Michal Kalasek / Shutterstock.com
After a career beginning with a dramatic trial and two decades of experience, Stacy Grossman decided to strike out on her own and start a law firm. Here, she talks to Influential Women in IP about the steep learning curve and figuring out how to attract and retain clients.
Stacy Grossman has always been passionate about brands, content and entrepreneurship. After graduating from law school, she worked at a boutique entertainment firm and practised at a large IP firm, and then went in-house at a global media company. In 2014, ready for a new challenge, Grossman decided to launch her own practice.
“With nearly 20 years of experience as a lawyer, I had solid skills and a powerful network. I was ready,” she says about her decision.
Armed with just one client and a great deal of determination and excitement, Grossman ventured into the unknown.
“From the first day, I was fully charged, excited not only to offer my services to clients, but also to learn how to build and manage my own business. Starting a law firm from scratch is not for the faint of heart, it’s been a lot of work. But it’s absolutely been worth it,” she adds.
Since then Grossman, who is based in New York, has grown an enviable practice, serving hundreds of clients ranging from individuals and startups to private and public companies, across many industries.
Influential Women in IP sat down with Grossman to discuss her experience, the growth of her firm, and her thoughts on influential women in IP.
What is your professional history, and how did you come to specialise in IP?
I’ve always loved the arts and began my career in New York as an associate for an entertainment lawyer named Ken Burrows. I spent my first months as a lawyer preparing for trial—we were representing the actor Joan Collins in a breach of publishing contract lawsuit against Random House.
Less than a year after I graduated from law school, I was on Court TV (a television channel), sitting at counsel’s table with Ken and Ms Collins, waiting for a jury verdict. We won, and everyone told me to retire—that was in February 1996, almost 25 years ago.
We also worked on trademark and copyright cases, and it was my interest in IP that led me to Fish & Richardson, where I became a principal of the firm and focused on litigation.
I left Fish in 2005 for an in-house counsel position at News Corporation. Working at a media company with clients such as the New York Post and HarperCollins taught me how to be a business-minded lawyer. I sharpened my trademark prosecution, global portfolio management, licensing, negotiation and litigation avoidance skills. I also learned how to be a smart client.
What prompted you to start your own firm?
I’ve always been interested in owning a business, and when I left News Corporation, I decided that the time had come to test my entrepreneurial skills.
A wise person told me: “All it takes is a little business card and a lot of guts and drive.” I rolled up my sleeves and gave myself two years to build a practice. The two-year mark passed, and I was doing well, so I kept going.
What were the biggest challenges during your firm’s first few years?
Having spent the past eight years as an in-house lawyer, I wasn’t in the practice of getting clients—I was used to being the client.
The first challenge was learning how to attract clients and build my firm’s reputation. Fortunately, I have amazing professional and personal networks and tapped into them for support.
"I discovered that the best way to grow is simply to provide great service and build lasting relationships with clients."
I spent time learning about different ways that lawyers market their services and I discovered that the best way to grow is simply to provide great service and build lasting relationships with clients.
Another challenge was figuring out how to balance billable work with all the time needed to manage a business. I’m still amazed by the volume of administrative work: payroll, insurance, book-keeping, conflicts, and so much more.
There was a very steep learning curve at the start, and I continue to learn each year. On the bright side, navigating complex business issues myself allows me to relate to my clients in a meaningful way—I feel their pain.
What makes you excited about your work?
I’m truly passionate about helping clients of every size build, grow and monetise their brands and businesses. I also take great pride in owning my own business, and in all that I’ve accomplished in a relatively short time.
I love the substance of my work, especially when I encounter novel issues. For example, in 2019, the US Patent and Trademark Office (USPTO) implemented a controversial rule requiring the publication of domicile addresses on trademark applications.
I filed a petition to protect the privacy of a client who did not want to disclose a home address. As a result of my and similar petitions, the USPTO has amended the rule.
Also in 2019, I won a trial before the Trademark Trial and Appeal Board. The board ruled that using a brand in connection with a pop-up restaurant constituted “use in commerce”, allowing my client to keep its trademark registration.
What does Influential Women in IP mean to you?
To me, an influential woman in IP is someone who is helping to improve our IP laws, to elevate the IP bar, and to train the next generation of IP lawyers.
I have the great privilege of knowing and working with many women who are true leaders in the IP world. One colleague recently argued her second case before the US Supreme Court.
I know and admire women who develop IP legislation, lead in-house IP departments, and work to create balanced environments for women at big firms and companies.
Many of my clients are also influential women in IP. Although not lawyers, they are intrepid businesswomen building brands, and partnering with us to navigate complex IP issues in a digital and global world. It’s a true joy to collaborate with inspiring, talented people in connection with the legal issues that are my passion.
Stacy Grossman founded The Law Office of Stacy J. Grossman in 2014. She serves hundreds of clients, including startups and public companies, across a range of industries. Before establishing her firm, Grossman was vice president and associate general counsel at News Corporation, where she provided counsel to the New York Post, HarperCollins, BSkyB, Sky Italia and others. She can be contacted at: email@example.com
Stacy Grossman, The Law Office of Stacy J. Grossman, Influential Women in IP, diversity, litigation, USPTO,