or she might see this. :-)

It would be great to be able to speak with Bob Chapek of Disney. Disney is a tremendously innovative and influential company, and always has interesting IP issues. So I’d love to speak with him and see if there is some way that we could work for them. And my kids might think I was just the tiniest bit cool if I was doing that work, especially if it was for certain brands…. But honestly, I’d be happy to speak with anyone who is interested in protecting their business’ IP to explain to them what can and cannot be protected, and to see if we can help.

This was very inspiring. Thank you so much for the time you spent with this. We wish you continued success and good health!