The Future Of In-House Trademark Work

Nadaline Webster,

There is little doubt that intellectual property in general contributes significantly to the bottom line of any company. Creating products and brands that catch the hearts and minds of target consumers and jettison the company into household name status is the dream of many business owners. What many underestimate is the technical difficulty and complexity of that process. From a creative perspective, building the product, brand and messaging to achieve this happy fate is….challenging. And so this often gets the most attention. It is undoubtedly critically important but in order for a company to monetise (and continue to monetise) those creations successfully, you must be able to protect those brands.

All that is true for domestic companies that focus their attention on consumers in a single region. For those that operate across a number of different regions with individual Intellectual Property Offices, varying trademark legislation and case law, unfamiliar common law systems and use requirements along with issues with language, culture and local customs, it is a deeply intricate process.

There is no one ‘right’ way for in-house teams to manage that workload.

So much depends on the business goals, the industry they operate in, available budget and manpower, expertise and the challenges of the regions in which they do business. For a long time, the bulk of trademark work seemed to have been outsourced to (often specialist) law firms with the exception being large multinational firms with the in-house expertise to manage their portfolio. In more recent times, there is a clear trend towards companies bringing more of their legal work in house. In their 2018 Survey Report “Law Firms In Transition, Altman Weil again reported that 65.4% felt that this trend is likely to be a permanent one.

Are companies bringing trademark work in-house?

The report addresses legal work in general and is not limited to the IP practice in particular. It is unknown how many companies choose to keep their trademark work in house but it seems likely that most will retain responsibilities for at least some parts of trademark work to one extent or another. A perhaps indicative sample was provided by ‘Idea Exchanges’ hosted by INTA’s In-House Practitioners Committee. An overall number of participants is not stated but they were primarily composed of representatives from companies with between 600 and 75,000 trademarks in their portfolios. Of these, most handled routine matters such as clearance and filing themselves but retained outside counsel where capacity was limited or more contentious matters. In cases where they reported using foreign outside counsel, communications were direct rather than through an intermediary counsel.

It seems that many teams do the heavy lifting of screening and clearance in house whilst engaging outside counsel to manage the legalities. Other companies keep everything in house, primarily it seems, as a cost saving measure and outsource on an ‘as needed’ basis. In yet others, marketing and legal manage between them the basic nuts and bolts of the naming process with everything beyond that outsourced.

It is not yet clearly understood what is driving the general trend towards bringing more legal work in house but it is fair to say that there is a rise in awareness of the value of IP to companies and consumers internationally as illustrated by the Cofeve’ trademark applications! Coupled with faster moving markets and the very real need for dynamism in pivoting to catch the tidal wave of the next viral trend or keep the attention of consumers whose attention spans are increasingly short. It is easy to see the attractions of bringing trademark work in house for those companies that are not already doing so. But this does not mean that in-house trademark work is not without its challenges.

Assuming that the trend towards moving more legal work in-house extends to trademark work, what resources will they need in the future?

According to a 2017 survey by Managing IP, reputation, expertise and costs are the top three factors affecting the choices that in-house personnel make in relation to selecting outside counsel. Those considerations though are very different to the ones that will make real impact in supporting their roles internally in the future. I would propose three other factors as being key to the decision making process regarding new tools and technologies in the years to come:

Speed:

One small ‘covfefe’ moment can be halfway around the globe split seconds after you click ‘post’. Your mother can probably read about your wardrobe malfunction before you even get home from the party. Virality happens in the blink of an eye. Our world moves fast and businesses need to move fast alongside it. Traditional and legacy services requiring turnaround times consisting of days or even weeks are not going to make the grade.

Visibility:

The way that the availability of trademark information has evolved has led to a paywalled system where you pay for what you see, click by click. There are, of course, free systems but these are parcelled out by region and gathering meaningful information across more than one region is a Herculean task. In-house trademark professionals of the future will need true 360 degree visibility - not just over their own portfolio but also their foreign outside counsel, competitors, industry trends, words that are becoming more commonly used and so much more.

Connected, integrated systems and information:

Nothing exists in a vacuum and the trademark world is not an exception to that rule. Throughout the entire trademark lifecycle, from IP strategy and business intelligence all the way through to registration and protecting, your process should be interlinked.  Systems of trademark management that combine real world data with that from IPO’s worldwide and connect that information together through an integrated system that supports your needs moment to moment will become the industry standard.

How far have we progressed towards this ideal world of speed, visibility and connected, integrated systems of trademark lifecycle management? It might be closer than you think! Check out TrademarkNow’s intelligent, technology assisted trademark clearance platform for yourself

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nadaline-webster
By Nadaline Webster

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