In W.R. Grace & Co. v. Gracecare, Inc., 152 F.R.D. 61 (D.Md. 1993), the corporate counsel for plaintiff, W.R. Grace, telephoned David B. Allen, a well-known trademark attorney, "'to retain him to render advice to Grace in connection with pending litigation and in connection with a trademark application.'" 152 F.R.D. at 63.
During the course of that telephone conversation, corporate counsel discussed with Allen "'the marks at issue, some of the issues of trademark law that had arisen in the case, including the possibility and appropriateness of expert testimony on legal issues, and some of the arguments defendants were making.'" Id.
Also, "'the discussion included a disclosure of some of'" lead outside counsel's and corporate counsel's thoughts "'on certain issues in the case.'" Id.
Corporate counsel believed he had established an "'attorney-client relationship . . . between Mr. Allen and Grace'" and, in fact, Allen billed for that conversation as well as a second telephone conversation and the research he was then asked to perform. Id.