Managing a trademark portfolio continues to present unique and often complex challenges for inhouse counsel and trademark administrators. Professional organizations such as the International Trademark Association (INTA) and Association of Corporate Counsel (ACC) provide excellent networking opportunities and educational materials for in-house personnel to share best practices to help make their jobs easier. In addition, outside trademark counsel often can provide valuable insight based on their wealth of real-world experiences.
With this in mind, here are some effective trademark portfolio management strategies worth repeating:
1. Be a Valued Partner. The best trademark counsel and trademark administrators are the ones that have an open and transparent line of communications with their clients. Most inhouse trademark professionals have great relations with their product development and marketing teams. They educate them on the importance of trademark protection, and listen to their needs and concerns to help ensure that the company’s intellectual property investments are secured in a timely and cost-effective manner.
2. Create a Trademark Enforcement Plan. Surprisingly, many attorneys, both inhouse and outside trademark counsel, can not adequately articulate the factors that they take into account when deciding how and when to enforce the client’s trademark rights. Such factors, where possible, should be determined in advanced as part of an overall proactive trademark monitoring and enforcement plan, so as to avoid any surprises as to why a certain decision was made or not made concerning the trademark portfolio.
3. Remain Flexible. Attorneys can learn alot from their business colleagues. While a company’s trademark portfolio strategies, once approved, for the most part remain constant, the tactics to acheive the company’s brand enforcement goals should be open to fine-tuning and recalibration based on predetermined legal and economic preferences and outcomes.
By keeping in mind the above tips, trademark portfolio managers will better serve their companies and foster better relationships that are based on cooperation and mutual respect of all internal and external trademark team partners.