Trademark Portfolio Management

Once a company’s trademark portfolio reaches a certain size, the job of trademark management can become challenging  and time consuming. But a strategic, purposeful approach can ensure that not only are your trademark portfolio management efforts less hard work, but that they truly serve the needs of your business.  

The Best Approach to Trademark Portfolio Management

Each business will have different resources dedicated to trademark portfolio management, and will likely require a different balance of in house and external support to make it effective.  

Some corporations conduct all their trademark portfolio management in house, which has the advantage of centralisation, but also the risk of burdening staff with administrative tasks that prevent them meeting their other responsibilities effectively.  

Others choose to outsource all their trademark management work – this solution requires excellent communication with the relevant third-party suppliers, and relies on strong leadership from the business in communicating its strategy externally. However, this approach can add value, and save time, money and reduce risk by ensuring that both the administrative formalities and IP legal services are managed by a dedicated service that is focussing solely on those tasks.  

A hybrid approach is also possible, in which some tasks are handled in-house while others are managed externally. Whatever approach you choose, it’s important to future-proof the decision – look at what your needs will be in five years’ time rather than simply at what your needs are now.   

When you choose to conduct your portfolio management in house a Trademark Management Software tool such as those offered by Questel can help you keep on top of everything, especially by automating much of the process, so that you always know when your deadlines are coming up and you have a proper overview of your entire portfolio, including costs, discrepancies and timelines. 

When you choose to outsource your portfolio management our full-service solution is paying off in terms of cost, transparency, quality and efficiency. You enjoy benefits such as a single digital repository of all IP assets, remote access, decision making based on data-driven insights, co-ordinated enforcement and cost control. 

Trademark Portfolio Management – Audit your portfolio

One of the problems businesses face with trademark portfolio management is historical. Many companies just don’t know, or at least don’t have a good understanding, of what assets they have and what the status of those assets is. 

That’s why it’s a good idea to conduct a portfolio audit, both at the outset of a trademark management strategy and then routinely at intervals thereafter.  

An audit also allows you to start with a clean slate, by finding out where your marks may require recordal work, or are coming up for renewal, or indeed whether you have unregistered rights that need action. Again, using a third party supplier can save you a lot of time and money in this endeavour, especially if you haven’t done an audit before.  

Trademark Portfolio Management – Define your strategy 

Effective trademark management starts with an effective trademark strategy. Importantly, this is not just a job for the in-house trademark team. A multi-stakeholder approach, involving marketing, product development, sales, communications and the business as a whole is critical to developing an effective trademark portfolio management strategy. 

The strategy should identify clearly: 

      Expected business and product development goals

      Expected geographical focus, including any new geographic markets 

      Budget 

      Priorities for expansion or consolidation around brands 

      Potential challenges or pitfalls 

      Gaps or weaknesses in the current portfolio 

These steps will help you build a portfolio that will support your business strategy, allowing you to identify not only what assets you have, but the efficiency and effectiveness of those assets, and their value to the business.   

Once this work has been done you can start enacting your trademark management strategy in an effective fashion, identifying marks in your portfolio that you don’t need or don’t use; and secondly, by showing you where there are opportunities for further monetisation of your portfolio through licensing or internal exploitation of the trademark portfolio.  

Trademark Portfolio Management – Streamline and automate  

Once you have a single point of contact to work with, all those time-consuming correspondence and invoice management tasks will be scaled back. By centralising your resources, you can make informed decisions regarding your portfolio and have the opportunity to be proactive rather than reactive.   

Benefits of a centrally managed portfolio includes uniformed information enabling you to make informed decisions impacting budget and to communicate IP strategy throughout the organisation easily.

Trademark Portfolio Management – Challenges  

Any good trademark portfolio management approach will engage especially with areas where there are known difficulties. Historically, China has been a big source of counterfeiting threats and challenges for portfolio management for example, so if that market is important to your business, it’s worth paying special attention.  

Actions that will help not just in China, but in all jurisdictions include ensuring you have your marks registered in your key jurisdictions, and that you have a robust and effective trademark watching solution in place to monitor the registries for threatening applications.  

Educating other stakeholders in your business, as well as licensing partners, manufacturers and suppliers on what to look out for is crucial, as is taking robust enforcement action to protect the integrity of your trademark portfolio when required. 

Finally, it’s a good idea to keep up to date with any changes in legislation or procedures that may affect your trademark portfolio management – for example Brexit, which has changed the landscape for trademark holders in the UK and Europe. 

For more information, or specific advice and support, Contact us. Or visit our resources hub for more on the impact of Brexit on trademark portfolio management.