‘Never Underestimate Anybody’

What Rick Hoffmann learned from John Roberts while prepping him for a SCOTUS argument 

Published in 2024 Michigan Super Lawyers magazine

By Taylor Kuether on August 8, 2024

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Rick Hoffmann remembers a lot of activity at the Supreme Court of the United States the day he was there in 2000—and it wasn’t for his intellectual property case. 

“We happened to go when there was something pending on their calendar at the same time,” says Hoffmann, an IP litigator at Reising Ethington in Troy. “It was the Bush and Gore hanging chad.” 

It was Nov. 29, and the court was days away from hearing Bush v. Gore. “When we left [the court], there was a lot of energy in the building, none of it related to our case, but there was a lot of excitement and a lot of people hanging around,” recalls Hoffmann. “For me, I was humbled.”

It had been a whirlwind few days for Hoffmann, who was in Washington, D.C., to work closely with a Supreme Court specialist his firm had hired: future Chief Justice John Roberts, then at Hogan & Hartson (now Hogan Lovells).

“We went out there to prepare, and to prepare John for the argument,” says Hoffmann. “That was kind of interesting because he wasn’t a trademark specialist, but he was a Supreme Court specialist.” 

The trademark know-how is where Hoffmann and his firm came in. They were representing a company called TrafFix Devices Inc. in a case that concerned the junction of trademark law and utility patent law, ultimately asking the question: What, if anything, from a utility patent could be protected by trademark?

“We were able to give him a lot of the nuances of the trademark laws and the patent laws, our position obviously on the fact that the utility patent in this particular case precluded the ability of [the respondent], Marketing Displays Inc., to claim that they had a trademark,” Hoffmann says. “He was incredibly smart, and he picked up all the issues really quickly. He was inquisitive, he asked a lot of questions.” 

“There was more to it than I anticipated. … I got schooled.”

While preparing, Hoffmann and his colleague pretended they were justices asking Roberts questions as he was going through his script. 

“We were working on timing, we were working on hard questions, we asked him what we thought were some of the hardest questions he might get on the technical intellectual property issues,” Hoffmann says. “I remember him, when it was all over, stopping and looking at us and asking, ‘How would you have answered that question? Because I was just stumped.’ So we filled him in on some of that.”

After two days of intense preparation, Hoffmann says, the whole experience at the Supreme Court was over in about an hour. But that hour had quite an impact. In a unanimous decision, the court held there can be no trademark protection for a functional design disclosed in a utility patent.

“That was a really important case to our client and to us,” he says. “Because it’s cited all the time and it’s a seminal case in trademark area, when I give talks”—Hoffmann teaches a patent law class—“these things kind of come up and it’s really nice to have the hands-on experience of really knowing what happened. I can drive the legal point home.” 

Hoffmann recalls learning a lot from watching Roberts argue the case.

“One of the big things I learned is it’s not just a patent trademark issue; there are big public policy issues that the court was deciding. It was within the context and the nuts and bolts of trademark law, but it was also, ‘How do these things benefit the public if we rule one way or the other?’ There was more to it than I anticipated,” he says. “To me, that was really interesting. I got schooled.”

The experience shaped his long-term practice. “I learned that we have to look at the interplay of all of the different disciplines of IP, whether it’s copyright or design patent, utility patent or trademark, and see if we can protect something by not just one of those maybe, but two or three different ones.” 

He also learned a lot from the justices. 

“I was really impressed,” says Hoffmann. “We know they’re brilliant people, but I couldn’t believe how prepared they were for even these nuances of intellectual property law. The questions they asked were all spot-on, they got right to the heart of the issue, and you could really tell that they were up on all the issues. It was really pleasantly surprising to me how much they knew going into that.”

He found the overall experience humbling. 

“When you see somebody who I’ll call a professional at it—John Roberts was fantastic—I’m not sure I could ever take that on. It does leave you with a sense of, ‘Boy, when I litigate cases, there’s a lot of bright people out there. Never underestimate anybody.’”

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Richard W. Hoffmann

Richard W. Hoffmann

Top rated Intellectual Property Litigation lawyer Reising Ethington P.C. Troy, MI

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