improve trademark practice

Improving the Efficiency of a Trademark Attorney Practice

  • 08 June, 2024
  • Nyall Engfield

Techniques, procedures and software to help trademark prosecution attorneys improve efficiency and efficacy:

Trademark attorneys face increasing pressure to efficiently and effectively manage growing trademark portfolios while ensuring all filing deadlines and renewal dates are met. Missed deadlines can result in abandoned applications or cancelled registrations. At the same time, conducting thorough trademark searches to assess registerability and avoid conflicts is critical but time-consuming. Fortunately, implementing the right techniques, procedures and software tools can significantly boost productivity and accuracy.

Threats to a trademark attorney practice

There are several key threats and challenges facing trademark attorneys in 2024:

1. Non-lawyer competition from online legal services like Legalzoom. Companies such as Legalzoom offer trademark filing services at lower costs than most attorneys. While they don't provide the same level of expertise and customized advice, many cost-conscious clients are attracted to their low fees and user-friendly interfaces.

Legalzoom's basic trademark package starts at just a few hundred dollars, compared to the $1500-$2000+ that many trademark attorneys charge. Their services include a trademark search, preparation and filing of the application, and some basic guidance. However, Legalzoom relies heavily on automated systems and non-lawyer staff. In the past clients didn't get the benefit of an experienced trademark attorney analyzing their specific situation, but now that Arizona has permitted the shared ownership between lawyer and non-lawyers and now Legalzoom CAN provide legal services and hire lawyers.

The convenience and affordability of Legalzoom and similar providers is pulling some potential clients away from traditional law firms. Trademark attorneys need to emphasize the value their expertise provides in terms of properly vetting marks, skillfully responding to office actions, and handling enforcement issues down the road. Offering transparent flat-fee pricing can also help compete on cost. Attorneys also need to leverage AI tools that can help with workflow, like, and also tools to prepare draft like Lexis AI tool and TrademarKraft's AI office action tool.

2. Increasing USPTO processing times and unpredictability. Trademark application processing times at the USPTO have increased significantly, with first review often taking 8+ months compared to 3-4 months just a few years ago. This leaves clients waiting longer for their registrations, and the certainty that comes with it.

At the same time, decisions by individual examining attorneys can be inconsistent and hard to predict. Overcoming a refusal often comes down to the persuasiveness of the attorney's arguments. Trademark attorneys need to manage client expectations around timelines and likelihood of success. With a veritable traffic jam of applications since Amazon offloaded its due diligence to the USPTO, it's getting harder to convince an examiner that a mark is distinctive.

3. Uncertainty around trademark law and USPTO procedures. Recent and pending court cases could change the landscape around what marks are registrable and how certain provisions of trademark law are interpreted. For example, the Supreme Court is set to rule on whether prohibiting registration of marks that include a living individual's name without consent is constitutional (Vidal v. Elster).

The USPTO has also been updating its filing systems and requirements, such as retiring the old TESS search system and implementing stricter rules around physical addresses for applicants. Trademark attorneys need to stay on top of these legal and procedural developments to properly advise clients.

4. Client desire to handle more trademark work in-house. As IP budgets tighten, some companies are looking to move routine trademark clearance, filing and maintenance work in-house to their own legal departments. While in-house counsel still rely on outside trademark attorneys for more complex issues, they may handle a growing share of the day-to-day portfolio management.

Trademark attorneys can provide value to in-house teams through strategic advice, second opinions on important matters, and handling overflow work. Developing alternative fee arrangements and subscription-style services may help strengthen relationships.

5. Pressure on fees and profitability. The combination of non-lawyer competition, more fee-sensitive clients, and flat or declining trademark filing volumes is putting pressure on many law firms' trademark practices. Profit margins are being squeezed.

To remain competitive, trademark attorneys need to focus on efficiency, automation where appropriate, and demonstrating the ROI they provide. Offering value-added services like trademark watching, customs recordation, and domain name management can boost revenues.

While traditional trademark law practice isn't going away, attorneys face increasing competition from non-lawyer providers, frustration with USPTO delays, and fee pressure from clients. Adapting service offerings, pricing models, and client education will be important to stay ahead in this evolving market. The most successful firms will be those that leverage technology to streamline operations while still delivering expert-level strategic advice.

To overcome these threats, some key strategies and best practices include:

Conduct comprehensive trademark searches
Before filing any new trademark application, it's essential to search for potentially conflicting marks that could block registration. This includes searching the USPTO database as well as common law sources like business directories and the internet.

Specialized trademark search software can streamline this process. For example, Corsearch provides advanced search and watch tools that cover federal, state and international trademark databases. Its semantic search goes beyond exact matches to also find marks with similar meanings. This saves time while surfacing more potential conflicts. TrademarKraft has a search tool that ranks similar marks in terms of relevance..

Automate docketing and deadline tracking
With numerous deadlines to juggle, a reliable docketing system is a must. Ideally, the system should automatically calculate deadlines based on USPTO and foreign IP office rules. It should also send alerts well in advance of critical dates.

Many IP management platforms have docketing capabilities built-in. For instance, Anaqua's AQX system automates deadline calculations and reminders. Its dashboard provides a global view of upcoming deadlines and tasks. This reduces manual data entry and the risk of human error.

Streamline workflows with task management
Implementing consistent, repeatable workflows and approval processes keeps everyone on the same page. Look for software with customizable task management and collaboration features.

WebTMS offers configurable workflows that can be tailored to a firm's specific procedures. Tasks can be automatically assigned to team members based on rules and deadlines. Centralized notes and messaging facilitate seamless collaboration.

Organize documents in a central repository
Trademark files typically include application forms, specimens of use, office action responses, registration certificates and renewal filings. Storing all these documents in one secure, searchable location saves time and prevents anything from falling through the cracks.

Cloud-based document management solutions like NetDocuments allow trademark teams to access files from anywhere. Its OCR technology enables full-text searching to quickly locate specific documents. Granular access controls and audit trails enhance security.

Coordinate effortlessly with clients and foreign counsel
Clear and timely communication with clients and foreign associates is key, especially when dealing with multi-jurisdictional portfolios. Client portals and shared access can boost transparency and responsiveness.

Dennemeyer's DIAMS iQ system provides a secure portal where clients can submit new trademark requests, review status updates, and exchange messages with their attorney. Its global IP database also simplifies the selection and management of foreign counsel.

Gain insights with trademark analytics
Analyzing filing trends, office actions, and examiner behavior can inform prosecution strategies and benchmarking. Visualization tools make it easier to spot patterns and share findings with stakeholders.

Clarivate's CompuMark offers a suite of trademark analytics and insight reports. Its Examiner Rejection Analysis reveals the most common reasons cited in office actions by specific USPTO examining attorneys. This intel helps craft more persuasive arguments.

Automate trademark watching
Ongoing monitoring is necessary to police for potential infringement and catch conflicting marks as early as possible. But manually scouring through the constant stream of new filings is impractical.

Corsearch's watching tools automatically monitor new applications, sending alerts whenever an identical or similar mark is published. This systematic approach provides more comprehensive coverage in a fraction of the time. Automated watches can also track problematic marks that were blocked during clearance.

Simplify global trademark management
For companies with international trademark portfolios, juggling different languages, legal systems and local requirements quickly gets complex. Specialized global management platforms can lighten the load.

Dennemeyer's DIAMS iQ supports the entire trademark lifecycle across all jurisdictions. It has a global IP database with over 100 million records, plus auto-population tools to minimize repetitive data entry. Centralized document storage and integrated email management keep far-flung trademark projects organized.

In addition to leveraging technology, establishing consistent procedures is also important for boosting efficiency and quality. Some tips:

Develop standard operating procedures
Creating detailed, step-by-step SOPs for routine tasks like conducting searches, filing applications, and responding to office actions ensures everyone follows best practices. Checklists and templates act as helpful guides and reduce mistakes.

Cross-train team members
Having multiple people trained on essential tasks protects against disruption if someone is out of the office. It also allows work to be divided up more flexibly based on availability. Cross-training facilitates knowledge sharing and identifies areas where additional documentation may be needed.

Conduct regular trademark audits
Periodically reviewing the trademark portfolio helps identify marks that are no longer in use and should be culled. Audits also surface filing errors and gaps in protection. Addressing these proactively keeps the portfolio streamlined and reduces risk.

Track and analyze key metrics
Monitoring data points like average pendency times, registration rates, and the number of office actions received provides valuable insights for resource planning and process improvement. Regularly reviewing metrics with the team reinforces the importance of efficiency and catching any issues early.

By combining the right mix of trademark management software and refined procedures, firms can handle higher trademark application volumes with greater speed and precision. While there is an initial investment of time and budget required, the long-term gains in productivity and risk mitigation are substantial.

The most impactful solutions will be those that integrate seamlessly with a firm's existing tech stack and support its unique workflows at scale. When evaluating options, look for a vendor that understands the nuances of trademark prosecution and has a strong track record of successful implementations.

Change management is also critical to realize the full benefits. In addition to comprehensive training, consider appointing power users and establishing a feedback loop to surface any issues quickly. Providing ongoing support will increase adoption and ensure new software and processes stick.

With trademark filing activity showing no signs of slowing down, it's never been more important for firms to optimize their practices. A robust trademark management toolkit allows attorneys to spend less time on administrative tasks and more time delivering strategic guidance to clients. By continuously refining systems and procedures, firms can cement their competitive advantage and be well-positioned for the future.



Older Post Newer Post

Leave a comment

Please note, comments must be approved before they are published