The changing role of the trademark lawyer, managing complexity and generating insight to drive business advantage

By Jayne Durden
February 12, 2017

TrademarkThe role of trademark lawyers is moving away from a purely legal, prosecution function and into the area of business strategy, driven by three primary factors: how quickly a new brand can become significant collateral for an organization; how quickly a business can globalize; and the increasing need for trademark specialists to manage more complex and nuanced applications of trademarks for brand valuation.

An Increasingly Digital World

The idea of brand value is evolving. Trademark lawyers must be concerned with everything that contributes to the protection of a brand, not just its trademarks. Protecting a brand now includes a number of issues that were simply not relevant to the role twenty years ago, such as: trademarks in domain names; the use of trademarks online; trademarks used in social media handles; and trademarks being mentioned in general online commentary.

Consider the impact that the internet has had on protecting IP. In the nineties, internet domains were largely unknown outside of academic and research sectors. Access to information through websites has transformed how trademark specialists need to consider the management and protection of brands online. For example, there are now more than 1,000 top level domains (TLD) for internet addresses (not only the likes of .com and .biz but also country-specific domains). Almost 700 of these have been created since 2014 with the acceptance of the gTLD. Brands now need ensure they register all domains relevant to them and also monitor for competitors or members of the public using the trademark in non-affiliated websites.

Social media provides further challenges, not only to ensure that trademarks are protected across a wide and growing volume of popular social channels, but also in terms of the correct approach for a business to take towards engagement on such channels. This is a highly dynamic area for companies. New platforms offer new opportunities for engagement with different audiences. For companies with multiple brands to promote and trademarks to protect, this could mean monitoring and engaging with more than 30 digital platforms.

Mars Inc., as an example, is a global manufacturer of products as diverse as pet food, chocolate and chewing gum. Mars runs campaigns for each brand, across multiple social platforms. How does it protect its trademarked brands from misuse across social channels? How does the company react if a third party represents one of its brands on Twitter or Facebook?

These kind of issues represent how the breadth of the trademark lawyers’ role has expanded in the digital era.

A More Globalized Economy

Technology is also one of the drivers of a second trend in trademark management – business growth and globalization. Historically, a business would establish itself in its home country and grow across borders over time. Consider the example of fast food chain McDonalds. The first restaurant was opened in 1955. It took 12 years before there was an overseas restaurant – even then the first one was in Canada, the closest neighbor to the US where the brand began.

But now businesses are capable of growing and globalizing quicker than ever before.

Facebook, at 12 years, is a relatively young company but, with 1.71 billion active users, for every year that Facebook has existed, it has generated an average of $4 billion in brand value, according to the Forbes World’s Most Valuable Brands report 2016.

Some of the hottest names in the internet space are less than a decade old: Airbnb and Uber were respectively founded in 2008 and 2009. WhatsApp, founded in 2009, had 55 employees and one billion users when it was acquired by Facebook in 2014 for $19 billion.

Businesses that combine a powerful business model with an excellent brand and trademark strategy can cause unimaginable disruption to markets – this is not only true of obvious examples such as Google (now the world’s biggest media owner) but other up and coming brands such as Netflix, Deliveroo and Spotify. These recognizable brands consider a global strategy from the outset – driving new challenges for their trademark lawyers as well as those of their competitors.

Inevitably, globalization also brings risk. Monitoring trademark infringements across the world is an enormous job. While many jurisdictions have strong legislation to protect trademark and copyright owners, others are not so advanced. Understanding the strength of protection in each jurisdiction requires resources. Knowing where it is important to seek protection requires judgement. Whilst these are core competencies of trademark specialists, the time available to make these decisions is shrinking.

The core competencies of an in-house trademark lawyer’s role are therefore expanding. The decisions they make are having a bigger impact on the company. The role now requires expertise in a number of new areas, moving out of the legal department and into the boardroom, and faster decision making to match the pace of both business growth and innovation.

Increasing Opportunities to Maximize Brand Value

The third challenge to trademark lawyers is driven by the need to create more value from brand assets. Whilst this is true of all IP, the opportunities to increase the value associated with trademarks is being driven by a global growth in licensing and business collaborations. As competition increases and it becomes easier to do business globally, companies are actively looking for partnerships to leverage the value of brands in new territories.

This raises new challenges. What are my brands worth? Who makes the right partner and how do I ensure that their use of the brand will not damage it? What are the most effective marketing alliances? Which marketing campaigns should I look to protect? When IP results in a partnership, who owns it and how can it be used? In an increasingly tech savvy world, what is driving the most effective engagement for my brand?

These are sophisticated questions that are increasingly demanding the attention of trademark lawyers. In a world where affinity marketing is becoming more common, and increasing revenues are being generated from licensing rather than manufacturing, these issues are central to business growth strategy. Trademark lawyers need to be able to respond to these issues effectively.

Faced with such a diverse set of challenges, many trademark specialists believe that the working environment is more complex and challenging than ever before. A central sentiment amongst trademark lawyers is that there has to be a better way to manage the time, resources and challenges faced.

Unlocking Potential in the Role

The trademark lawyer of the future will need to be a collaborator between legal requirements, marketing requirements and business requirements. To excel in this role, individuals will need to have more access to information across the whole business, providing input from the boardroom to product marketing. To manage this transition, trademark specialists need to ensure they have the resources available, both internal and external, to encompass the broader role.

Technology the Facilitator

Automated domain name watching can help a company keep an overview of new and relevant domain registrations. The automation of trademark searching, filing, watching, recording and renewals will offer companies the opportunity to effectively outsource the full lifecycle of trademarking, reducing cost and improving the efficiency within an operation.

Beyond these tools, trademark lawyers can deploy big data sets to more effectively analyze the brands they are protecting. The easy availability of external data sources, such as sales figures for different brands in different countries, brand sentiment by location and social media streams, all provide insight into a brand’s performance in any given location. Being able to monitor social media sentiment, for example, can provide a real time indicator of brand perception and an early warning signal of upcoming issues around a particular brand or trademark.

This kind of data will enable trademark lawyers to better evaluate the significance and monetary value of trademarks in the future. By combining global sales figures with product ratings and social sentiment, trademark owners can get a much clearer overview of the value of the assets they own and where these are being maximized fully. This delivers real insight into future opportunities for increasing the value of the brand portfolio.

The Trademark Lawyer of the Future

There is a significant opportunity for trademark attorneys to transition from the legal department to the boardroom. Automating day to day tasks and focussing on challenges that not only relate to the legal and regulatory issues around trademarks, but also focus on how IP can drive increased value in an organization to facilitate new opportunities for growth and development.

The role of the trademark lawyer should increase in importance, and the tools available to them need to reflect both the changing role and the increased value that the position can offer a business.

A combination of technology and outsourcing can reduce the day to day burden associated with managing assets across a wider geographical and digital platform. This should provide more scope to position the trademark lawyer of the future in a central business role, helping to drive increased brand equity globally.

The Author

Jayne Durden

Jayne Durden is the VP of Client Solutions Architecture at CPA Global and leads a team that helps clients investigate ways to improve their IP processes. Jayne is a qualified trademark attorney and solicitor with experience working in large and boutique law firms in the US and Australia, where she provided professional support to in-house legal counsel in the development of IP strategies.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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