30 Oct
2015

Organising effective trademark operations

Creating the right structure for a trademark group is key to ensuring it can provide strong brand protection. Companies are beginning to take a collaborative approach to this function, with some considering trademarks from the earliest stages of product planning and development

In many companies, the right organisational structure for the trademark group is critical to its ability to provide strong brand protection. In particular, consideration needs to be given to reporting lines, the roles played by the various trademark and brand stakeholders, and the interaction points throughout a mark’s lifecycle.

While the trademark department has primary responsibility for clearance, filing, renewals and other legal formalities, companies are beginning to take a more collaborative approach, allowing their product and marketing functions to perform certain activities. In some, trademarks are now considered from the earliest stages of product planning and development.

These new ways of working have a big impact on how trademark departments structure their reporting lines. In our work with leading brand companies, we have found that while 75% are still organised within the legal department, some trademark groups are beginning to report through other functions such as marketing (7%), directly to the business (7%) or through other areas (11%).

Location and staffing levels

The ability to develop strong working relationships is also affected by the proximity between trademark staff and their business clients. Most companies (64%) have trademark staff centrally located or locate their trademark groups in geographical regions (29%). However, few companies co-locate trademark staff with their business clients, perhaps missing an opportunity for trademark departments to become a more integral part of the product development process.

Staffing levels are always an important consideration. Just as organisational structures differ, we likewise see that companies meet their resource needs with a range of staffing levels. Perhaps unsurprisingly, companies with large portfolios tend to have more staff. However, portfolio size is not always a direct indicator and several companies with larger portfolios get along with a relatively small number of staff, instead relying more on outside resources or on roles other than attorneys.

Table 1: Staffing levels for key roles

 

Staff numbers

Staff type

Fewer than 5

5-10

10-25

25-50

More than 50

Administrative staff

25%

65%

7%

0%

2%

Paralegal or specialists

20%

62%

7%

7%

4%

Attorneys

13%

69%

7%

7%

4%

Other staff

84%

15%

0%

0%

2%

Figure 1: Where are trademark activities primarily handled?

Figure 2: How is the trademark department organised?

Figure 3: How is trademark docketing provided?

Docketing

Application drafting, filing and prosecution remain the core competencies of a strong trademark programme. The term ‘docketing’ refers to managing the range of activities and correspondences associated with the prosecution process. This function is increasingly recognised as a critical part of portfolio strategy and execution – docketing complex international portfolios requires rigorous policies, procedures and operational controls.

As with other organisational approaches, the docketing function can be operated in a number of ways. Most docketing operations follow one of four models:

  • Centralised model – a single docketing group, based in one main office, supports all of the company’s prosecution activities. All mail, data entry, reporting and other docketing services are handled by the centralised group, working directly with attorneys, paralegals and other IP professionals.
  • Decentralised model (location or office specific) – autonomous docketing groups support their specific businesses or groups, often organised by geographical region. Mail, data entry, reporting and other docketing services are handled locally, with less roll-up or coordination to a centralised point.
  • Combination (hybrid model) – docketing is structured for a centralised intake of office actions and other more administrative correspondences, while allowing business or location-specific docketing groups to manage activities that have benefited from local treatment. The hybrid approach concentrates data entry-oriented tasks in the centralised group, while allowing file management, reporting and other docketing services to be handled locally. Strong central coordination is crucial for this model to work.
  • Third-party outsourced – the company does little or no docketing, relying on either outside counsel or a specialised service provider (eg, legal process outsourcing).

A majority (75%) of companies use centralised docketing, while only 25% use a decentralised or hybrid model. Of those organisations using a decentralised staffing structure, 35% still use a centralised docketing function. In our view, a more centralised centre of excellence or shared service for administrative or core docketing functions, with decentralised professional staff, is the preferred model.

Figure 4: Structured approach to working with product development?

Figure 5: Structured approach to search requests?

Figure 6: Who handles trademark filing?

Early involvement

The involvement of trademark professionals early in the product planning stage is critical to maximising the value of brand protection. We have found that many companies (67%) have a standard process for working with their company’s product development. For these companies, the level of formalism ranges from ad hoc to highly structured and defined in standard operating procedures. For a few companies, the level of involvement is driven by the needs or importance of the project. For those without a standard process (33%), the lack of process significantly contributes to challenges and issues later in the process (eg, lower-quality coverage, rushed or last-minute filings or higher costs.)

Searches and applications

Searching is often the most important interaction point between the trademark group and its business clients. The search request is a critical source of information gathering and sets the stage for the entire trademark process.

Fifty-eight percent of companies have a formal and structured approach for submitting search requests, which includes the close involvement of product, marketing and R&D stakeholders. However, of those, comparatively few (25%) use an electronic search request system. For those that lack a standard process (42%), search requests are put together in a more ad hoc manner through email, document files or other informal means.

As with many areas of the trademark management process, application filing has adapted to new concepts and approaches. A significant number of companies (73%) either do all filing in-house (35%) or allocate work between in-house and outside counsel (38%); while the exclusive use of outside counsel accounts for only 27%. In using outside counsel, most companies are seeking expertise and work efficiencies in non-domestic jurisdictions. As in other areas relating to staffing and work roles, a number of companies report the use of outsourcing services. 

Ralph Schroeder is CEO of Helios intellectual Property 
ralph.schroeder@helios-ip.com