Trademark analysis: A breath of fresh air for your intellectual property portfolio this season

Without trust in the accuracy, coverage and strategic relevancy of the trademark rights in your intellectual property portfolio, how can you be confident in your ability to protect and enforce your valuable brand assets? As part of a comprehensive trademark audit programme, trademark analysis will help your portfolio bloom in the coming year, says guest contributor Elena Galletti, Head of Trademark Services Architecture at Questel.  

Ask most IP professionals about the health of their trademark portfolios and they will likely express some concerns about accuracy, coverage or strategic relevancy. Of course, this is not a reflection of a lack of effort or focus. IP departments and their legal advisers work hard to ensure rights are registered, protected and managed proactively. However, modern businesses operate in fast-moving marketplaces and the legal requirements, procedures and formalities necessary to maintain IP rights do not always keep in step with these more dynamic commercial realities.  

Is your intellectual property portfolio clean and correct? 

Be honest: If your intellectual property portfolio has transitioned through several mergers, acquisitions and restructurings, as well as changes to internal personnel, external legal advisers and suppliers, it probably is not as ‘clean’ or up to date as it could or should be.  

Likewise, your marketing department has doubtlessly requested many registrations over the years for brand concepts that are no longer in use. For example, pay-off registrations, NFT applications, new brand names for products that are not top sellers…  

As a result, you may find yourself managing a portfolio of thousands of trademarks and designs without a 100% guarantee that your portfolio is covering the right activities. There may be redundant rights that could be lapsed, gaps in coverage that need to be fixed and out-of-date ownership data that needs to be corrected.  

You may be aware of such shortfalls and more yet lack the time to resolve them. After all, few busy IP departments have the time or luxury to take a break from their day-to-day activities to tackle such tasks. That’s not surprising given the time, focus and resources they require.  

Trademark portfolio analysis: How to get started 

Conducting a trademark portfolio audit is the first and critical step if you are to unlock the confidence and freedom of a ‘clean’ trademark portfolio, but, unfortunately, reviewing trademark portfolios is not always as simple as it sounds. You will have to double-check the data in your system directly with several patent and trademark offices (PTOs) around the world, making sure you’re not missing any information or checking inaccurate records. And that’s not all! In the countries where the PTOs are not digitalised, you will have to go in person or request your local counsel to do so, increasing costs and time.  

It doesn’t stop there, as the initial trademark analysis is only the first part of the process. Inevitably, there will also be remedial actions that need to be undertaken post-analysis, and it is these that tend to cause the biggest headaches for IP owners, especially if IP recordals are necessary to correct large numbers of inaccurately maintained trademark rights. And much like any cleaning project, the longer you delay the work, the more demanding it will be... 

Fortunately, the spring season offers the perfect opportunity to step back and breathe some fresh air into your portfolio. 

Experience the joy of a clean intellectual property portfolio  

Our combined team of Novagraaf attorneys and Questel subject matter experts can support you to centralise and streamline your portfolio audit and data cleaning project this quarter, removing the administrative responsibility and demands from your internal team. Irrespective of your filing countries, industry and markets of operation, we provide our trademark analysis in a comprehensive and actionable report in only four weeks. 

And we don’t only verify that your data is accurate. Our intellectual property portfolio gap analysis will also identify outlying rights and other inconsistencies for your attention; for example, potentially duplicate registrations or possible gaps in coverage. We can also assist you by helping to manage the necessary remedial actions, from cleaning up inaccurate data to international trademark filing and support and on-demand IP administrative services.   

Get ready for a new start this season 

Ultimately, the beauty of a spring clean extends far beyond data management. By ensuring your data is accurate, up-to-date and relevant to your commercial realities, you can also be sure you dedicate your resources to the right areas.   

Rather than wasting time on applications or spending your budget on maintaining rights that lack strategic value, you can increase your focus and resources on added-value activities and pivotal assets instead.  

Say goodbye to wasting your energy on an old and static intellectual property portfolio by contacting your Novagraaf attorney or Questel’s trademark subject matter experts today. 

About our guest contributor

Elena Galletti is Head of Trademark Services Architecture at Questel and a speaker at our 28 May webinar ‘When politics meets intellectual property’, where she will share practical insights on developing effective online brand protection strategies.

Before joining Questel, Elena was Vice President of Marketing at the Brandstock Group and, before that, General Counsel at the sportswear brand Franklin & Marshall.