Balancing act for technology and rights
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Disruptive technology creates productive lawyers, business growth and stability, so it’s time for law firms to embrace its potential rather than fearing it, as Charles Hill and Daniel Comerford of TrademarkNow argue.
Despite an aversion to words such as “innovation” and “artificial intelligence” (AI), today’s lawyers do accept the notion that engagement with technology can lead to more effective interactions and legal advice.
Consequently, routine and manual “heavy-lifting” processes that have in the past taken up a lot of time for legal teams are being eliminated, allowing lawyers to turn their attention to higher-value tasks and deliver exceptional client services.
What is less well understood and may be feared by law firms and IP service providers is the possibility of embracing these kinds of “disruptive” technologies as a source of business growth and stability, rather than one of potential cannibalisation. Many consider disruptive innovation to be perhaps inevitable, but something to be avoided for as long as possible.
However, some firms have found that when they combine new technologies with changed ways of working, a modified service offering, and job-based or subscription pricing, small and medium-sized enterprise (SME) clients become not only economically attractive, but also eager to buy, low risk and relatively easy to serve.
At TrademarkNow, we are hearing these kinds of stories from our customers in two main areas: clearance and enforcement.
“NameCheck uses AI to score the similarity between a new trademark candidate and the millions that already exist.” - Charles Hill & Daniel Comerford, TrademarkNow
A legal team’s typical job in trademark clearance is to help businesses launch strong, low-risk new brands into the marketplace. A key step in this process is the trademark search, which is repetitive in nature, based on large sets of data, requires specific or local expertise, and is prone to human error. So, it is tailor-made for improvement by AI software.
TrademarkNow’s clearance search product, NameCheck, uses AI to score the similarity between a new trademark candidate and the millions that already exist. It analyses the strength of the user’s candidate name within particular regions and product types, and scores its similarity to other marks by look, sound, meaning and product distance (Figure 1).
Figure 1: NameCheck, TrademarkNow’s AI engine
The resulting report arranges search results in decreasing order of similarity, allowing lawyers to quickly reach a point at which they can confidently stop searching—so rapidly, that they can change the ways they interact with clients. Jan Gerd Mietzel, partner at law firm Rolim, Mietzel, Wohlnick & Calheiros in Germany, says: “Conducting searches with TrademarkNow is simple and speedy.
Sometimes we can even search and respond to a client in real time—for example, during a phone consultation—especially if what they are looking for is an answer to a straightforward query.”
Law firms are using this greater efficiency to launch different service offerings and grow their practices. Randy Michaels, co-founder and trademark lawyer at Trust Tree in Nashville, Tennessee, explains that TrademarkNow’s efficiency and unlimited search subscription structure allows the firm to run a search for every SME client as part of our flat-rate trademark filing service.
“For the most part, our clients value that search information, as it allows them to understand the risk levels of their mark in a very simple way, and make an informed decision on either assuming those risks or changing their name to something different,” Michaels says.
He adds that this helps the firm to fortify the new client relationship. “It lets them know that we have their best interests in mind. And often, they will come back to us for other services—additional filings, to register their logo, watching and oppositions.
“This has really helped us grow our practice, portfolio-wise, from 100 live client marks when we started five years ago to around 3,000 now,” he says.
“It’s also enabled us to move from being heavily dependent on litigation to being mostly focused on trademark prosecution, and to become a top-25 firm in annual new application filings in the US,” he adds.
“This helps our clients use their trademarks not just as an insurance against infringement problems, but as true strategic assets.” - Jakob Andersen, Oblima
TrademarkNow’s watching product, NameWatch, uses the same AI engine to regularly compare our customers’ existing brands against newly-added marks from around the world, and sift out those that are similar enough to be of potential concern.
Law firms can create entire client portfolios and watch more brands more cost-effectively than was possible before—and develop new subscription watch-report services for SMEs.
This can allow firms to grow by offering more strategic, consultative services, as Jakob Andersen, chief executive officer and co-founder and trademark lawyer at Danish IP services firm, Oblima, discovered.
He says: “By using new technologies, we can put less time into watches and our legal opinions, and instead use the watch reports, including the time it takes to docket and report them, as the basis for regular client discussions.
“This helps our clients use their trademarks not just as an insurance against infringement problems, but as true strategic assets.”
He adds that the technologies enable the firm to help clients see what other trademarks are similar enough to potentially cause problems for them over the next few years, and what their competitors are doing.
This assists clients in deciding whether they should watch new markets, potentially claim unregistered rights there or start selling in those countries, Anderson explains.
“These discussions make it much easier for us to keep momentum with our clients, to help them grow their businesses while also feeding information into good leads,” he says.
“As a law firm or IP services provider, you can’t take this approach if everything is done manually—you have to embrace technology. And it has definitely helped us to grow as a business,” he adds.
“Using emerging technologies to reinvent business models is a serious undertaking, and one not without challenges.”
We recognise that different law firms have different circumstances, and that using emerging technologies to reinvent business models is a serious undertaking, and one not without challenges.
However, the above examples show what’s possible. Some firms are indeed embracing an effective digital-first strategy and are succeeding in building competitive, high-growth businesses, future-proofing their legal practices and careers, and creating happy clients who continue to return for their services.
Charles Hill is head of product at TrademarkNow. He can be contacted at: firstname.lastname@example.org
Daniel Comerford is head of sales and marketing at TrademarkNow. He can be contacted at: email@example.com
TrademarkNow, disruptive technology, law firms, innovation, artificial intelligence, SMEs, software, portfolio, trademark prosecution, application filings