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1. Trademark Life Cycle and Outsourcing:
Protecting your Brands Globally

2. Daniel Smart
Director
COLMAN+SMART (UK)
Speakers
Dhiraj Dev Phukan
Director – Events
Global Outsourcing Association of
Lawyers (GOAL)
Host

3. Introduction
This is geared towards the following audience:
• You know what trademarks are
• You value your trademarks – but may have budgetary restraints
• You tend to register trademarks (i.e. do not rely only on common
law rights) - it’s usually cheaper in the scale of things
• Today is a general discussion: whether you own 50 or so
trademarks or thousands

4. About Me
16 years in the trademark field working for law firms, at an outsource provider
and in-house within the pharmaceutical industry (UK, Germany and Switzerland)
Now Director of a paralegal law firm – it could be said we sit somewhere between
a law firm and an outsource provider
I consult on trademark management (administration, audit, process and supplier
management)

5. Objectives
There is no ‘best in class approach’
• Your resources, time, headcount
• Skill set
• Costs (external and internal)
• Need to ‘delegate’ risk externally
• VALUE
Factors to consider:

6. Trademark Lifecycle
Selection
Clearance
Registration
RenewalWatch
Database
Miscellaneous

7. Selection
In-house – through marketing teams (global/regional/local)
Legal to partner from early stage?
Regulatory?
Branding agencies
Local advisors e.g. China

8. Clearance - Knockouts
Knockout, screening,
‘Quick & Dirty’ =
identical/near identical
checks
In-house: Free resources -
USPTO TESS database,
TMView (Europe),
ATTMOSS (Australia)
Search company platform
Search company offline Law firm – filter results

9. Clearance - Comprehensive
Trademark Office
Search company
Number of hits? Time/skill set to review internally?
Search company with opinion and/or linguistic check
Law firm with opinion – if law firm represents you regularly perhaps
good understanding of your business goals and needs as a client

10. Registration (domestic)
Direct e.g. to the USPTO
Through an external law firm
Internal expertise/resources?
Management of risk e.g. monitoring of deadlines, keeping up-to-date with local practice?

11. Renewals
Direct filing
(where possible)
Network of
agents worldwide
Single/regional
law firms
Outsource
renewal provider

12. Watching
Watching is a review of published trademarks of third parties
that might be identical/similar to your trademarks
Rely on agents or IP Offices – risky
Watch provider
Review of each watch notice – resources, skills?
Through a law firm – and they filter out and report only relevant
watch notices

13. Database
Maintain own in-house records
Use IP database
Skill set, time required?
Allow law firm(s)/agents to maintain records
Responsibility for deadlines, renewal reminders?
Access to their database – read only
Ability to transfer your cases?

14. Questions?
Write Us at :- Call Us:-
media@events4sure.com UK: +44-20-3617-1721
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2015-16

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