High and low: searching for providers

Explaining the importance of a strong brand isn’t easy—brand power is difficult to quantify. But the proof is in the practice; big brands can even find their way into popular culture.

Protecting a brand with trademarks is an effective way of preserving its power, but the practice requires a lot of work. Searching, filing, opposing and prosecuting are all equally important in ensuring that a brand remains strong and secure, and at the same time, each one is laborious.

A trademark search can be costly and time-consuming and, as such, is a good candidate for an efficiency drive. In-house IP teams and private practice law firms may feel the administrative burden of maintaining their own agent networks and managing several service providers simultaneously. The time that attorneys spend on these things could be better spent elsewhere.

The expectations of a law firm’s corporate clients can pressure it into drives for greater efficiency without compromising the quality of the service that it provides. A law firm may believe that, as a single provider, it will achieve a reduction in costs through volume reduction. But if the law firm signs a flat fee agreement with its corporate client, the document may not take into account the client’s demands for quality and speedy work. Efficiency, then, is key.

Nadine Archer-Patchett and Rachel Denholm, trademark practitioners at Baker McKenzie LLP in London, routinely provide clients with advice on their trademarks. They carry out application, opposition and search work on a global scale.

“As with all businesses, it's all about providing the best quality service for your clients at a reasonable price,” says Archer-Patchett, “and being flexible enough to meet the client’s needs, more than anything else.” Outsourcing trademark searches to a service provider can achieve this, as long as it meets certain criteria.

Denholm says: “Cost is obviously a consideration, but so is an efficient service and a quick turnaround. There also needs to be some flexibility so that you can have a tailored service to meet the individual client's needs.”

“Even though trademark searching is easy to outsource, it’s a fundamentally important part of trademark protection. Trademark professionals are dependent on the quality of the search report to make legal assessments and provide opinions to their clients.”

Companies that wish to take an existing product and expand into new markets may pressure their in-house IP teams into expanding their trademark activities without increasing headcounts or costs. Company mergers also present a challenge. When companies merge, it’s likely that some trademark work will change location. This will often be accompanied by a natural dropout of people. At the same time, there’s an increase in the amount of work for the IP team to do because the merged company is larger. New assignments, new recordals and new-name project work will significantly add to the workload.

A senior trademark counsel at a leading European company says: “In the past, we purchased searches from a service provider and evaluated them ourselves. However, when there were some personnel departures, there weren’t enough people to deal with all of the projects that we had, so we decided to outsource our search work.”

He adds: “The work has to be done in a reasonable amount of time because that’s what our internal clients expect, and if it takes too long to evaluate the search report data, it loses its validity. There is always that risk, but if you wait too long, the risk is even higher, so you have to do the searches as soon as all the data has been generated. The fee structure has to be transparent and competitive.”

Needs must

An IP team does a lot of things, not just trademark searching. Law firms and in-house IP teams need to look at what work they want to keep and what work that they can easily outsource. Opposition and prosecution work may be things that they would want to keep because it involves their marks, their brand and their collateral, whereas trademark searching is like a ‘building block’ that can be removed and given away without damaging the overall feel and function of an IP team.

The in-house counsel says: “What is very important to us is that the service provider has its own attorney network. We not only get the data but some kind of evaluation, which is helpful in seeing which direction the particular name goes. Although we challenge and check the reports carefully and sometimes even come to different conclusions, they are already a big help because otherwise we have to do it by ourselves.”

“They help us to concentrate on the main problems that trademark candidates may face. If you carry out the searches, you may get hundreds and hundreds of hits. The service provider pre-filters these hits and allows us to concentrate on the most important problems. That saves us a lot of time.”

Earning trust

Once an outsource partner is selected, the main challenge for a service provider is gaining the client’s confidence. In many cases, a service provider isn’t simply given all the trademark search work. Normally the work is drip-fed to the service provider to see how well it handles itself. A portfolio is never instantly handed over in its entirety.

Even though trademark searching is easy to outsource, it’s a fundamentally important part of trademark protection. Trademark professionals are dependent on the quality of the search report to make legal assessments and provide opinions to their clients. Proving to a client that the outsourcer is on board, that it understands the client’s business and that it is the right partner for the client is integral to developing a trusting relationship.

Tinker, tailor

It’s very important for a service provider to avoid providing standard solutions that aren’t a good fit for its clients; each solution should be tailormade. A client may want to see everything in a search report, even trademarks that are vaguely similar to the ones they are working on. Some clients may want to see only the most important information and nothing else. Clients need to be confident that the service provider has the ability to pick information that is important to them.

The in-house counsel says: “It's very important that the search reports have as much information as possible on a few pages. They should be focused on the relevant risks.”

“I do quite a lot of full-clearance searches and, as part of that, our service provider has developed a final report that fee earners use to produce their advice to go to clients,” says Archer-Patchett. “It's all tailored so that the fee earners can review the searches, prepare their advice online, and once that has all been done, fee earners can just press a button to generate a report ready to send to a client in its preferred format.”

Denholm carries out identical screening searches using a product specifically tailored to her needs.

She says: “I discussed it with our service provider and it puts it together for me at a particular cost. That covers the whole of the EU and various other countries that I can add and drop whenever I want. I do so many of these now that there is a pattern, and I can more or less ask them for the usual and I receive the requested report within a few days.”

The in-house counsel believes that a service provider needs to go above and beyond what they may be expected to do. They should have at least some specific knowledge of the peculiarities of the industry that the client belongs to. Futhermore, they need to be creative problem-solvers. “Sometimes you are very fixed on a certain problem and a certain solution. It can be worthwhile if someone else—with lots of experience in this business—looks at that and helps you to improve your own idea.”

He adds: “It is also important that the service provider’s attorneys provide us with ways of getting even a problematic trademark through. With borderline cases, it is helpful if they give us some suggestions of ways of getting through with these trademarks.”

Outsourcing to a service provider makes sense. It is a worthwhile alternative to keeping everything in-house, which can be costly, time-consuming and, worst of all, inefficient. Trusting a service provider with trademark searching also makes sense. A service provider can do the jobs that some trademark professionals dislike, allowing them to focus on more valuable work.

Catherine McGirr is the general manager at Avantiq. She can be contacted at: catherine@avantiq.com

Larissa Best is the corporate office at Avantiq. She can be contacted at: larissa.best@avantiq.com