Top Lawyers: Matthew D Asbell Of Lippes Mathias On The 5 Things You Need To Become A Top Lawyer In Your Specific Field of Law
An Interview with Eric L. Pines
Empathy — The best lawyers know how to truly align with their clients and understand what is important to them, and we always find a way to address their concerns somehow. If you truly care about the people you are serving, you will be way more effective than if you see them as a number or a dollar sign.
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 Matthew D. Asbell.
Matthew is a partner and member of Lippes Mathias’ intellectual property team. He assists clients in clearing, obtaining, enforcing, and defending trademark, patent, design and copyrights in the United States and throughout the world, while also advising on domain names, social media and related issues.
Prior to becoming a lawyer, Matthew developed a broad base of knowledge and expertise in roles he held across various industries, managing emerging singer-songwriters and recording artists, training corporate employees in software applications, and at one point, studying medicine
Matthew serves as an adjunct professor of law and frequent guest lecturer at Fordham University and The Benjamin N. Cardozo School of Law (Yeshiva University), and has taught at Columbia University and the Instituto Superior de Derecho y Economia (ISDE) in Madrid, Spain. He regularly mentors new lawyers and law students.
Matthew is the host of INTANGIFY, a podcast on the intangible aspects of business. He co-chairs the intellectual property alumni practice group of Cardozo Law, and runs the Steadfast group, an international network of intellectual property practitioners. He also chairs and serves as an active member in bar association committees in the American Bar Association Section of Intellectual Property Law and the International Trademark Association.
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”?
Never. It was at the bottom of my list. I guess that is what happens when you make prejudgments about a particular profession. I swerved through my early adult vocational life — writing, recording and promoting music, going to medical school, teaching software — until I learned that what I loved about art, science, and technology was the innovation and inspiration. And that is what ultimately helped me to find intellectual property law.
Can you tell us a bit about the nature of your practice and what you focus on?
Clients come to me when they are planning to launch or expand a business, product or service, including when they recognize that their interactions are with providers or consumers well beyond U.S. borders, and they realize that they need to secure their intellectual assets, build a portfolio that may support investment or sale of the business, or stop someone else from taking what they have created. I help them assess what they need, budget and plan out the strategies, seek and obtain the rights, and appropriately monitor, enforce, and defend them. These can be rights in brand names and logos, works of authorship, new designs or inventions.
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?
Can I list “empathy” three times? Seriously, this is a customer service business, and efforts to understand and appreciate the businesses we serve and anticipate their questions, doubts, and concerns go so far. My greatest successes have come from helping clients navigate through tricky waters in a way that maintains their trust and confidence. Sometimes just taking the extra steps to help a client better understand the rationale behind your advice and simplify the complexities of the law and the practice can be so valuable to the client. I hope that I am as good as I believe I am at understanding and aligning with clients. Some other traits — a successful attorney needs good spoken and written communication skills, and needs to know when to pivot between different mediums of communication instead of always relying on email. I like to jest about a Colombian lawyer client of mine that pretty much ignores my emails, but jumps to respond when I write to him on WhatsApp. My Chinese and Turkish corporate and law firm clients also greatly appreciate the extent to which I make myself accessible to them, and avoid letting them think of me as this removed, formal and expensive kind of surgeon that will perform a requested operation and send my bill without helping them feel and be heard and work through the many other aspects that impact how a legal matter is and should be handled. Lastly, and this aligns with what I have already stated, successful attorneys need to be accessible to the people and businesses that need their services and an accessible mentor to the people who will eventually succeed him or her.
Do you think you have had luck in your success? Can you explain what you mean?
Luck. Sure. Luck is being exposed to opportunity — encountering the right people. Sometimes you can make your own luck by putting yourself in the places where you are likely to encounter those people. The rest is up to you. You have to pursue the opportunities, stay in touch, demonstrate your care and empathy and skill, and then with a little bit of luck, opportunities become successes. My luck has sprung largely from having a dynamic mother, who worked full time while raising my brother and me at a time when women doing that were viewed negatively. My mother always liked to make friends with people from other cultures, and when I was a teenager, she sent me off to live with some of them for short periods. This gave me what I believe to be a broad cultural perspective, which I apply in my day to day practice. It was lucky that my mother is who she is, and that she did what she did. The luck was necessary but not sufficient to bring success. My advice to others is to try to maximize success based on the hands they are dealt, and when those hands are less lucky, find others that are willing and interested in helping. There are plenty of us who live in gratitude for all we were given, and are motivated to bring opportunities to those with whom we interact. I am proud to be able to take a miniscule spoonful of credit for helping a law student mentee achieve his lifelong dream of working as counsel for a soccer team by involving him in a video I was producing about IP involved with a soccer stadium.
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?
Yes and no. Wherever you go, you will encounter others and find opportunities. Certainly, some schools attract certain kinds of people, and that may impact your success. But rankings are generally overrated, and the reason to go to a top-tier school is to meet other top tier people and have access to a top tier alumni network. My law school, The Benjamin N. Cardozo School of Law (Yeshiva University), was and is very highly rated for intellectual property law, and that is what attracted me. What I learned there and who I have met certainly impacted my success. But I believe that if I had gone elsewhere, I would still have achieved success. It is just a matter of how you define the term and what your aspirations are.
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?
I probably would tell myself not to limit my learning to my studies and passive receipt of opportunities, and instead to get out into the community and engage actively with organizations, events, and people. I did these things in my mid-thirties in law school, and wish I had started much sooner.
Maybe I would also tell myself to be less afraid to reach out to professionals I admire and to ask for guidance and mentorship. I did without these things because I didn’t realize that they were available or that anyone would care about me or my future. I have since learned about so many amazing people that are happy to help me achieve success in the same ways that I am happy to help others with less experience than me.
This is not easy work. What is your primary motivation and drive behind the work that you do?
Tough question. I guess I would say that my primary motivation is obtaining and maintaining client trust and satisfaction. I am also motivated by the sense of accomplishment I get in solving difficult problems for clients in creative ways.
What are some of the most interesting or exciting projects you are working on now?
I was recently asked to argue against the USPTO’s refusal of the trademark NEVER GIVE UP DAY in relation to events organized as part of a global celebration of the persistence of the human spirit that occurs on August 18 every year, and despite a strong initial effort, the examining attorney was not persuaded. Inspired by the client and the events that he promotes, I did not give up, and instead dug deeper and came up with an even better strategy and even stronger arguments, and I am pleased to advise that NEVER GIVE UP DAY is about to be registered.
I recently handled extremely expedited global trademark clearance searches for an artificial intelligence platform as it prepared to launch its newest iteration.
I am defending an applicant’s efforts to register the term PADAWAN as a trademark from Lucasfilm, which has never or at least almost never used the term as a trademark and certainly not for the same services as our client is planning to offer, and in view of the fact that others have successfully registered and/or used the term.
I am defending the trademark application by a famous Turkish sausage manufacturer from a challenge raised by Turkish immigrants in the United States that are attempting to steal the name and claiming that our client cannot use the mark because of FDA regulations precluding the importation of Turkish meat products into the United States.
I am managing the global trademark portfolios of one of the world’s largest video camera producers, a major global payments processor, a major artificial intelligence platform, and a major food distributor.
I am negotiating a global agreement to coexist between my client, a major payment processor, and another party that uses the same term for a cryptocurrency token.
I am challenging the applications and registrations of companies that have adopted identical marks to those of my clients in the United States and elsewhere in the world.
I recently worked with colleagues to defend a major Chinese mobile phone company from an alleged patent infringement in the United States asserted by a so-called patent troll (i.e. non-practicing entity).
I am aiding a bright young graduate student of physical therapy in obtaining patents on his new and ergonomic physical fitness machines.
I was recently interviewed by a best-selling author on my use of tactical empathy in representing clients in their intellectual property matters.
Where do you go from here? Where do you aim to be in the next chapter of your career?
On one hand, I am working to help prospective and existing clients to know that I am accessible to them and that they should not avoid reaching out to me as a result of prejudgement about the cost, nature or level of service that I provide. I am trying to better convey to the world that I am accessible, empathetic, culturally sensitive and interested in providing support to all kinds of people for all kinds of issues.
On the other hand, I am trying to pursue greater balance in my life, by attending more to my family, my spiritual, emotional, and physical health, and my work as a professor and as a volunteer.
Without sharing anything confidential, can you please share your most successful “war story”? Can you share the funniest?
Oh, there are so many.
One client had run into a situation in which he had senior rights to a trademark in many countries over another party, that had adopted essentially the same mark and established itself in a number of other countries before my client. The task before me was to negotiate a worldwide coexistence agreement, but the attorneys for the other side came from an entirely different culture. After maybe a year of negotiations back and forth, it occurred to me that we were at a standstill. Everytime we proposed a particular change, the other side would just reject it. It eventually occurred to me that the opposing counsel was just misinterpreting the intentions behind our proposed changes, and that was a function of the organization and order in which the draft agreement addressed the issues. I was inspired to rework the organization rather than the substance of the draft agreement, and seemingly magically, we were ultimately able to achieve a global agreement and a highly beneficial collaboration and cooperation for several years afterward.
In another circumstance, as a junior associate, I was counseling a client regarding a refusal of the company’s U.S. trademark application. The client contact was an experienced patent attorney, familiar with the practice of obtaining patents from the United States Patent and Trademark Office, but he had little understanding of trademark practice. In patent practice, it would not be uncommon to schedule a time to discuss a refusal with the examiner and in some circumstances, one might even meet in person. But in trademark practice, it is more common to make an unscheduled call with the examining attorney, and a meeting in person for this purpose would be highly unusual. The client asked if we could arrange an interview with the Examining Attorney at a particular date and time, and I happily agreed to set that up so he could participate and better understand the Examining Attorney’s views on the issue. In the moments prior to our scheduled call, the client called me, and asked where I was. When I replied that I was in my office, he angrily informed me that he had flown to the trademark office in Virginia and that he had expected me to be there. Surprised, I apologized for the misunderstanding. We handled the call with the examining attorney and won the case, and fortunately, I was not asked to take the blame for the misunderstanding.
When I was an associate, one of the firm partners made a mistake in responding to a trademark office action, and I was tasked with trying to correct it. There is a general rule that when an examining attorney accepts an applicant’s amendment of the golds or services in an application, it is not possible to then expand those amended goods or services to something broader. The partner had accidentally deleted some of the goods from the application in her submitted response. As soon as she realized the error, she promptly called the examining attorney by phone to address it. When she could not reach the examining attorney, she called the supervising attorney. The supervisor advised of the rule about expanding the goods, and the examining attorney would not allow the correction because he contended that once the partner clicked “submit”, the response had been accepted. I determined to write and submit a petition to the director of the trademark office with arguments supporting that “acceptance” by the examining attorney meant more than merely receiving the submission of the response, and instead applied only where the examining attorney had reviewed the proposed amendments and determined them to be acceptable as written. I was very pleased to win the petition and fix the partner’s mistake, and I was later tickled to learn that my law student extern turned this war story into a ballad, completely with rhythm and rhyme!
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?
I work onsite typically 3–4 days a week, and remotely on the remaining days and on the weekends. There will always be folks who prefer one way or the other, and the future will need to accommodate that. But aspiring lawyers should try to work onsite as much as possible because of the extremely high value of face time. Collaboration in person tends to have fewer time constraints and usually includes opportunities to discuss topics outside of those on an agenda or even just an opportunity to socialize, whether by the water cooler or at lunch. The value of face time especially in today’s work environment should not be disregarded.
Also, as artificial intelligence starts to become more and more a part of legal practice, young lawyers working remotely will struggle to be differentiated from their AI counterparts, which may eventually replace them. Attorneys working in person will be seen as more than merely the machines that produce deliverables.
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?
See above. The world has changed because of the extent of hybrid and remote work, the use of artificial intelligence, and the work ethic and values of professionals, demanding greater balance in their lives. The trend will be toward valuing only higher level work because the basics will be addressed by AI. Higher level work will go to those who are working onsite because of the relationships they develop through in person collaboration and socialization. Those that work more remotely than not will miss out on mentorship and training opportunities and better assignments.
Based on your experience, how can attorneys effectively leverage social media to build their practice?
Attorneys need to regularly engage with the conversations on social media, primarily on LinkedIn, and not simply to post the occasional news of a legal success. We need to write about cases, share our opinions, and share bits of our personal lives so that readers connect to our human side and appreciate us as individuals. We also need to be using social communication apps like WhatsApp for Business or WeChat, being mindful of the need to continue protecting client confidences. These apps have a role in legal practice because they enable informal communication between people who are thousands of miles from each other, and this can help to establish greater trust and resolve doubts read into the formal communications sent via email.
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.
Legal knowledge and expertise — this is of course a minimum requirement. You need to know your stuff or be able to learn it quickly. Although I am a registered patent attorney and I regularly counsel clients on patent matters, I usually rely on a colleague of mine to draft the patent applications for my clients because being a “dabbler” is an invitation for mistakes and even failure. I have come across many dabblers that occasionally handle U.S. trademark applications for their clients, and I am always surprised by the mistakes I have seen them make.
Work ethic — If your practice is or is going to be global like mine is, you will have work emails coming in on Sunday evenings as colleagues in Asia wake up until late Friday evenings when Hawaiin colleagues are getting closer to the end of their day and the weekend. You will have a need for calls late at night before deadlines expire or to accommodate clients in different time zones. If you have a family like me, you will need to take some hours here or there to be with them, and that might mean you stop working at 6:30 pm and start back up at 10 pm. Having a strong work ethic and an ability to juggle priorities and expectations is essential to success as a lawyer.
Creativity — The practice of law has evolved from the times where lawyers were considered the nay-sayers in a business. Our clients came to us only after they were in trouble because they knew that coming to us beforehand would just mean they were roadblocked. Nowadays, while we are still risk averse, our job is to evaluate the risks and still find a way to move forward in most instances. How can we mitigate the risks? Mitigating risk is often about being open and thinking creatively of ways to solve the problem or at least make the risk more tolerable. We also need to be creative in our arguments — sometimes even a little creative humor can help an adjudicator lean in your direction.
Empathy — The best lawyers know how to truly align with their clients and understand what is important to them, and we always find a way to address their concerns somehow. If you truly care about the people you are serving, you will be way more effective than if you see them as a number or a dollar sign.
Communication Skills — You can be the world’s foremost expert, but if you can’t present ideas in simple, practical and culturally competent language, what you have to say will have little to no importance. What you say needs to be tailored to who your audience is and how who they are may impact their expectations and interpretations. The most effective lawyers know their audiences and how to talk with and sometimes persuade them.
Presence — Yes, this is a sixth item. But top lawyers need presence too. That means that they need to be focusing their attention on what their client is saying and also that they need to be out and about in the community so that people see them and hear their name. When I was a little boy, my big brother and the other kids in the neighborhood where we grew up would play a game called Jailbreak. This was like a combination of Cops & Robbers, Hide & Seek, and Tag, but I won’t describe it further. When I was one of the cops and my brother was one of the robbers, my brother would complain that I was somehow in multiple places at once. He used to say “Matthew is everywhere”. Somehow this sunk in and became a part of my professional persona. I try to get out to events and to be online and to volunteer in different communities, and generally just to be present because I believe that people notice that and remember you for it.
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. :-)
There is no single person that I wish I could meet, but there are hundreds, maybe thousands that I would want to meet over a meal. No one person has so much influence, and if they did, I suspect that the meal together would end up being a disappointment. But I am inspired by people that are passionate about what they do or what they have created. Do any passionate creators or innovators read this blog? Hope so. And hope they will reach out.
If I have to pick someone, I hope that it will not be considered a cop out to say my mother. She has really always been my hero because she has dedicated herself as a doctor even until now in her eighties, but not an ordinary doctor. Rather, she has been the ultimate patient advocate, and her passion and the empathy and thoughtfulness she puts into their care has resulted in not only the extension of the quality and duration of their lives, but also their great appreciation and love for her. My mother worked while she raised my brother and me at a time when women who worked were looked at negatively. My mother befriended and kept in touch with people all over the globe and made it a point to send me to live with those friends in their homes for short periods so that I was exposed to their culture and did not have a U.S. centric perspective.
If you are not satisfied by this answer, my newest heroes are Jack Canfield and Chris Voss. Jack for inspiring me to train my subconscious and to be even more ambitious but in a more well balanced way. Chris for helping me better appreciate the power of empathy, which was always a part of me, but previously unharnessed.
This was very inspiring. Thank you so much for the time you spent with this. We wish you continued success and good health!
About the Interviewer: Eric L. Pines is a nationally recognized federal employment lawyer, mediator, and attorney business coach. He represents federal employees and acts as in-house counsel for over fifty thousand federal employees through his work as a federal employee labor union representative. A formal federal employee himself, Mr. Pines began his federal employment law career as in-house counsel for AFGE Local 1923 which is in Social Security Administration’s headquarters and is the largest federal union local in the world. He presently serves as AFGE 1923’s Chief Counsel as well as in-house counsel for all FEMA bargaining unit employees and numerous Department of Defense and Veteran Affairs unions.
While he and his firm specialize in representing federal employees from all federal agencies and in reference to virtually all federal employee matters, his firm has placed special attention on representing Veteran Affairs doctors and nurses hired under the authority of Title. He and his firm have a particular passion in representing disabled federal employees with their requests for medical and religious reasonable accommodations when those accommodations are warranted under the Rehabilitation Act of 1973 (ADA). He also represents them with their requests for Federal Employee Disability Retirement (OPM) when an accommodation would not be possible.
Mr. Pines has also served as a mediator for numerous federal agencies including serving a year as the Library of Congress’ in-house EEO Mediator. He has also served as an expert witness in federal court for federal employee matters. He has also worked as an EEO technical writer drafting hundreds of Final Agency Decisions for the federal sector.
Mr. Pines’ firm is headquartered in Houston, Texas and has offices in Baltimore, Maryland and Atlanta, Georgia. His first passion is his wife and five children. He plays classical and rock guitar and enjoys playing ice hockey, running, and biking. Please visit his websites at www.pinesfederal.com and www.toughinjurylawyers.com. He can also be reached at eric@pinesfederal.com.
