1. The Players and Functions.
a. Outside Law Firms (Managing Liabilities in a service-driven industry): Partners, Associates, Paralegals, Legal Assistants
b. Inhouse Legal (Managing Company Assets): Lawyers, Paralegals and Legal Assistants
c. Vendors (Managing Tasks): Docketing, Maintenance, Paralegal Services, Research, Searching
2. How is your Department Staffed?
a. Role of Attorneys
i. Trademark only or responsible for other forms of IP?
ii. Full Service? E.g., selection, clearance, adoption, prosecution, transactional, contentious matters, domestic and international responsibilities. Are these tasks divided? How?
b. Role of Non-Attorney Professionals
ii. Docketing Staff
iii. Administrative staff
c. Staff to Attorney Ratios. Leveraging a range of professionals for maximum efficiency.
d. Hiring and Retention Costs
e. Outsourcing – Pros and Cons
i. Legal Process Management
iii. Special Projects
v. Ongoing support services
3. Docket Management
a. Quality Control Procedures? Double checks? Triple checks?
b. Use of software – maximizing software capabilities so as to preserve valuable resources. Training.
c. Choosing appropriate software for docketing requirements.
d. Who is involved in purchasing decisions.
e. How are matters staffed on the docket, i.e., who are the responsible parties? Who is “on the front lines”?
f. Getting matters off the docket. Timeliness. Documenting client instructions.
g. Getting matters on the docket. Timeliness. Data verification.
h. Managing old dates/marks where the client may be hard to find, may not be a client of the firm, may not be aware of the open deadline.
i. Managing portfolio transfers – in and out. Staffing considerations. Timing issues.
j. Audits/Data Validation – avoiding the need to expend valuable resources on matters that have incorrect information or should have been removed from the docket altogether.
k. Docketing disputes/contentious matters.
l. Docketing Policies and Procedures. Standard or customized by practitioner preference?
4. Partnering with Vendors, Outside Counsel, and International Associates.
a. Communicating with outside counsel
i. Keeping outside counsel apprised of changes in projects
ii. Advising foreign counsel of status of use of trademarks
b. Project and Cost Management Strategies.
c. Projects that are cost-effective when handled by outside counsel or vendors, e.g. assignment recordation, maintenance filings.
d. Searching/clearing- initial screening. Opinions. Depends importance of the brand?
e. Prosecution - Routine objections versus complex substantive actions.
f. Maintenance – statements of use, renewals, etc. outside of the U.S.
i. Determining whether to maintain (licenses, continued relevance of the brand, interest in the business in that territory)
ii. Ownership issues.
iii. Use considerations
g. Fixed Fees/Alternative Fee Arrangements. When are they appropriate?
5. Working with International/Local Counsel.
a. Determining when to engage foreign counsel.
b. Defining the relationship. Who is the client – the firm or the business? Engagement letters? Payment terms?
c. Using company or intra-firm IP counsel in foreign territories.
d. For in-house -- Do you use your main firm to hire foreign counsel or do you hire foreign counsel directly?
e. Use of regional counsel, one firm that has offices in several jurisdictions, or local firms?
f. Managing invoices from local counsel.
i. Expectations for timing of payment – when the firm gets paid? Time lags.
ii. Advance payments from clients?
iii. Arrange for payment from client directly to local firm?
iv. Auditing fees – do they match what was quoted/estimated?
v. Internal procedures for prompt processing of invoices. Educating the accounting department.
6. Assignments/Transfer of Ownership.
a. When does IP counsel get involved in the transaction?
b. Post-closing recordation of assignments
i. Do you record foreign assignments immediately or wait until registrations are due to be renewed (Cost/benefit analysis)
ii. Chain of title issues
c. Cost Considerations. Understanding post-closing recording costs. Getting estimates in advance.
7. Trademark Clearance.
a. Search Strategies. Who runs the searches? Who reviews? Written or oral reports? Training issues.
b. Are preliminary searches sufficient?
c. How to determine jurisdiction in which full searches are required.
d. Do you file international applications without prior searches?
e. Searching expertise – when to utilize outside counsel or vendors versus managing inhouse.
8. Trademark Prosecution.
a. Who decides that an application will be filed (clearance versus protection)?
b. Who prepares and files? Different for in-house versus law firms (liability issues). Differences in the roles of paralegals and lawyers.
c. Statements of Use/Renewal Documents. Who confirms sufficiency of the specimens and/or validates use in connection with all items listed in the application.
d . Parsing out different team member roles to increase efficiency without compromising quality.
9. Education, Education, Education.
a. Educate marketing/project managers of best practices for trademark creation and protection.
b. Educate clients about the process (Consider trademark focused engagement letters).
c. Educate partners and administrative staff in general practice firms about the nature of our practice. High volume. Document intensive.
d. Training – Who, How, When? Internal programs, external offerings, e.g., conferences and webinars. Who gets to go? How is it decided?
e. Educate each other. Internal communications regarding new procedures, form language. Share interesting cases. Efficiencies. Lessons learned.
10. Managing Change. People come and go for all kinds of reasons.
a. Ways to retain talent?
b. How to maintain balance during personnel changes.