Portfolio Management

Managing an international trademark portfolio involves several phases and multiple resources. Strategically managing a portfolio requires proficiency and acumen, to achieve a portfolio that meets the goals for a brand and fits into the company’s budget.

Clearance: Assessing the risk of adoption as well as registrability and enforceability of each mark is key to developing a successful branding program.

Applications, Prosecution, and Registration: Prosecuting a mark from an application to registration requires knowledge of the laws and regulations at key governmental agencies.

Calendaring: prosecution and registration deadlines is essential to this process.

Enforcement and Dispute Resolution: A trademark owner has a duty to police and enforce its marks, or risk losing the associated value and ability to enforce. Whether on the enforcement side or the receiving side of cease and desist letters, strategy and experience are critical to efficiently resolving disputes.

Use: Proper use of marks is necessary to maintaining the value of mark.  For example, improper use can result in genericide, where the mark becomes the popular name for the thing itself, such as aspirin, shredded wheat, thermos, and escalator, which were all once registered brands.

Licensing:  You may want to exploit your brand’s value by entering into a variety of licensing its use by other parties. Quality control is a critical aspect to proper licensing.  

Maintenance and Renewal: Adhere strictly to calendaring maintenance and renewal deadlines to maintain rights in a mark.

Domain Name Management: Managing an effective domain name portfolio can be challenging, especially because many countries require a local presence for a registration. Keeping a domain name actively registered can prevent disruptions in conducting business.

Ownership:  Where marks and/or companies have been acquired, integrating the new marks into the portfolio takes considerable attention to detail.  Scrutinize ownership records and changes recorded so that registration and applications can be relied upon.

Due Diligence: Regular assessment of a portfolio allows a company to have a degree of assurance that its brand assets are enhanced and preserved.

Clearance

With highly trained researchers. an expansive global content set and well-designed technology tools, our office relies on Corsearch, the premier clearance provider for trademark and brand professionals.  We use Corsearch to easily, quickly and flexibly monitor and protect brands in an increasingly complex business environment.

Calendaring

Tracking marks, matters and deadlines, many of which are unextendable, is key to managing a portfolio. The docketing software we rely on is WebTMS, a trademark management suite that builds on recordkeeping and docketing to support efficient trademark management. WebTMS software is used by leading law firms and brand owners around the world, including:  Apple, Avon, Coach, Gap, Google, Hallmark, Hershey, Kraft, Mars, Salesforce, and Yahoo.

Domain Name Management

We trust Corsearch, who offers services geared toward administering domains throughout the entire lifecycle. They assist in portfolio transfer and consolidation, global domain name renewal management, worldwide gTLD and ccTLD registrations, domain name Watch services, and even acquiring third-party domain names

Enforcement

Maintaining the uniqueness of a mark is key to ensuring its continued value. Through Corsearch, we monitor new filings and publications of marks that may be confusingly similar to yours and be notified of possible issues, often before use of an infringing mark has commenced.  

Worldwide relationships

The office maintains relationships with a global network of local intellectual property counsel, each knowledgeable in the arcane ways of their countries’ laws and procedures.  We are experienced and informed of international treaties such as the Madrid Protocol and the Paris Convention and take advantage of international filing practices, when appropriate.

Keeping Up On Changes

 We receive daily reports on new cases, both at the Trademark Trial and Appeal Board and civil courts around the country. We attend continuing professional development  programs to maintain and enhance our knowledge and skills. Our network of local counsel regularly communicates changes in jurisdictions outside the U.S.  The firm is a member of INTA (International Trademark Association) and attends the Annual Meeting (“If you’re not there, you’re not serious about trademarks!”). In 2012, more than 9,500 intellectual property experts from 140 or more countries attended the meeting, which included seminars and sessions on a variety of trademark-related topics.

 

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