In-House Counsel Solutions Series: 3Q 2024

In-House Counsel Solutions

This is the 3Q installment of our In-House Counsel Solutions Series. The series is focused on identifying trending legal issues facing in-house counsel and providing practical solutions to these problems.

In this issue, we discuss strategies for effective witness preparation, trademark registration for business slogans, new challenges to old federal agency regulations, and the Supreme Court’s decision to end Chevron deference.

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Strategies for Effective Witness Preparation

By Darin Klemchuk

Witness preparation is one of the most difficult tasks a lawyer faces because it is the moment, similar to the jury receiving the charge, where the lawyer gives up control.  The following is a detailed discussion of practical strategies and tips we have developed to prepare witnesses for cross examination: 

1)  Start with a thorough discussion of the Basics of Witness Preparation — “The Rules”.  As anyone who has taken even a few depositions knows, most witnesses fall short of following these rules. 

2)  Expert witness preparation requires additional steps to confirm the expert’s opinions, underlying assumptions, and report accuracy.

3)  Non-verbal behavior can undermine what would otherwise be technically strong testimony.  Most of these appear subconsciously from the witness.  The best way to improve and manage these behaviors is mock question-and-answer exercises, preferably video recorded.   

4)  All witness performance can be improved by understanding a witness’s natural stress response and using one or more of the attention-management tools discussed in this article. 

5)  For key witnesses, a thorough social media and internet footprint search may be considered as part of the preparation process. 

6)  Counsel should keep in mind that their own reactions may affect witness performance, so it is very important to focus on controlling the controllables. 

7)  Finally, hiring an outside lawyer to act as opposing counsel for mock question-and-answer exercises is worth the investment for key examinations and witness preparation.  An outside lawyer eliminates the trial team’s inherent biases and may uncover weaknesses not considered by defense counsel, either due to the outside counsel’s unique perspective or their lack of an established theory of the case.

For important testimony or witnesses, it is worth considering live, mock cross-examination exercises.  Depending on the situation, it may be better to select an experienced trial lawyer, who is not on the trial team and unfamiliar with the witness.  This minimizes the chances of bias diminishing the value of the exercise.  Retaining a lawyer outside the firm, whose sole motivation is to play hard in the examination, is likely to lead to the best outcome, since this approach eliminates most biases and assumptions.   

A more comprehensive discussion of strategies for witness preparation can be found at Effective Witness Preparation in the Digital World.

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Trademark Registration for Business Slogans

By Mandi Phillips

One of the most common areas of inquiry in the intellectual property field of law is how to obtain federal registration for a business slogan. In recent years, the USPTO appears to have adopted a narrower view of what constitutes an inherently distinctive slogan, resulting in an increase in refusals to register slogan marks. The types of slogan marks typically refused registration are those that (1) convey general information about the goods or services, including “merely informational matter” or commonly used or laudatory phrases; or (2) are merely descriptive of the goods or services.

Companies can minimize the risk of a refusal to register a slogan by ensuring that IP counsel is involved in the selection process from day one. Those who understand the nature of common refusals issued by the USPTO are better equipped to balance the need for consumer recognition with the need to avoid a merely informational or descriptive mark that cannot obtain federal registration. 

For a comprehensive discussion of trademark registration for business slogans, see our Ideate blog post, Securing Trademark Registration for Your Business Slogan.

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Phoenix Rises: New challenges to Old Federal Agency Regulations

By Mark Stachiw

On the last day of its 2024 term, the United States Supreme Court issued a momentous decision that has the potential to revive challenges to old federal government agency regulations.  In Corner Post, Inc. v. Board of Governors of the Federal Reserve System, No. 22–1008 (Released July 1, 2024), the Supreme Court found that the statute of limitations period under the Administrative Procedure Act begins to run from when a claim by a plaintiff first accrues, not when the regulation became final.  This interpretation substantially changes challenges to federal agency regulations.

This decision will have a significant impact on businesses wanting to challenge federal government agency regulations in at least three significant ways:

• Corner Post will allow businesses to challenge old agency regulations if the regulations first caused an injury to the business less than six years ago—potentially long after the regulation was adopted. 

• Coupled with the overturning of the Chevron doctrine, Corner Post could allow businesses to potentially challenge regulations that were initially upheld under Chevron. 

• Corner Post allows a business that is not directly regulated by the regulations to challenge the impact of the regulation on the business. 

A more comprehensive discussion of what the Corner Post ruling means for U.S. businesses can be found at our Ideate blog, Phoenix Rises: New challenges to Old Federal Agency Regulations.

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Supreme Court’s Decision Marks the End of Chevron Deference

By Jim Chester

In a landmark ruling, the U.S. Supreme Court significantly curtailed the power of federal agencies to interpret the laws they enforce, asserting that courts, not agencies, should independently interpret ambiguous statutes. This decision overturns the long-standing precedent set by Chevron v. Natural Resources Defense Council. 

Established by the Supreme Court in 1984, Chevron deference was a principle of administrative law that allowed federal agencies to interpret ambiguous laws within their jurisdiction. If the statute was ambiguous, courts would defer to the agency's interpretation as long as it was reasonable.

Chevron deference gave agencies significant leeway in shaping policy and regulatory interpretations, acknowledging their expertise in their respective fields. This doctrine was seen as a way to promote efficient governance, but over time, it faced criticism for allowing agencies to potentially overreach their authority without adequate judicial oversight. 

In Loper Bright Enterprises v. Raimondo, the Court declared Chevron deference "fundamentally misguided" and overruled it.  The ruling also signals a shift toward the Skidmore doctrine, which suggests that while agency interpretations may be respected, courts are not bound to follow them. 

The Supreme Court’s decision to overturn Chevron deference is expected to have significant implications for businesses, particularly those in heavily regulated industries. The decision marks a pivotal shift in administrative law, redefining the balance of power between federal agencies and the judiciary.

While the ruling is intended to enhance judicial oversight and curb potential executive overreach, it introduces new complexities for businesses navigating the regulatory landscape. Companies will need to closely monitor legal developments, adapt their compliance strategies, and potentially engage more actively in legal and policy advocacy to navigate the evolving regulatory environment effectively.

A more comprehensive discussion of the end of Chevron deference can be found at our Ideate blog, Supreme Court’s Decision Marks the End of Chevron Deference. 

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Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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