What Can Law Firms Do to Attract and Retain More Clients?

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What Can Law Firms Do to Attract and Retain More Clients

The legal landscape is changing.  Attorneys and law firms will have to change their way of thinking to attract and retain clients as online services such as LegalZoom, Rocket Lawyer, Trademarkia and other legal services companies are actively marketing to and competing with traditional law firms.  Additionally, corporations are closely monitoring their legal spend by using sophisticated software and tools to keep a watchful eye on billing and results.

In the past, law firms have been opposed to looking at creative ways to bring on new clients in fear of ethical violations and other concerns.  The unneeded liability and risk that is associated with creating partnerships with other service providers or setting up tools to help clients track and monitor their brands and other risks, was not something that law firms wanted to take on.

If law firms want to compete and retain business, they need to change their mindset and diversify their offerings.  This means they must come up with new and creative ways to show their clients that they are looking out for them proactively and going the extra mile when it comes to counseling and litigation.

Here are some examples that we have seen work well for some of our clients:

IP & Brand Protection Attorneys

As an example, Intellectual Property (IP) attorneys handling trademark registrations/prosecutions should offer monitoring of their clients’ IP portfolios as an added benefit for working with their firm. There are numerous software offerings that law firms can utilize to handle this service in an automated and economical fashion. This type of service gives the client a sense of safety and it can lead to the need for more legal work that arises from the monitoring.  As an example, if you detect a possible infringement of a trademark you might need to research the infringement and draft a cease and desist notice.  If not resolved these matters can end up in litigation as well.

Management of Intellectual Property would include, but is not limited to the following:

  • Copyrights
  • Trademarks
  • Patents
  • Domain Name (Registrar Lock and Automatic Renewal)

Insurance Defense Firms:

Insurance companies are always looking for ways to minimize costs, especially when it comes to litigated claims in the Workers’ Comp and Premises Liability areas.  Law firms could use an investigator or paralegal to offer complimentary background profiles on all new litigated claims in an effort to look at the following;

  • Driving Record (Non-industrial accidents that occurred before the date of injury/date of loss)
  • Workers’ Comp Claims Search
  • Civil & Criminal Background Check
  • Social Media Profile & Preservation

Plaintiff / Personal Injury Attorneys:

People that have been injured as a result of an accident caused by a third party are looking to be made whole.  They can have staggering medical bills; loss of income and their families can be severely impacted.  Offering a complimentary asset search performed by a paralegal or private investigator on the negligent third parties in the accident can be an added benefit and become the deciding factor in selecting one firm over another.  The injured party should understand if the person or company that harmed them has the ability to pay should a settlement be agreed upon.

Business Litigation Attorneys:

In heated business disputes emotions often run high and if you can give your clients some “dirt” or expose “skeletons in the closet” about the adverse parties, you can really get your client to understand that you are on their side and are in the trenches with them.

The law firm could utilize a research paralegal or private investigator to conduct an asset and liability investigation on the parties involved at the time of filing and/or prior to depositions.  This type of research will often give the client a lay of the land in terms of any tangible real estate/property owned by the defendant.  This is important because it can tell you if there is equity in any real estate owned to satisfy a judgment.  It also allows you to file fraudulent conveyance claims in the event that the real estate is deeded or transferred to “family” members as the litigation heats up or after a judgment is awarded.

These are just a few examples of how lawyers can look to create better relationships and drive better results with their clients.  After all, many of the services we have referenced are available to your clients, so even if they decline the additional services they should be made aware of them because it elevates you from the competition and shows clients that you understand their business and potential risk exposures.

 

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Trends 2019 – From Tim Santoni

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Trends 2019 From Tim Santoni

Trends 2019 – From Tim Santoni

In our business we work with businesses and their trusted advisors (Lawyers, CPA’s, Commercial Insurance Brokers, Business Brokers, Human Resources Consultants, Brand Managers, Marketing Teams & Consultants).  Our investigation and background checks are really just a tool to help mitigate risk in the hiring process or develop evidence and information to make an informed legal or business decision. As we enter the 4th quarter, I wanted to point out some trends that I have observed as a result of our work and interactions with our clients.

Investigations

In the information age that we live there are vast amount of data and information available online through free and paid providers.  The parsing through and verifying of this information is now the challenge.  Online research tools and Open Source Intelligence (OSINT) are becoming the standard to conduct background research on litigants and people injured at work and in automobile accidents.  The open source tools offering by OSINT and other providers have been maliciously hacked and were forced to be taken down. Many of the free tools available are now protected behind paid sites or software offerings.  As far as new searches go, the Vehicle Sighting Reports is an amazing tool to track down where someone is living, working and who they might be associating with.  If at all possible insurance carriers would forego the expense related with surveillance/subrosa and activity checks if they can get more cost effective information obtained through databases.

Background Screening Trends

Industries with forced compliance such as, Finance/Banking, Information/Technology (IT), Construction & Healthcare are consistently in need of custom background screening programs to meet the requirements of their contracts with state and government agencies.  Employers are also looking into continuous monitoring of criminal activity so they are alerted when current employees have runs in with the law.  Proper authorizations and disclosures are a key focus of plaintiff attorneys looking to files cases against employers and  background screening companies which are often referred to as CRA’s.  Electronic Authorizations and Disclosures are emerging as a great solution to decrease turnaround time on background checks while maintaining compliance.  

IP & Brand Protection

Trademark clearance and registration related investigations are on the rise with increased Trademark Applications being filed.  Trademark applications from Chinese based applicants have really spiked. There is an increasing need to identify rogue sellers of infringing and counterfeit products on sites like Amazon that often give counterfeiters an identity shield. We are seeing an increased need for evidentiary “undercover” buys from sellers that are not having their sales fulfilled by Amazon and other e-Commerce providers in an effort to identify and enforce. The removal of domain name ownership records, commonly referred to as “WHOIS” data is making it more and more difficult for brand owners and their attorneys to identify the operators of rogue sites that are selling counterfeit/infringing products.  The lack of WHOIS information is also impacting the ability for online brand protection providers to send automated C&D letters as the first step in the enforcement process.

Risk Mitigation

Open Workers’ Comp Claims are still an ongoing concern for many California employers.  Businesses are frustrated with the lingering claims that are costing them time and money.  They are also fighting back to show their employees that they do not pay out on exaggerated and fraudulent claims.  Trade Secret & IP theft is now a concern for all types of employers. We are seeing an overwhelming need to upgrade and update IT policies so that when internal theft of IP occurs it can be investigated and tied to the perpetrator.  If employers are hit with Trade Secret, IP Theft and Employment Practices lawsuits they need to look at having an on-demand computer forensics partner to forensically preserve the data in a timely manner to avoid spoliation and overwriting.

 

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Does Your Intellectual Property Investigator Need to Know Trademark Law?

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Does Your Intellectual Property Investigator Need to Know Trademark Law

In a Trademark Law case it is critical that attorneys uncover and present relevant and actionable evidence and information.

Does the investigator that you and your firm works with need to understand Trademark Law? Do they need to understand the standards of evidence? Do they need to know about attorney work product privilege?
The answer to the above questions is a resounding YES. In order to effectively and efficiently develop admissible evidence, your IP Investigator should be experienced and understand the basics of Trademark Law (Lanham Act) because it will guide the investigation and the report.

Additional there are some keywords and phrases that your IP Investigator should understand.

Filing Basis:
1. Section 1(a) Registration
2. Section 1(b) of the Lanham Action (Intent to Use)- The ITU trademark application allows you to reserve rights to a trademark while you prepare to launch your product/service in commerce.
3. Foreign Registration
4. Foreign Application
ITU (Intent to Use)
Specimen
Abandonment:
 According to 15 USC 1127, a trademark is considered abandoned if “it’s use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances.
  1. Trademark abandonment, therefore, requires two elements:
    1. nonuse; and
    2. intent not to resume use.
Nonuse for 3 years is the typical standard
Common Law Use
Classes of Goods and Services
One of the key legal premises for US Trademark rights is the idea that in the US we are a first to “use” country as opposed to a “first” to file country. This means that Trademark rights (state or federal) can be established through the filing of a business name (Corporation, LLC, DBA), Business Name, Taglines, design elements, Logo or Brand, Product Name/Line, etc. There are limitations on enforcement and legal remedies if you only possess common law rights. On the flip side if you are looking to clear and register a trademark, those pesky COMMON LAW uses of your mark or a similar mark need to be uncovered to avoid potential infringement.In order for the report and or work product to be admissible, it is vital the trademark investigation is conducted in an ethical manner by a licensed and experienced investigator or license investigation firm. This type of consideration is not always top of mind when a case starts but can be a major issue if and when the reports must be turned over, depositions are set and there is a need to present the evidence and information at trial. The first thing that the other side will do is pick apart the investigation and the investigator. They will look at the credentials, licensing and methodology of the investigator because if they can show the investigation was done improperly the evidence can be thrown out.
The IP Investigator that you are working with must understand the relationship that they have between the end client and the attorney. It is really important to funnel all communication, reports and invoices to the attorney representing the client to keep the work product protected. We would also suggest that email communication be kept to a minimum to avoid having to turn over emails that might reveal information that is not favorable to the case. If your IP Investigator is licensed, experienced and understands Trademark/IP Litigation rules of evidence and attorney work product they will suggest ways to limit the exposures referenced in this blog.

Remember to ask your investigator these questions…

  • Are you licensed? Individually and as a firm/agency?
  • Have your reports and work product been submitted as evidence in cases at the State and Federal Court Level?
  • Have you and or your team been deposed?
  • Have you and or your team testified in trial?
  • Are you an expert witness?
  • Do your reports contain specific language about attorney work product privilege?

Link: Federal Trademark Search (USPTO)

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“Process Server Daily” Podcast

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Process Server Daily Podcast Tim Santoni

 

 

Tim Santoni recently spoke with Michael Reid on his podcast “Process Server Daily” about life as a Private Investigator and President/CEO of Santoni Investigations.  Michael and Tim discussed many topics including IP/Brand Protection , Anti-Counterfeiting Investigations, Surveillance and Risk Mitigation  . Also covered were the many ins and outs of both the Private Investigation and Background Screening businesses. Our thanks to Michael for having Tim on his show.

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Brand Protection / Anti-Counterfeiting

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Brand Protection Anti-CounterfeitingCreation, monitoring and protection of Brand Assets (Intellectual Property) is something that is often overlooked until brand protection becomes an issue. The issues often appear when counterfeits show up online on popular eCommerce sites like Amazon, eBay, Alibaba and others. Clients and customers request warranty work or exchanges of non-genuine goods. Even worse when distributors complain that their competitors are undercutting prices and selling counterfeits. Understanding the importance of intellectual property protection is crucial for minimizing risks.

Here are some things that businesses can do to mitigate exposure to brand erosion, customer confusion and counterfeits,  as well as ways to protect intellectual property.

Control, monitor and audit your supply chain:

• Conduct extensive research on your contract manufacturers and other business that impact your supply chain (Background Research, Litigation Research, Credit Profile)
• Request the ability to conduct audits of your suppliers
• Investigate any affiliated business or online resale channels of your suppliers & manufacturers.

If your brand ends up in the hands of infringers, diverters and fraudsters, here are a few things you can do to identify and enforce:

• Undercover Buys / Evidentiary Buys
• Identify / Trace Sources of Infringement
• Cease & Desists Letters – In-person delivery of C&D letters accompanied with an interview can prove valuable in letting the infringer know that you are serious and you can often uncover valuable information about other players through this process.
• Seizures (Civil & Criminal)
• Create & Implement Online Brand Protection Programs
• Register your trademarks with ICE for enforcement at the borders
• Conduct discreet (undercover) visits at contract manufacturers, partners and distributors

These intellectual property protection examples are effective strategies to helping mitigate risks and prevent further damage. Admissible evidence is crucial to brand protection, so it is best to work with an outside law firm and trained private investigation firm that can obtain evidence of infringement/counterfeiting that will hold up in litigation. Please contact our offices at 949-900-3400 for assistance.

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Domain Tools – by Mike Santoni

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Domain Tools by Mike SantoniI find that Domain Tools is a good resource to determine the registration information about a domain name (otherwise known as “Whois”).  The registration will supply information about the name of the registrant, their address, phone number and email address. It also lets you know who the registrar is for the domain name. If the registration is privacy protected (registrars supply this as a service to protect the identity of the registrant), in Domain Tools you can review the Whois History. Oftentimes, when someone creates the domain, they list their name, address, etc. and then later down the line, they decide to privatize it. But with the Whois History, you can review all the registrations and updates dating back to the creation of the domain.

If the domain is privatized, you can send an email through the registrar that hopefully will get to the true owner. However, if you know the name, etc. of the true owner, you can then do some background on that person to determine if they are “domainer” (someone who owns numerous domains and will often squat on them until they get the right offer to sell), a company with a legitimate business reason for having the domain, a private individual who only owns this domain (Whois will tell you how many domains are affiliated with the registrant’s email address), etc. Knowing this type of information supplies you with information on how to best negotiate buying the domain from the registrant.

To get the Whois History, you need to subscribe to the paid version of Domain Tools, but it’s invaluable.

– Mike Santoni

Connect with me on LinkedIn here

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6 Things You Can Do if You Find Someone Counterfeiting Your Product at CES

6 Things You Can Do if You Find Someone Counterfeiting Your Product at CESCounterfeit products found at ces

Counterfeit products found at ces

If you find yourself at CES checking out your competitors and you stumble upon a product that looks just like yours what can you do?

Here are 6 things options to keep in mind if you find yourself in this unfortunate and frustrating situation;

  1. Confront the seller directly (DIY)
  2. Borrow someone else’s badge and play undercover investigator to discreetly interview the seller or make an evidentiary buy
  3. Attempt to make a sample “test” purchase yourself
  4. Take a covert picture or video of the product being sold – discreetly take literature and products sheets from the booth
  5. Contact an IP Attorney
  6. Contact an investigator that specializes in IP Infringement/Enforcement Investigations for a consult

BONUS TIP: Remember that if you elect to interview, contact or make an evidentiary buy on your own the evidence obtained can be thrown out because of the conflict of interest and the fact that you are not a Licensed Private Investigator. If you are actively in litigation with the seller making contact in any way this is EX PARTE contact with a litigated party and has severe consequences.

Here is a link to a video that discusses this point in more detail.

 

 

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What is the future of Intellectual Property Law?

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What is the future of Intellectual Property Law?

In a recent episode of Entrepreneurship Answered (link below), an IP Attorney asks Gary Vanderchuck about the future of Intellectual Property Law.

I think his response is spot on. In today’s fast paced business environment, creators and innovators have access to capital and tools that previously were not available 10 years ago. They no longer need to work for Intel or IBM to work on projects. They can create something in their garage and get funding through crowdsourcing or investors. Then they can quickly go to market and get visibility via social media.

The IP attorneys that can counsel these types of individuals have an opportunity to really themselves apart. It doesn’t make sense for the big firm IP attorneys to take the time to help small companies and start-ups with limited resources. If the smaller firm IP attorneys want to help these blossoming businesses, there will be no end to the amount of work they will have.

Now, on the investigation side, we are seeing that brand owners, inventors and those that want to file for trademarks are smaller companies and entrepreneurs. They are looking for business advice along with a tutorial on IP rules and laws. They have an idea for a product or service and want to go to market.

What these people are interested in is protecting their new ideas from others. It becomes even more crucial for investigators to perform due diligence on finding the actual date of first use, not just the one listed on the USPTO website.

Basically, this boom of entrepreneurs will be a win-win for investigators, attorneys, and the entrepreneurs themselves in the long run.

If you want to know the legal speak behind trademark law and infringement, this video by Peter McDermott is an excellent guide.

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DomainSkate Features IP Investigation Expert Tim Santoni in their Newsletter

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Tim Santoni

I was introduced to David Mitnick, President of DomainSkate several months ago.  Prior to meeting David our firm had worked on several IP Investigations for his former firm, Amster Rothstein, in New York.

After meeting David and using and testing his brand protection and monitoring technology, DomainSkate, I was pleasantly surprised.  This is the first piece of technology that I have found to be useful to  businesses, small and large, to give them useful information about their brand name and domain names.  First, it will tell a business or brand how their name and likeness is being used or not used online and secondly what domains are out there that are similar to theirs and who owns them.

DomainSkate is also useful to IP attorney and investigators as it provides access to information they can use to actively manage their business.  I talk with business owners every day that are looking for ways to mitigate risk, snap up available and registered  domain names and monitor their brand as the Internet and Domain landscape evolves.

I had the pleasure of sitting down with Lindsay Goldwert of DomainSkate last week.  She was kind enough to ask me about the IP Investigation business, trends, and what the future holds.  To read the complete article click the link below.

article (Click Here)

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Internal Brand Protection: Why might your employees steal your intellectual property?

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Internal Brand Protection

Preserving your brand requires protecting your intellectual property. The Federal Bureau of Investigation (FBI) warns that insider threat of the theft of intellectual property causes far more damage and is much harder to detect than threats from the outside. The most efficient brand protection starts with understanding employee motivations for stealing your trade secrets. The FBI lists more than a dozen personal factors that lead to employee theft of intellectual property. These factors fall into three broad areas: money, emotions and working conditions.

Money

Money causes employees to steal in two ways. Some people always want more of it and some people always need more of it. This suggests that intellectual property theft occurs at all wage levels. A large debt to income ratio may leave a person overwhelmed to the point that they need the money that another person or firm would pay for your trade secrets.

Emotions

Revenge is the most obvious emotion that may drive an employee to steal intellectual property, but it is not the only one. Overwhelming feelings of empathy towards smaller companies and feelings of loyalty towards other individuals or businesses can also drive an employee to spy for outsiders. Finally, some people compulsively steal intellectual property. Consider the employee who steals office supplies because he is a kleptomaniac. This compulsion also drives an intellectual property thief.

Working Conditions

The way the working conditions may lead to a loss of intellectual property ties in with the emotional motivations. Happy employees are less likely to steal from their employees and well-paid employees are happy employees. In fact, a 2012 study at the University of Illinois at Urbana-Champaign found that when employers pay more in retail stores, employees are less likely to steal inventory. The study also reveals that higher wages promote feelings of loyalty and a desire to keep a high-paying job.

Santoni Investigations & Backgrounds offers brand protection by assessing potential insider threats to your business. Contact us today for a consultation.

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