The trademark department within an enterprise plays an important role in securing and enforcing trademark rights including registered trademarks, service marks and trademarks in use. Some trademark departments also track registered domain names as well as copyrights.
Trademark management software must empower trademark department to better service their client's needs, secure the appropriate rights, notify them about important dates and help them implement the enforcement program effectively.
While trademark docketing alone may work well for your law firms; corporate legal departments should look at trademark management software to help them achieve complete lifecycle management.
Here are the top 5 features required for a robust trademark management software:
Comprehensive Functionality
A good trademark management software must have comprehensive features and functionality for trademark search request submission and review process, trademark docketing, trademark electronic case file repository, renewals, trademark licensing, trademark enforcement and policing, anti-counterfeiting, domain and copyright management.
Trademark docketing must include robust docketing features for all major jurisdictions including regular updates to local and international laws pertaining to trademark registration. The system should track all important docketing dates (statutory as well as soft reminders) and send reminder emails to pre-defined team members. Further, for process optimization, the system must provide checklists at various stages like filing, response to actions, and notice of allowance.
Collaboration and Workflow
Business users should be able to submit an online trademark request form for initiating trademark requests including the ability to upload various documents. The reviewers must be able to route the request to various teams for searching and/or approval. The details about the search performed including search results should be stored for future use.
For departments who are using outside counsels, the system should provide a workflow to engage an outside counsel for a trademark prosecution case. The outside counsels must be able to view and work on assigned tasks and upload drafts, responses and costs online. Each action should send automatic docketing notifications to the designated individuals within the department.
Reports and Analytics
The trademark management system must provide searches, reports and analytical tools to analyze portfolio as well as costs. Besides the standard ("canned") reports, the system must provide intuitive interface to customize existing reports without vendor assistance, provide ad hoc searching and reporting as well as ability to export search/report data to excel, PDF etc.
Configuration (and not customization)
The system must allow configuration of the online trademark request form, docketing as well as approval workflows by application administrators. As you select the best trademark management software for your needs, be sure you understand the difference between the configuration and customization and can clearly differentiate where certain functionality falls.
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