6 Questions To Ask Before Bringing Trademark Work In-House

Nick Potts,

The results of ALM Intelligence’s Corporate Counsel Insourcing and Outsourcing Survey were recently released in their report - “Build or Buy? The Evolution of Law Department Sourcing.” This report highlights a dramatic shift in insourcing for the majority of legal departments in companies of all sizes, reflecting the growing importance of in-house legal departments in the vital planning and execution of a company’s bigger goals.


Workload is the same - in the survey, only 4% of lawyers cited a decrease in workload as the reason for reducing their reliance on outside counsel. Historically, virtually all of the work of a legal department was outsourced to outside counsel. Today, legal departments are insourcing more than they outsource. In the survey, lawyers stated that the responsibility for 8 out of 11 practice areas and 10 out of 12 back end functions now lies with in-house counsel.

Use of alternative legal service providers is increasing - over 50% of lawyers stated that their legal department now utilizes alternative legal service providers to help them manage their workload.

These evolutionary developments are a hot topic of debate and against the range of factors involved, companies often ask, “How do I know when to bring trademark searching and watching in house?” There is no doubt that it is better to make that shift too early rather than too late, but what are some of the signs that indicate considering that move would be a good idea?

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6 Questions To Ask Yourself If You Are Considering Bringing Trademark Work In-House:

1 ) Is Intellectual Property (i.e. your brands) crucial to the success of your company?

As every industry becomes increasingly globalized, thriving companies use their brands to strongly distinguish themselves from their competitors at home and overseas, increase consumer loyalty and their bottom line, making their brands one of the essential components of success.

2 ) Are you serious about building strong brands and developing an Intellectual Property strategy plan to take care of your most valuable asset?

There are many factors involved in the decision whether to do this in-house or outsource. One frequently cited by our clients is that their strategy required visibility, speed and accuracy for their in-house counsel who knows their products, their market and their goals intimately.

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3) Are the expenses of using outside counsel piling up?

When reviewing actual internal spend on these services, companies are often surprised by how much it adds up to and delighted by the discovery that it is possible for in house clearance and monitoring to be far cheaper. If you are adding an International or an EU trademark application to your existing Federal trademark registration, those costs can rise suddenly and significantly.

RECOMMENDED READING : How Much Does a Trademark Attorney Cost?

4) Does the turnaround time using traditional methods of searching delay you in bringing a product/service to market or respond to industry pivots?

A request to register a trademark for new brand names, taglines or social media campaigns typically come close to the end of the process for Research & Development or Marketing and they are almost always in a hurry! Delays caused by using traditional methods or legacy providers of clearance often leads companies to include loss of revenue and missed business opportunities in their cost benefit analysis for assessment of costs.

5) Would having industry relevant business intelligence and knowledge of industry trademark activity be a competitive advantage for you?

What would you gain from being able to review the trademark activity of every competitor in your industry? Advantages include having insight on potential new products coming to the market well in advance, using that insight to identify changing trends in market demands or shifts in response to consumer purchasing and the ability to position yourself ahead of those in the marketplace.

6) With new technologies available, is it possible that the time and costs consumed in managing the process of outsourcing could be far greater than doing it yourself?

Many companies are now insourcing to save significant costs and time but there are other benefits to be had:

  • Enhancement of asset value
  • Robust efficient processes
  • Lowered risks
  • Alignment of IP management with company’s aspirations
  • Faster products to market
  • Increased protection of registered trademarks
  • Better trademark portfolio management

These additional benefits often come as surprise to many companies who assess some of the new technologies available. The outsourcing process is often accompanied by significant delays in response to communications and advice that doesn’t reflect the needs of the business or industry amongst other frustrations listed in INTA’s advice on How to Work With In House Counsel.

“Law departments and firms that are not reinventing for the future are threatened with extinction.” - ALM Intelligence

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