The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Forrest Flemming, Associate—Intellectual Property
New York associate Forrest Flemming works in the Intellectual Property department at Kilpatrick Townsend, where he focuses his practice on trademark law. Before joining the firm, Mr. Flemming served as a judicial law clerk for the Honorable C. Lynwood Smith, Jr. in the U.S. District Court for the Northern District of Alabama and worked as a summer associate for Kilpatrick Townsend in 2012 and 2013.
Mr. Flemming graduated from Emory University School of Law (with honors), where he served as a research assistant to Vice Dean Robert B. Ahdieh and Professor Peter Hay, as well as the notes and comments editor of the Emory Law Journal. Mr. Flemming received his Bachelor of Music degree from the University of North Carolina at Chapel Hill, where he acted as a research assistant for the Honorable Richard Y. Stevens in Raleigh, North Carolina.
Describe your practice area and what it entails.
I focus my practice primarily on trademark enforcement and litigation—I manage nationwide brand-protection programs for clients, specifically in the brick-and-mortar retail space and on the internet. I also represent both plaintiffs and defendants in high-profile trademark cases in federal trial and appellate courts.
What types of clients do you represent?
I represent a variety of major brands, including global leaders in finance, athletic wear (adidas), social media (Facebook), automobiles, lifestyle clothing, internet media services (Yahoo), and travel booking (Expedia).
What types of cases/deals do you work on?
I mainly handle federal court trademark infringement actions, representing both plaintiffs and defendants in trial and appellate courts. My clients have prevailed in temporary restraining order and preliminary injunction proceedings, as well as in summary judgment, trial, and appeal actions. My cases range from smaller two-party matters to high-stakes litigation with up to a dozen parties, dozens of witnesses, and several experts per side.
How did you choose this practice area?
I’ve always been fascinated with brands and the way organizations represent themselves to the public to distinguish themselves from other companies. A trademark is a very personal asset, and I wanted to incorporate that aspect of a business into my daily legal practice. I selected trademark litigation specifically after developing general litigation skills—which translated perfectly into trademark litigation work—in law school and during my federal clerkship. After determining my legal path, Kilpatrick Townsend became my first choice of employment based on its innovative attorneys and the Intellectual Property group’s stellar reputation among national publications and IP experts. Unlike many full-service firms, Kilpatrick Townsend features IP as a core practice area, which really appealed to me.
What is a typical day like and/or what are some common tasks you perform?
Every day, I communicate with my clients, counseling them on their brand-protection programs, providing risk assessments, and negotiating with infringers. The rest of my day, I draft briefs, run e-discovery, take depositions, and do anything else I can—as efficiently as I can—to ensure my clients hold the best position possible in their litigations.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Trademark litigation is still litigation, so any litigation skills acquired will always translate well. For trademark enforcement, efficient management skills are also a must. Large brands faced with large numbers of infringers need effective team management—especially when handling dozens of matters at a time—as well as first-rate client service.
What do you like best about your practice area?
Brands represent an integral part of our clients’ businesses. Since they embody the image and the message the client wants to convey to the world, protecting a brand is like protecting a client’s identity. My favorite part of my practice area is learning more about my clients—their history, their vision, and what they stand for—so I can best represent and protect their IP business assets and reputations.
What misconceptions exist about your practice area?
Many law students dismiss intellectual property because they don’t have a scientific background. But trademark and copyright work—and even some patent work—do not require science degrees. I, for one, have a degree in vocal performance, not physics. I highly recommend that those interested in pursuing a career in trademark and copyright law do so since there are no prerequisites standing between them and those practice areas.
How do you see this practice area evolving in the future?
The answer I would give today is the same answer I would have given back when I started my legal career: the internet and the resultant globalization of consumer markets has significantly increased the importance of online brand protection. Infringers can deceive huge numbers of consumers via the internet at little-to-no cost, and their methods of concealing their identities only get more sophisticated. These developments make online brand protection more crucial from a branding perspective—but also more difficult—every year.
What are some typical career paths for lawyers in this practice area?
Working at a traditional law firm or as an in-house attorney. At Kilpatrick Townsend, all associates have the opportunity to achieve partner status, but given the level of client engagement with companies that sometimes have entire departments of intellectual property attorneys, in-house opportunities often arise. Almost invariably, Kilpatrick Townsend trademark attorneys who subsequently go in-house continue to work with the firm on all of its trademark matters.