Inside Counsel's Guide to Managing Multiple Trademarks

Nick Potts,

Sometimes things fall through the cracks.

Even the most conscientious of employees will occasionally have an oversight.

Unfortunately, the freedom to make such mistakes does NOT exist within your organization's legal counsel. With thousands (if not millions) of dollars on the line, the pressure to leave no stone unturned can be HUGE.

Which is why you may want to consider gifting your legal team with some of those smiley-faced stress balls for the holidays, but we digress.

In all seriousness, your inside counsel likely balances a variety of legal responsibilities – from filing patents to drawing up contracts to addressing HR concerns.

Which is why many of you have told us you reluctantly outsource the trademark search and registration process, despite having access to inside counsel.

Managing Multiple Trademarks

We've spoken before about how to streamline the search process (and keep it in-house). In this article, we'll delve into what happens AFTER your trademarks are registered: How do you keep track of them? How do you make sure others aren't using them for themselves, thus creating brand confusion?

From what we've seen, many inside counsels are SEVERELY DISORGANIZED when it comes to the trademark management process. Having the right systems in place makes all the difference.

Let's get started...

How to Streamline The Trademark Management Process

1. Go Digital

Are you still relying on paper filing systems?


Not only are filing cabinets unsightly, they are largely inefficient when it comes to trademark management. Think about it – in any other area of life would you spend thousands of dollars on something only to hide it?

Imagine investing in a sizable collection of famous sports memorabilia, only to relegate them to cardboard boxes in the back of the attic...

You just wouldn't do it!

It's the same thing when it comes to organizing trademarks:

  1. How are you going to remember the details of the marks you own if they are hidden from sight and difficult to access?
  2. How are you going to prevent other brands from capitalizing off your intellectual property if you don't know what you really have?

The Solution: Utilize a digital filing system that allows you to see all of your marks, and all of their corresponding technical aspects, in one centralized place.

The more marks you own, the more important digitization becomes. Additionally, the more marks you have registered internationally, the more data you will have to manage (i.e. varying usage requirements, legal systems, and deadlines).

2. Organize Search Filters

Precision, accuracy, and attention to detail are all cornerstones of the law. Bringing those qualities into the trademark management process requires some serious organization.

Depending on the complexities of your company, you may have dozens of marks registered under dozens of CLASSES in dozens of REGIONS. Additionally, it's not uncommon for large corporations to have marks registered under different subsidiaries.

For example, IBM has trademarks registered under IBM Corporation, IBM International Group B.V., IBM World Trade Corporation and about 20 other names.

Keeping track of ownership variations can be challenging. The best way to maintain both bird's eye and up-close views is to organize everything into ONE portfolio. Then, make the various data points within the portfolio easily retrievable with advanced search features.

With TrademarkNow, you can easily build a virtual, interactive portfolio. With just a few clicks you can filter results by year, brands, regions and application statuses. You can also watch your company's entire portfolio of trademarks for potentially-infringing applications internationally.


3. Ignore Unimportant Data

Wanna know a secret?

Most companies don’t consistently watch all of their trademarks. The reasons being it's typically time-consuming. And, as we've already discussed, inside counsel is already responsible for a variety of duties.

Typical data dumps can procure hundreds of pages worth of results. Meaning, that "one infringer" might be on page 65, while the first 64 pages don't warrant any action at all.

The key to an effective watch strategy is to ONLY focus on high-risk threats. The only way we currently know of to filter unimportant data is NameWatch's alert system. The program allows users to set-up electronic notifications, according to a variety of criteria.

4. Watch Your Competitors

If you're thinking, "we barely have time to watch our own marks, how do you expect us to monitor competitor applications?" – we've got you covered!

With NameWatch's competitor feature, you can request to be electronically notified anytime a competitor files a trademark application for a new mark. Follow as many competitors as you want and glean insights into future product decisions.

Find something interesting? Follow-up with some old-fashioned research and you just might learn something that changes your marketing strategy.

Managing Multiple Trademarks Can Be Easy

As you can see, identifying potential threats to your brand is now easier than ever.

With NameWatch you can:

  • Organize all your trademark data under ONE digital portfolio.
  • Utilize advanced search filters that allow the quick retrieval of what you need (when you need it).
  • Schedule electronic notifications for potential threats, and ignore the rest.
  • Monitor your competitors' application activity with all the extra time you now have!

Want to learn more about the world's first electronically assisted trademark software?


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