Don’t worry, this is NOT another article telling you how important trademark is or what will happen if you lose your trademark rights in the key market of your business. These are common sense (or common nonsense if you don’t buy the point), and you won’t read again. The topic here is “why you need to hire someone as your employee to manage your trademark portfolio” instead of just asking your general counsel (or company secretary) to simply find out a law firm and throw everything to them.
From time to time, I got questions on trademark issues from friends who operate their own businesses. Their questions are usually specific, such as “Can I use my trademark immediately after filing an application for registration?” “Someone applied to cancel my registration by saying that my trademark is not in use. How should I defend?” “Can you help me to catch that guy who is stealing the design of my logo?” so on so forth.
I am not writing to answer these questions in this entry, as the answers are subject to case scenarios. That being said, in most cases, legal answers are not much complicated. The real challenge comes from loosened management of trademark files. Even for some large companies, when we ask them providing evidence to prove actual use of a trademark or materials proving their investment to a brand, they may still encounter difficulties in collecting evidence.
Good lawyers would certainly NOT just rely on materials provided by their clients. They will try to collect evidence by searching the web, checking with libraries, survey markets and arranging on-site investigation. If you engaged a right lawyer, these actions would usually be helpful.
However, all these actions relate to extra costs. Also, the results are not guaranteed. It would be much better if you have hired a trademark manager as your own employee, as he/she may at least help you out with the following:
– Mark all important dates for your trademark registrations and follow up promptly (This is not just a work of penciling the date on calendar – she/he will need to liaise with lawyers/trademark agents to confirm deadlines of each action for each mark.)
– Receive and respond to official notices timely – Some trademark offices may send short notices on office actions or third party actions (invalidation/cancellation) against your trademark registration. You need a person who can respond to notices and communicate with lawyers/trademark agents promptly.
– Keep a good trademark file in which original use evidence and other materials are well filed for each of your trademarks — This does not mean that your trademark manager needs to know all requirements to the form and content of use evidence in each country you have registered your trademark. Once you have a trademark manager, you have created a contact point connecting all your trademark agents and your business team — Each time you create a new brand, your trademark manager can simply conduct a survey with trademark agent in each country where you will cover. Then she/he can follow the advice of trademark agents to collect use evidence with your business team.
Last but not least, the trademark manager will help you selecting appropriate local agents and local counsels. Apart from identifying better external counsels, your trademark can also substantially reduce the legal costs in each matter.
The trademark manager does not need to be a qualified lawyer, while it would certainly be a good news if your candidate has worked with a law firm who regularly dealt with trademark portfolio management matters – preferably both on the trademark filing side and the enforcement side.
Of course, before decide to post recruitment advertisement, you need to figure out how much work your trademark manager will need to do (so you can tell if you need a full-time manager or a part-time one). Here goes the last suggestion in this post: you should consult with your trusted trademark lawyers on your expectation to the trademark manager. They will then comment whether your expectation is of realistic.
