Republished by kind permission of the INTA Pro Bono Committee
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The 4 Horsemen of the Brandpocalypse
It was late on Halloween evening
And the office had quietened down.
A lone trademark attorney
Sat at his desk and frowned.
"Although the trademark is an essential element in the system of undistorted competition its purpose is not, however, to protect its proprietor against practices inherent in competition" (1).
Everything is easy when you know how and this is particularly true of trademark management. Effective, efficient management of an individual trademark requires a small amount of attention to detail. As the volume of trademarks in your portfolio rises, however, the attention to detail (and paperwork!) needed rises exponentially.
Legal tech is transforming the way that the legal industry can provide services but there are positive trickle down effects for those outside the industry. Where the practice of law overlaps with commercial functions within companies, there is room to integrate efficiencies at every stage of those functions.
The trademark application process can be a long one - and certainly much longer than people applying for the first time (or the first time in a new region) might realise. There are some common factors that will impact your time frame to successful registration and an examination of these might help you to identify areas where you can speed up the process....although the average time will be largely dictated by the region in which you are applying. There are some common factors that will impact your time frame to successful registration and an examination of these might help you to identify areas where you can speed up the process!
For the marketing team charged with the creation of new brand names, finding a name that conjures up the right image, resonates with potential customers and conveys not just the core functionality of the product but also the benefits, is absolutely critical. Legal safety then adds a new dimension of complexity to an already complicated and challenging process. Finding or creating the perfect name and then having it rejected is heartbreaking.
Managing a large international trademark portfolio is no small endeavour. Aligning the necessary legal requirements with the product development and marketing teams for product launches. Clearance and registration across multiple regions, coordinating the efforts of foreign counsel as required. Orchestrating multiple renewals and filings across countries. Fighting against the rising tide of counterfeits and infringements. It’s no simple task.
The humble screening search is a key player in the creation of any trademark. From a law firm perspective, approaches to this are variable depending on client expertise, resources, industry and needs. In some cases, clients are encouraged to perform at least some part of this process themselves - at least to quickly check the Google search engine for any obvious results that will derail any future plans for the potential brand. In other cases, the ‘knockout’ can resemble more of a ‘deep screen’ where the relevant industry demands it. In yet other cases, trademark attorneys will perform a quick screening for conspicuous impediments as a low cost or complimentary service to clients.
For most of us, the presence of the internet and social media in our lives represents a mixed blessing. On the one hand, it has brought people together in a way that was never possible before. Your nearest and dearest are near even when they are thousands of miles away. You can talk to anyone, anywhere at any time. On the other hand, such access is not without its drawbacks. As time has gone by, we have all become aware of problems previously unthought of - privacy issues amongst them. How we use the power of the internet and social media is worthy of thought and careful consideration.
