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There's been quite a bit of talk about biglaw patent prosecution and how it is no longer sustainable, given the move towards flat fees and the relatively lower margins. This seems to be why Ropes & Gray is spinning off its patent pros practice.

But what about trademark prosecution in biglaw? I still see many postings for these positions. I'm wondering if TM prosecution within biglaw is also a loss leader like patent pros, or if it's actually more profitable than patent pros.

Interested to hear an insider's perspective.

Not in a straight TM prosecution practice but I do some TM prosecution work. It absolutely is a loss leader. Unless we are doing some super routine trademark, we will generally lose money there. What we do get, though is the ability to cross-sell our corporate work.

The issue with TM pros is that it's almost always going to be flat fee work, and there are a bunch of firms that only do TM work and sustain themselves on volume, so they price uber-aggressively. This means that we have to price aggressively as well, or we won't have the business.

I get the sense at my firm that the same issues apply. The only difference I see is that TM pros is a lot more insular and harder to break into to begin with, so maybe it's easier to take a loss on a 2-5 person TM group than the typical patent pros group, which usually has a lot more people.

Anonymous User wrote:I get the sense at my firm that the same issues apply. The only difference I see is that TM pros is a lot more insular and harder to break into to begin with, so maybe it's easier to take a loss on a 2-5 person TM group than the typical patent pros group, which usually has a lot more people.

My guess is that if - even with the TM prosecution attorneys' efficiency - the practice group is a loss leader, they definitely don't want associates from other groups wasting billable hours trying to help out with the group (opportunity cost = outside associate's lost billables, TM pros group attorneys' lost time spent training, also having to deal with the lower efficiency of the outside attorney). It just isn't worth it.

Plus, I've heard of patent pros associates struggling to make billables, even in the major IP boutiques, so I can only imagine how tough it must be for the TM folks (unless there just is more TM work than patent pros work in general).

Above anon--I meant the TM field as a whole seems more condensed and insular than patent pros. It seems like it's a lot harder to get into TM pros than patent pros, even though the same efficiency argument applies to both. But as someone on the patent side, I can see how it'd be easier to justify a loss on, say, a small 4-person TM team than it will be to justify one on a100-person patent pros team, even if both can lead to additional work down the line. TMs also seem a lot more crucial to most businesses than patents.

So while I expect my group to get shoved out à la R&G any day now, I think our TM team's lean size will allow it to survive much longer.