INTA reveals in-house TM lawyers’ top concerns
An increasing workload and decreasing budget are the biggest challenges in-house trademark teams expect to face in the next three years, according to the International Trademark Association (INTA).
In the “2020 In-House Practitioners Benchmarking Report” released yesterday, December 14, INTA explained that in-house trademark teams were concerned that “leadership see their team as a costly investment with little financial return, making in-house teams the targets for cuts when budgets tighten”.
And, the COVID-19 pandemic is exacerbating workload concerns, with survey respondents claiming that the health crisis has contributed to a significant (18%) or moderate (37%) increase in the volume of work.
Overall, most respondents cited “an increase in workload without an increase in staffing” (65%) and a “decrease in budget” (56%) as the top two challenges over the next three years.
More than 500 in-house practitioners at more than 300 of INTA’s corporate-member organisations answered the survey, conducted in June and July this year.
Ayala Deutsch, INTA president, and executive vice president and deputy general counsel at NBA Properties, said: “The challenges facing in-house practitioners are intensifying as we confront economic uncertainty, changing consumer attitudes, and expectations toward brands, as well as the ongoing pandemic.
“It’s incumbent upon organisations to gain insight into their teams to maximise their full potential and plan for the future, especially given the overall value of IP to a brand.”
Teamwork
Most commonly, in-house practitioners are undertaking prosecution-related tasks and enforcement, litigation, and oppositions. However, responsibilities are expanding—driven by technology, over the last three years, demand for work has increased the most in anticounterfeiting (up 60%), social media (up 56%), and clearance (51%).
According to the report, the median in-house legal team had approximately 4,500 total trademarks in its portfolio, with a budget of between $1 million and $2 million and was composed of six people. The average team had approximately 1,400 total trademarks (pending and registered) per team member.
Teams were made up of 50% lawyers, 33% paralegals, and 17% trademark administrators and other positions.
In terms of collaboration, 94% of respondents said they collaborated with their marketing department. The finance department came second with 67% of collaboration.
External collaboration
The report also focused on collaboration with outside law firms, finding that most respondents said their team collaborates with outside law firms for enforcement/litigation oppositions (87%), prosecution/registration (82%), clearance (64%), maintenance (61%), and anticounterfeiting (56%).
Other outside service providers were frequently relied on for domain name management, anticounterfeiting and clearance.
“During follow-up conversations, in-house practitioners were clear that ‘cost effective’ need not be the cheapest option available,” added the report.
Leadership and diversity
While a vast majority (91%) believed that their “organisation’s leadership appreciates the value and importance of trademarks and related issues”, nearly half of practitioners said they didn’t know how their organisations capture the value of trademarks.
INTA added most in-house practitioners said their company was investing the right amount of money (64%) and human resources (58%) into legal support services and trademarks, but that significant portions of respondents (34% and 41%, respectively) said this investment was too little.
On diversity and inclusion, one in five in-house practitioners said they felt socially excluded at an event in the trademark/IP field. However, two-fifths of respondents agreed that “discrimination is rare” within the IP field.
Overall, respondents had the most significant concerns around race and, while many noted the high proportion of women in the field, many wanted better representation among leadership.
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