New Year’s Resolution: Get Your Trade Mark House in Order
As 2024 draws to a close, now is an ideal time for in-house legal teams and outside counsel to reflect on the past year and develop their plans for 2025. Thoughtful planning now can provide enhanced protection as well as significant cost savings in the years to come, so it can literally pay to plan ahead. In this article, Jennifer Debrow and Ashley Bennett Ewald of Taft, Stettinius & Hollister LLP examine strategies for optimising surplus year-end budgets and planning for effective trade mark portfolio management in 2025.
Maximising Your Year-End Budget
If you are fortunate enough to have a budget surplus to use up before year-end, you should address that before you prepare your plan for 2025. Consider the following strategic approaches for using excess budget:
- Madrid Filings: Applications filed via the Madrid Protocol incur filing fees upfront versus the long wait for foreign counsel to invoice legal and filing fees for national applications.
- Additional US or other National Filings: If you have been waiting to cover a logo mark or expand into other jurisdictions, a budget surplus can be a good time to gap fill. It is also smart to analyse what registrations are coming due for maintenance in 2025 and determine whether any modernised versions of outdated marks need to be filed now in order to have coverage in place at renewal time so that the older marks can be allowed to expire.
- Clearance Opportunities: The marketing team may have marks they are considering and would be happy to get a jump on clearing if money is available now to use.
- Enhance Watch Services: Upgrade or expand trade mark watch services to detect potential infringements early.
- Professional Development: Invest in training for your team members, enabling them to stay abreast of the latest developments in IP law as it relates to your industry.
Strategic Planning for 2025
Creating a well-thought-out strategic plan is critical to protecting your portfolio and efficiently leveraging your budget. As you are developing your plan, consider the following:
- Align with Your Organisation’s Goals: Ensure that your plan supports your organisation’s goals, which may involve protecting new product lines, expanding into new markets, or strengthening protection in key jurisdictions.
- Conduct a Thorough Portfolio Audit: Review your portfolio for gaps in coverage, marks vulnerable to non-use cancellation or susceptible to infringement, and opportunities to clear out marks no longer in use.
- Create a Budget: Based on your strategic objectives, create a detailed budget that covers all aspects of trade mark protection, including advising, applications and renewals, and monitoring and enforcement activity. You will also want to include in your budget money for training and IT upgrades, if needed.
Transitioning to International Registrations
Strategic use of the Madrid system can provide significant efficiencies and cost savings in managing your portfolio. Key considerations include:
- Identifying Candidates: Review your portfolio to identify marks currently registered in multiple jurisdictions that could benefit from consolidation under an international registration (IR). You can combine multiple national registrations into a single IR and then designate for coverage in other jurisdictions.
- Vulnerability: National registrations in jurisdictions where the mark is not in use may be vulnerable to cancellation for non-use; a fresh registration through an IR will provide three more years of protection from cancellation.
- Priority: For a mark that is in use and the registration has priority of rights, the value of the priority may outweigh the cost savings from an IR.
- Seniority Claims: When transitioning to IRs, you should take advantage of seniority claims for earlier national registrations in EU member states. This will allow you to maintain the earlier rights while consolidating management under the IR.
- Timing: To avoid any gaps in coverage, look forward three years and time new IR filings to ensure protection is in place before the end of any renewal or grace periods.
Clearing “Deadwood” from the Portfolio
One of the most effective ways to streamline your portfolio and free up funds for new initiatives is to clear out any “deadwood” – trade marks that are no longer in use or align with your business objectives. This process involves:
- Identifying Unused Marks: As you review your portfolio, identify marks that are no longer in use or align with your business strategy.
- Assessing Strategic Value: For each potentially unused mark, you will want to consider its historical significance, potential future use, and the cost of maintaining it versus the risk of losing it.
- Reducing Effort: Once you have identified those marks that are no longer of interest, you will want to ensure that the records are marked “allow to expire” on all docketing systems so you are not spending additional time or resources in the future considering renewal of these registrations.
- Bonus Savings: If the deadwood marks are the subject of any domain name registrations, you might be able to find additional cost savings by allowing the domains to expire as well.
Documenting Use and Enforcement Efforts
Proper documentation of trade mark use and enforcement efforts is crucial for maintaining strong rights and defending against potential challenges to your trade marks. Before closing out the year, you will want to review your organisation’s processes to ensure that the following steps are in place to safeguard your portfolio:
- Use Documentation: Collect and organise evidence of use of active marks, including working with your marketing department to compile samples of marketing materials and online usage, as well as awards won, and third-party coverage of marks in news articles or other media.
- Enforcement Records: Maintain comprehensive records of all enforcement actions taken during the year, including cease and desist letters, negotiations, and litigation.
- Secure Storage: Ensure all documentation is securely stored and easily accessible to relevant team members.
Reviewing Watch Strategy
An effective watch strategy is crucial for protecting your trade mark portfolio. Consider the following for enhancing your current watch strategy:
- Assess Current Strategy: Review the effectiveness of your current watch services. Are you receiving relevant alerts? Are there gaps in coverage?
- Adjust Parameters: Based on your assessment, adjust the parameters of your watch services as needed. You may need to expand or narrow the scope of watched classes or jurisdictions.
- Consider New Technologies: Explore new AI-driven watch technologies that may offer more comprehensive or efficient monitoring.
- Allocate Resources: Ensure that you have allocated your budget and personnel in a way that meets your enforcement goals.
- Explore Alternative Approaches: Consider alternative enforcement strategies, such as online marketplace monitoring programmes or collaboration with customs authorities.
“Year-end is not just a time for reflection, but an opportunity for immediate action”.
Conclusion
As in-house legal teams and outside trade mark counsel navigate the transition from 2024 to 2025, strategic trade mark portfolio management offers significant opportunities for optimisation of resources and cost savings. By carefully reviewing current assets, clearing deadwood, transitioning to international registrations where appropriate, and proactively planning for the coming year, IP departments can ensure their trade mark portfolios are well-positioned to support and protect their organisation’s valuable brands. Year-end is not just a time for reflection, but an opportunity for immediate action and a time to set the stage for future success in intellectual property management.
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