In-House Practitioners Committee to Launch Tax and Intellectual Property Planning Checklist

Published: September 15, 2019

As the 2018-2019 INTA committee term winds down, In-House Practitioners Committee (IHPC), Member Resources Subcommittee Chair Jennifer Gruber (Turner Broadcasting System, Inc., Atlanta, Georgia, USA) and IHPC Member Resources Subcommittee Chair Jack Wessel (Gilead Sciences, Inc., Foster City, California, USA), along with their Member Resources team, are wrapping up goals for the term, preparing to share the results of some exciting projects, and teeing-up initiatives for the next term.

The Member Resources Subcommittee has been working hard along several workflow paths, including creating new checklists, distributing survey questionnaires and results that address various topics, and identifying for INTA what the Association’s in-house members are looking for and what they find most impactful regarding information sharing and communication.

The Member Resources team, in collaboration with the Law Firm Committee and INTA’s Legal Resources team, is poised to launch its first checklist this fall to help facilitate productive dialogues on tax and intellectual property planning issues between in-house trademark practitioners and colleagues in tax, finance, and corporate legal departments.

The team conducted mini-surveys, called INSTAPolls (consisting of 3-4 questions), which are distributed within the IHPC, addressing a broad range of topics, including the General Data Protection Regulation, budget responsibility, and music licensing. In addition, the team worked on creating a 10-question survey template for use on a variety of topics. These templates are designed to facilitate more detailed information on issues while ensuring that the survey itself is not burdensome on the responder.

Its first survey addressed clearance searching. The survey results* revealed, among other things, that nearly 60 percent of in-house trademark budgets remained static from 2018 to 2019 and that more than 75 percent of in-house trademark departments complete all initial clearance searching by leveraging their teams’ paralegals and attorneys and leveraging vendor resources. The IHPC uses these results to help inform other possible projects, such as in-house workshop topics and other new programming, new checklists and surveys intended for more widespread distribution, and to develop additional in-house resources. (*Results reflect percentages of respondents to surveys distributed to the membership body of the IHPC.)

The Member Resources Subcommittee also made a proposal for a potential new INTA committee, provided insights into current INTA resources, and is working as part of a wider team on additional in-house member-only resources.

Stay tuned for a comprehensive survey about overall in-house trademark team structures, roles and responsibilities during the 2020-2021 committee term. And, remember, when asked, please participate! It’s the only way we get useful data that we can all benefit from.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association