Trevor Little

A new study from Lecorpio suggests that, for the majority of trademark teams, budgets for prosecution and policing are unchanged year on year. However, drilling down it becomes clear that many departments remain under pressure to do more with the same level of resources.

The company’s second annual Trademark Management Study polled its corporate clients and ‘stability’ is the prevailing theme highlighted by the company when analysing the results. In terms of headline findings, the study reports:

  • 82% of respondents said their budgets for registering trademarks had stayed the same as last year, with the remaining 18% reporting that registration budgets are increasing. 
  • While almost two-thirds (64%) stated that their budgets for trademark policing remained the same, more than a third (36%) indicated that they had increased over the past year. 
  • 90% of respondents’ budgets for trademark watching and clearance were the same as the previous year, while the other 10% had benefitted from increases.

Reflecting on the findings, Elisa Cooper, vice president of marketing at Lecorpio, told World Trademark Review, that “the good news is that budgets are holding steady for most and some are reporting growth”, adding: “It was interesting to see an increase in the number of respondents that were increasing their budgets for policing but I wasn’t surprised by it. I think it is becoming more accepted that companies have to do more to fight brand abuse and infringement. This is well accepted now, because the problem is everywhere. It’s regularly in the news and it’s not uncommon to see stories about counterfeit goods. It’s just become more accepted that certain industries have a major problem and it’s not getting better.” This awareness amongst the C-suite, then, seemingly makes enforcement work an easier sell when it comes to requesting support.

In terms of finance, while the research does paint a broadly positive picture, there are caveats. As Cooper notes, this does not signal an end to budget sensitivities: “People are still watching their finances very closely. Nobody reported that their registration budgets were going down and nobody reported that their portfolios are shrinking but everyone is being very careful about budgets and where they are spending. But I think the good news is that nobody is reporting that budgets are decreasing.”

It is also worth noting that even a flat budget can cause difficulties for counsel (especially if previous levels were already insufficient for all required trademark-related work). This year 73% of respondents to the study reported that their portfolios had remained the same size, while 27% reported an increase in size. With just 18% reporting that prosecution budgets had increased, there are clearly those who are having to handle more marks on the same financial resources as previously.

A number of teams are also reporting reduced headcount. While the majority (63%) reported no change in the size of the internal team responsible for managing trademarks, the same number of teams (18%) experienced cuts as those that experienced an increased headcount. While the results could be viewed as positive (ie, over 80% of teams were either unchanged or increased headcount), it could equally be seen as a concern that almost a fifth are dealing with a reduction in internal trademark expertise.

Interestingly, while the overall findings were broadly more positive than those in World Trademark Review’s Global Trademark Benchmarking Survey (in which over a quarter of respondents reported budget reductions and 17.2% predicted further cuts in the coming year), our survey found that 11.7% of corporate teams had cut back on staff – less than in the Lecorpio study. Of course, the datasets and respondent size will have an impact and could account for the differences between the two studies (amongst the industries most represented in the Lecorpio survey were telecommunications, financial services, technology and data processing). However, it is clear that across both – as Cooper notes - “more is being required of trademark departments”.

As counsel juggle these workloads and finances, 19% reported that they had relied less on outside counsel for trademark-related work over the past year (with 72% reporting no change and 9% increasing the amount of work outsourced). This drop may be partly because there is less work to outsource (or less of the type of work that is usually outsourced). But unless the amount of work undertaken by teams has dropped by a fifth, which seems unlikely, it follows that more work is now being brought back in-house. And when asked whether the 9% that did increase their outsourcing were comprised of those that experienced reduced headcount (and hence needed to outsource), Cooper observed: “While some experienced teams are shrinking and making more use of outside counsel there wasn’t a clear pattern.” What this all means is that a number of those outsourcing less work are doing so because the internal team is expected to shoulder more of the burden.

Clearly there are positives from the Lecorpio study. Taking a ‘glass half full’ approach to the overall findings, you could state that budgets and portfolio sizes are largely holding steady (and for a number of counsel budgets are up), with increased funding for policing experienced by a third of departments.

However, from a ‘glass half empty’ perspective, you could note that a fifth of respondents had experienced cuts in team size, budgets are largely flat (with any rises not keeping pace with portfolio size increases) and many trademark professionals are having to do more with the same resources.

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