In-House Practitioners Committee Update: Idea Exchange Explores Technology and the Trademark Team

Published: November 1, 2019

INTA’s In-House Practitioners Committee hosted an Idea Exchange session on September 26, 2019, on the topic of technology and the trademark team. Stephen R. Garcia (Uber Technologies, Inc., USA) and Ty Tran (LinkedIn Corporation, USA) led the discussion among in-house practitioners from various industries and countries. The Idea Exchange fostered one of the Committee’s more lively discussions in recent years, the key points of which are summarized here.

In-House and Outside Counsel Responsibilities

  • Generally, most participants said that they manage their U.S. work in-house, but rely on outside counsel for non-U.S. work.
  • Initial clearance searches and high-level enforcement evaluations are often performed by in-house teams (sometimes with the assistance of other non-legal departments within the company), but outside counsel is usually responsible for more in-depth prosecution and enforcement work.

Docketing Practices

  • There was no consensus on docketing systems or processes. All of the systems, from the big-name players to the smaller, newer systems have their own pros and cons. Some participants noted that they rely on a single system to perform multiple tasks (docketing, invoicing, running reports, generating correspondence, etc.), while others use a combination of products chosen for their individual strengths.
  • New developments in technology are taking docketing systems to the next level as more platforms allow for communication with external counsel, document management, real-time synching with the U.S. Patent and Trademark Office database, and general department management.
  • Several members granted outside counsel access to their company’s internal docketing portal to make updates directly in the system. However, many of them reported issues with consistency, accuracy, and delays, particularly if the outside counsel’s firm used a different docketing system.

Trademark Clearance-Intakes and Searches

  • Several participants reported that their companies have developed an automated intake portal for new marks, with positive results across the board in terms of centralized information caches, reduced email traffic, and easily customized data fields.
  • When asked about the expected response time for search results, participants’ responses varied based on individual circumstances. In general, it was found that companies required at least two to three weeks for full search results. Preliminary search results were returned anywhere from 24 hours to three weeks from the time a request was received, depending on headcount and available resources.

Marketing, Brand, and Social Media Issues

  • Companies are seeing an increasing trend of distinct brand, marketing, and social media teams, with intellectual property (IP) attorneys acting as their main legal contact. These specialized teams often establish their own policies and guidelines for specific activities, with input and oversight from legal departments.
  • While some respondents said that they prefer highly detailed policies, others prefer internal guidelines that are broadly written to provide a framework and collaboration between legal and business teams.
  • Many reported a high amount of turnover in their marketing departments, making training and education difficult yet even more necessary. Some have handled this by adding IP and media training sessions to the company’s mandatory onboarding process for new hires.
  • Companies and brands are encouraged to proactively create procedures and strategies to manage social media complaints and negative PR (for example, in the case of a data breach or director scandal). Working with the business and compliance teams can be crucial in these situations.
  • User-generated content is creating headaches for many in-house IP attorneys. When take-down requests were received, most members handled them internally with their marketing and social media teams. For IP owners enforcing their rights by sending take-down requests, many use outside vendors due to high volume and limited bandwidth at their companies (although some still manage enforcement internally when popular social media platforms are involved).

General Takeaways

  • Most participants reported that technology is driving efficiency, allowing them to do more with a limited headcount (and often from remote or multiple locations).
  • A downside to the enhanced role of technology is that practitioners are now expected to absorb more work and take on more duties in-house without the benefit of additional headcount.
  • Providing training and educational resources for marketing and social media teams is incredibly helpful in proactively addressing issues arising from technology and new media.

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