Trademark Renewal: Eliminate the Headaches of Doing It Yourself (While Saving Both Time & Money)

If you’re thinking about outsourcing your trademark renewals, you want to be sure you’re saving both time and money—two invaluable components of your job and the jobs of others. When electing to outsource services, the change should hardly be felt, except in a good way, of course. Your outsourcing service should fit in well with your day-to-day opertionsa, while at the same time making your life easier—not slowing you down, nor making you feel anxious or skeptical of your new partner’s services.

Here are some examples of how outsourcing your trademark renewals can make your department more efficient.

• 1. Ease of Paperwork & Billing

You want to make sure you’re billed the correct amount and not overcharged. It makes sense to wonder, “How will I know the outsourcers are being transparent with billing?” If the invoices you receive only display one single amount for each renewal with no breakdown, then how will you know whether a charge is correct?

For clients who want to be able to audit invoicing, request a breakdown of the charges before receiving the invoice. When it comes to foreign exchange charges, we treat agent and official fees as disbursements, so the costs passed on to you are what we paid when those disbursements were settled.

The document requirements for trademark renewals vary, and these make up a large part of the work involved. Preparing and executing powers of attorney and affidavits of use, as well as the legalization and notarization processes, can be incredibly time-consuming—and getting these all correct is crucial.

Why should an administrative burden rest on your shoulders when you could be dedicating your time and resources to other things? An outsourced partner would handle it all the necessary forms, paperwork, agents and official fees for you.

• 2. Seamless Integration

While many clients are happy to allow us to work with our agent network, others value the relationships they already have in place with their current agents and would prefer not to let that go. We, therefore, respect and make it possible for you to work with your preferred agents, in the territories that you choose.

You shouldn’t have to drop a partner you’re comfortable with to bring on a new one; rather, they should be willing and able to work with the existing team for smooth, headache-free integration.

You also want to be sure you can access up-to-date information and documents whenever you need. Online platforms make all data available to you at all times. This way you can see the status of renewals and related documentation, which you can download as needed and without charge. You’re still in the driver’s seat despite others having been given a key.

If you have an in-house IP management system, you need to keep it up-to-date when it comes to renewals, too, preferably without having to carry out the data entry yourself. An outsourced trademark renewal partner should include the option of updating your in-house system as well.

• 3. Managing Risk

What if a change in ownership is missing or an address is found to have not been recorded? Rest assured that the right partner will take a proactive approach, so that all related tasks are in safe hands—you don’t want a seemingly small detail, which could end up carrying a lot of weight in the long run, to be overlooked.

Ask for a dedicated project manager who will alert you to issues during trademark renewals and make recommendations as to how they can best be dealt with, based on cost and other relevant factors. Providers should work to the most exacting, detailed standards. Renewals teams should be thoroughly trained and take the highest care possible to prevent errors.

The attention to detail may sound almost too good to be true. Surely something that adds so much convenience to your work must be costly? Not necessarily. If you follow our guide and know what to be on the lookout for, you’ll know how to get a sense of whether you’re being taken advantage of in the trademark renewal process.

The decision on whether to retain a new trademark renewal service provider is usually based on the group’s handling fee. In very few cases are the competitiveness of local law firm prices, the use of correct official fees, and actual foreign exchange (FX) rates taken into account by the client. They may not know any better or realize that it can make much of a difference. Armed with the advice and information contained in this article, you can avoid this mistake.

Where Other Companies Add Fees

Competition (and commoditization) can only push prices down so far. Certain practices have sprung up to counteract the downward pressure on fees, and therefore profitability, such as the following:

• Inflated Official Fees: Trademark owners are still paying hefty mark-ups, generally between 30%-50% (and, in some cases, as much as 1,500%). We do not want you to fall into this trap.
• Inflated Foreign Exchange (FX): FX is being used by some to inflate charges artificially, and yet the majority of IP owners seem blissfully unaware or indifferent. Do not be one of them. These can be sneakily added into your total.
• Inflated Local Law Firm Fees: Many firms charge simply what they feel they can get away with, and in the absence of benchmarked pricing, IP owners such as yourself would otherwise have no real means of knowing.

To avoid situations of inflated charges, we recommend that you request request for proposals (RFPs) when comparing providers of patent renewals and trademark renewals. These should include local agent fees and official fees, in local currency. Agent fees must be benchmarked against peer group data, and official fees have to be checked against the fee schedules published by local patent and trademark offices.

Trademark owners will want to ensure that they will always be comparing the most competitive fees, irrespective of the size of the portfolio. This comparison may sound a bit daunting, but enlisting the help of a specialist like Questel can save you time and effort.

Service level agreements (SLAs) and billing guidelines should also incorporate provisions dealing with the application of official fees and FX rates, such as:

• Being able to identify the official fee in local currency in every invoice.
• Details of FX rates, along with their source, conversion date, and standard mark-up.
• SLAs should include provisions related to the review of charges made and compensation in the event of irregularity.
• You will also want to make sure any electronic billing systems work with modified Ledes codes and are able to automatically check invoices against agreed local agent fees and accurate official fees.

At Questel, we like to provide clients with a toolkit in addition to all the essential knowledge. Clients must be able to have access to accurate and up-to-date official fees in local currency, whenever they want it. We offer handy, proprietary calculation tools as well as invoicing assistance to make figuring all of this out a cinch.

We do understand that, despite all our years of expertise in trademark renewals, you might be a little apprehensive about letting people you don’t know in on what your team does every day. If you still aren’t entirely sold on why a close relationship of this sort could be a great decision, we encourage you to continue reading.

The following common questions cover the main concerns that others have had in the past and how we handle them here at Questel. You may recognize some of these as concepts we already covered, but they are essential to fully understand how this all works before bringing on an outsourced partner.

Once you run through these common questions, you’ll have a deeper understanding of what to expect and be confident when selecting a partner:

In conclusion, your chosen provider should be working with you behind-the-scenes to remove the burden of trademark renewals, so you will have much less to worry about with all your other responsibilities. Our services should not be very noticeable—they work to ease the burden all these tasks would otherwise have on you so that you only notice the effects of a lighter load.

Rather than feeling like you’re just adding on another service that you worry could take a long time to onboard or may confuse team members (or other service providers you already have), you should feel like there is less standing in your way than before. We aim to quickly enable you to get back to the other things you have to do.

Don’t get stuck hiring a provider that will slow you down! Cut hidden costs and simultaneously make the job easier for you and your team. When you contact a trademark renewal specialist like us, you can rest assured you are choosing to work smarter, not harder!