In-House Practitioners Idea Exchange: Tips and Tricks on Trademark Management

* The following blog post is by  Michael Tschupp (Bosch, USA) and Mandar Chandrachud (Godrej Consumer Products Ltd., India), members of the In-House Practitioners Committee. – GM  

INTA’s In-House Practitioners Committee hosted two Idea Exchange sessions on Tips and Tricks on Trademark Management on October 30. Idea Exchanges are moderated benchmarking teleconferences-exclusive to in-house practitioners-to share insights, experiences, and issues on a specific topic.  

Jocelyn Belloni, Corporate Counsel at Yardi (USA); Raphael “Rafa” Gutierrez, Legal Director at Uber Technologies, Inc. (USA); and Helen Omapas, Director, Senior Counsel-IP at Harman International Industries, Inc. (USA), led the discussion among in-house practitioners from various industries and countries. Participants shared experiences of trademark management at their organizations, providing colleagues with food for thought on issues that affect their daily responsibilities and roles, including ways to demonstrate value within a company.

Portfolio and Team Compositions

Among the participants, their trademark portfolios ranged in size from 1,000 to 10,000 marks, and their team composition varied widely. Centralized global trademark portfolio management at corporate headquarters is the norm; however, some companies manage the marks at a regional level. The participants recommend good and frequent communication among the regional teams and headquarters for regionally managed portfolios.  

Depending upon team structure, work generally gets divided either by geography, brand, or product category, or a combination of these. In-house counsel work closely with marketing and other cross-functional teams and have regular interactions and calls; in-house practitioners also educate teams on the central policies and brand use and stay current on business developments.  

In-house lawyers and paralegals work in close partnership. Outside counsel will usually be brought in only selectively, primarily on disputed matters.

Trademark Watch Services

For key marks, participants often use worldwide watch service tools. The analysis of results by the in-house team adds accuracy and business context.  

Docketing/Document Management

Participants reported a preference for web/cloud-based trademark docketing systems, with extensive use of electronic records and minimal physical files.    

Dispute/Enforcement Matters

In-house trademark teams usually prefer to handle enforcement matters themselves, but bandwidth and headcount limits often require them to involve outside counsel. It is common for a brand owner to send dozens of cease-and-desist letters or takedown notices in a year; however, court litigation is rare. Uniform Domain Name Dispute-Resolution Policy (UDRP) proceedings, on the other hand, are more common, primarily because cybersquatters often ignore demand letters, leaving UDRP the most effective means of recovering or shutting down squatted domains.

International Portfolios  

Filing strategies differ based upon business scope and needs. Generally, core marks are filed nearly worldwide, with the filing of secondary trademarks limited to strategic markets.  

In general, in-house practitioners directly reach out to their outside counsel around the globe instead of routing their actions through a central firm, which saves them money and time. Participants agreed that it is advantageous to use INTA events such as the Annual Meeting to meet with their outside counsel.  

Non-Trademark Matters and Other Challenges

Teams are doing more than trademark work; they are also working in the areas of copyright, design, patents, social media matters, claim monitoring, agreements, advertisement reviews, data privacy, mergers and acquisitions, and domain names.

The participants stressed the importance of demonstrating the value of in-house counsel to their company. The perceptions of being a “cost center” must be broken; one means of doing this is through licensing revenue.

Tools for Success  

Brand and style guidelines-as well as intellectual property (IP) policies-are useful in fostering consistency. A strong relationship with marketing is key. It is helpful to have brand guidelines enforced by the marketing team.  

In-house professionals need to be mindful of international treaties and local taxation laws while dealing with overseas subsidiaries, crafting a brand royalty structure with those subsidiaries, and coordinating with finance teams and others within the organization for determining optimal IP licensing policies.

Anticounterfeiting

In-house counsel should work closely with local customs and other law enforcement authorities to get results. They should maintain good images, documentation, and press coverage of anticounterfeiting success, and record the seizure/destruction of counterfeit goods. This helps demonstrate value internally within the company and with licensees that pay for the authorized use of the brand. Good press coverage can also burnish the public image of local authorities.