Attention: Corporate General Counsel
or In-House IP Counsel

DO YOU NEED A VIRTUAL IN-HOUSE IP MANAGER?*

Are your outside counsel costs for trademark and other IP matters spiraling out of control? 

Do you know there are easy ways to do more in-house, but you just don’t have the time or the expertise to research and implement the appropriate systems and processes? 

Not yet ready for a full-time IP staff member, but you could use some in-house help now?

You may be ready for full-time help, but you’re not quite sure what skill set would be most beneficial or how to interview to get the right person?

Do you have a staff member going on leave, or you just need some temporary help to catch up?

Have a big project coming up for which you need to supplement your existing team with experienced, cost-effective help?

BENEFITS:

For a lot less than a seconded paralegal from a law firm, you’ll get cost-effective business expertise, without any long-term commitments or benefits costs.  I can help you:

  • Reduce outside IP counsel fees

  • Work more efficiently with IP counsel for maximum “bang for the buck”

  • Educate and effectively utilize available in-house resources

  • Create an IP strategy that reflects the company’s goals and builds long-term value in IP assets

  • Coordinate effectively with internal stakeholders

  • Set up appropriate systems to streamline the IP management process

  • Understand what it takes to bring the entire process in-house and if that’s an appropriate strategy for your company

  • Know when and whom to hire

  • Help existing staff get caught up and back on track

  • Project management or assistance

  • Branding or rebranding efforts

  • Acquisition due diligence and portfolio integration

  • Fill in for short-term leaves of IP staff

QUALIFICATIONS:

Hi, I'm Kate Fessler. I spent 8-1/2 years managing the worldwide trademark portfolio for Amazon.com and its subsidiaries, including setting up appropriate systems and bringing the management of the portfolio in house.  Expertise includes all parts of the process, from educating and working with internal stakeholders in the conception stage, to creating an appropriate filing strategy, seeing applications through to registration in the US and other jurisdictions, monitoring and enforcing proper trademark use and incidences of infringement.  Here are some of the specifics about my experience:

  • Initially brought management of trademark portfolio in-house; advised and assisted in setting up  required systems and procedures

  • Management of international trademark portfolio for more than 10 subsidiaries as well as Amazon retail/technology groups, including searching and clearing new trademarks, drafting goods and services descriptions, filing and prosecuting US trademark applications, and directing international filings

  • Drafting responses to minor Office Actions and directing international counsel in Office Action responses

  • Directing and coordinating international oppositions with internal teams and in-country counsel;

  • Enforcement activities, including drafting cease & desist letters and coordinating with outside counsel when necessary

  • Receiving, researching and responding to cease & desist letters regarding company- or subsidiary-owned trademarks, keyword advertising, and products/services featured/advertised on the website(s)

  • Liaison with internal product teams and subsidiaries, providing trademark/domain and marketing/advertising training, advising and assisting with proper trademark selection and usage

  • Review of press releases, marketing and advertising materials for proper trademark usage and compliance with advertising guidelines and FTC regulations

  • Review and assistance with due diligence for potential acquisitions; integration of acquired trademarks into portfolio

  • Liaison with litigation team for trademark-related actions

  • Assisting in co-existence and prior rights negotiations

  • Drafting and reviewing trademark licenses and other trademark-related agreements

  • Coordinating with Patent and Domain teams and marketing/advertising teams for new product/service launches, new product/service name protection and support of domain sunrise applications and UDRP proceedings

Schedule your no risk, no commitment *free* initial consultation today!  I’ll look over your outside counsel bills, and if I can’t save you more than you’ll pay me, I’ll tell you so.  There is no charge for this absolutely confidential meeting.  If I can save you money, I’ll show you where and how ~ and how much!  And if there are other ways I can recommend to streamline and save money, I’ll tell you that too, also at no  cost to you.

Get your outside IP counsel costs under control.  

Contact me today at kate@katefessler.com or 206-579-4562.

*DISCLAIMER:  PLEASE NOTE that I am not an attorney.  This is an offer primarily for business consulting services.  Some paralegal services offered may be performed only under the supervision of an attorney.