The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Nicole Townes, Partner — Trademark and Litigation
Nicole Townes counsels a wide range of clients on litigation matters relating to trademarks, trade dress, copyrights, false advertising, unfair competition, trade secrets, and patents. Her practice also focuses on domestic and international trademark selection and clearance, prosecution, and procurement. She has experience managing worldwide trademark portfolios and enforcement for a number of large clients. Nicole frequently represents clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. In addition, Nicole has assisted clients in combatting counterfeit and gray-market goods with the assistance of U.S. Customs. She has also handled domain name disputes and advised clients regarding notice and takedown procedures for social media sites and domestic and foreign e-commerce websites.
Nicole serves on the firm’s Diversity and Recruiting Committees. She is also a contributor to the firm’s Fashion and Beauty and Litigation blogs. Nicole is the Chair of the Orange County Bar Association Intellectual Property Section and a board member of the Orange County Intellectual Property Law Association.
Nicole attended Vanderbilt University for both her undergraduate and law degrees.
Describe your practice area and what it entails.
I have a very diverse practice. However, I dedicate most of my time to assisting clients with brand protection and enforcement. I help clients protect their trademark or trade dress rights and prevent third parties from improperly capitalizing on the goodwill my clients have developed in their brands. Conversely, I advise and defend clients when another party makes allegations of trademark infringement against them. I help clients obtain trademark registrations in the U.S. and foreign countries. I also represent clients in U.S. opposition and cancellation proceedings, which determine whether a party has the right to obtain and own a trademark registration.
What types of clients do you represent?
I represent clients across a diverse range of industries, including food and beverage, fashion and beauty, home furnishings, entertainment, software, engineering services, and medical devices. Some exemplary clients include Monster Energy, simplehuman, Holly Hunt, AECOM, Gavrieli Brands, and Inogen.
What types of cases/deals do you work on?
I work on trademark, trade dress, copyright, licensing, false advertising, unfair competition, trade secret, and patent litigation matters. I also manage worldwide trademark portfolios and enforcement strategies. I assist clients with domestic and international trademark selection and clearance, prosecution, and procurement. I also represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
How did you choose this practice area?
I chose intellectual property because it is always evolving with changes in technology. During my first year of practice, I worked on a few trademark matters, and I really enjoyed them. I liked that brands and branding are part of everyday life.
What is a typical day like and/or what are some common tasks you perform?
My days vary widely. However, some of the tasks I typically encounter include conducting client calls or meetings regarding litigation strategy or trademark protection strategy, corresponding with opposing counsel, negotiating agreements, drafting or responding to motions, participating in internal team strategy meetings, corresponding with foreign attorneys regarding trademark protection and enforcement, and attending legal or client-centric networking events.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
I recommend taking intellectual property classes and participating in an intellectual property clinic in law school. I also recommend joining any intellectual-property-focused organizations. Also, writing, negotiation, and oral advocacy skills are very important in my practice. Thus, I recommend participating in a journal and moot court or mock trial, as well as taking a negotiations class.
What do you like best about your practice area?
I enjoy the fast pace and challenge of my practice. IP law is constantly evolving, and my clients continually invent new and effective ways to engage with consumers. Every day, I learn something new.
What are some typical tasks that a junior lawyer would perform in this practice area?
Knobbe tries to expose junior lawyers to a wide range of tasks. Some exemplary tasks a junior lawyer may encounter in the trademark prosecution area include reviewing trademark searches and preparing clearance opinions. Junior lawyers also regularly draft Office Action responses during examination of U.S. trademark applications. On the litigation and enforcement side, junior lawyers routinely draft cease and desist letters, pleadings, discovery requests and responses, and motions.
What kinds of experience can summer associates gain in this practice area at your firm?
Knobbe allows its summer associates to select projects that interest them. A summer associate interested in trademark prosecution will gain experience reviewing trademark searches and providing clearance opinions. The summer associate will also have opportunities to draft Office Action responses. As for litigation and enforcement, summer associates will assist with legal research projects and prepare initial drafts of discovery requests, pleadings, and motions. Summer associates may also have the opportunity to attend depositions, hearings, trials, and litigation team strategy meetings.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
I recommend that you show a demonstrated interest in intellectual property law. For example, you should take the intellectual property classes offered at your law school and participate in intellectual property organizations or intellectual-property-focused journals. I also recommend that you try to obtain summer internships or jobs that expose you to intellectual property law. Finally, develop a clear and persuasive explanation for why you are interested in intellectual property law that you can provide during interviews.