All intellectual property (IP) should be managed and used by organizations as strategic business assets, but trademarks - compared to their IP counterparts - especially run the risk of being overlooked. Effective trademark management is incredibly important not only to leverage these IP assets but also to guard the organization against threats to its brand. There are a number of internal and external issues that impact trademark management.
Internal Trademark Management Challenges
These are challenges that your organization has direct control over.
- Developing a trademark management strategy
A trademark management strategy will plan out every step of a trademark’s life including creation, legal clearance, filing & registration, governing its use, monitoring for misuse, determining return on investment, and managing its renewal process. Creating an effective trademark management strategy will give you a competitive edge by ensuring you are leveraging trademark assets properly across the organization and putting you in a proactive position ensure proper use.
- Hiring and training skilled trademark managers
In conjunction with developing a trademark management strategy, it can also be challenging to hire or train managers to own that strategy. Trademark managers should have a solid background with trademarks but also need to be intimately familiar with the organization’s IP strategy. Training and empowering these people is critical to effectively executing a trademark management plan.
- Developing new trademarks
Working with the marketing or design teams to create new trademarks involves open communication and time in order to determine value, search for existing related trademarks, and gain legal rights. Determining a clear process for communication and timeline expectations can mitigate these challenges.
- Leveraging and protecting current trademarks
Even properly using trademarks can be a challenge. Many organizations don’t have an established method to determine if they are leveraging their trademarks for maximum value. Additionally, monitoring trademark misuse - including from internal sources - can be time consuming on its own, without even adding in the time it takes to correct.
External Trademark Management Challenges
These are challenges that your organization has minimal or no control over.
- “Trademark trolls”
A “trademark troll” is someone who registers a trademark without the intent of using it and then takes legal action against anyone attempting to use the same or a similar mark. These people affect your organization’s trademark management because they could be putting any of your unregistered creative assets in danger and your organization at risk of legal action. That type of attention could harm your brand as well as your IP strategy.
- The online world
Trademarks today are much more difficult to manage than twenty years ago. The Internet has created countless pages and back-end coding and tagging where trademarks can be infringed, misused or misdirected without the notice of your organization. Relatedly, your domain names require their own vigilance and management.
- The global challenge
Organizations today must take into account the global nature of trademark use (and misuse). Even if your trademark isn’t planned to be used outside its registration country, you still need to consider the possibility of misuse abroad. Litigating trademark infringement is expensive and time consuming; It is worth the effort to account for international protection in your strategic planning if your products or services are accessible and transactable electronically.
In most cases, proper strategic planning and monitoring fosters a more proactive approach to protecting and managing your organization’s trademarks. An IP management solution can assist in taking some of that work off your IP team and help to control IP management costs.