Owning more than one trademark registration means having a portfolio of intellectual property assets. A trademark portfolio may comprise registered trademarks and service marks, as well as marks that are in use but not necessarily registered. At the same time trademark licenses or assignments as part of franchise agreements, co-branding agreements and other commercial transactions, will also form part of the portfolio.

Own several trademarks and looking for best way to manage them?

If the answer is YES then our Trademark Portfolio Management Service is not one to be dismissed and we would be delighted to work with you.

This is a commercially aware service that we provide to our clients to protect and oversee their International IP portfolios.  The portfolios we look after nearly always include more than just Trade Marks.  We are entrusted with these portfolios due to our expertise as a boutique IP law firm.

We pride ourselves on delivering a superior service.  Virtuoso’s award winning solicitors offer the highest level of professional support.  Any portfolio matter we handle is assigned to a Senior IP expert within our team.

With an excellent track record of assisting clients in healthcare, retail and education and also supporting in-house legal departments we are able to take a unique approach when taking over any portfolio. We are committed to preserving, protecting and adding value to your trade mark portfolio.  We always consider your present and future business needs, for instance by highlighting other areas for you to think about for your business development.  We take the risky and sometimes confusing burden away from you and carefully employ the best trade mark management strategies. This optimizes your brand value and gives peace of mind.

Benefits of Trademark portfolio management

Trademark portfolio management allows an effective consultation and maintenance of all your trademarks. This service, provided by our team, includes several advantages, such as having a dedicated account manager monitoring your processes in the customer area or defining the best strategy for representing, maintaining, and legally protecting your trademarks. 

With our service we make sure that your portfolio is in good order, we ensure correct ownership, registrations, renewals, recording assignments, watching and that enforcement action are carried out promptly and efficiently, and we also take care that the trademark related rights do not lapse as a result of non-use.

Trademark portfolio management involves as well periodically assessing the status of the assets in the portfolio, which can be done through an audit, as well as developing strategies that address how intellectual property rights are acquired, exploited, enforced and maintained, in order to maximize their value to the business.

Best Practices for Trademark Portfolio Management

A comprehensive trademark portfolio management strategy not only includes securing rights through registration, but also includes a well-designed enforcement program. This includes monitoring the registration activities of third parties and taking necessary action through trademark cancellation and opposition proceedings to ensure continued protection of trademarks and brands. And even when steps are taken to avoid conflict when registering a company’s trademarks, another party could object to such registration through a trademark opposition or trademark cancellation proceeding.

Our attorneys are adept in the handling of domestic and international trademark oppositions, cancellations, and related trademark administrative proceedings. Our understanding of the specific procedures in each venue put us in a strong position to help protect and preserve our clients’ intellectual property rights.

Managing a trademark portfolio continues to present unique and often complex challenges for inhouse counsel and trademark administrators.  Professional organizations provide excellent networking opportunities and educational materials for in-house personnel to share best practices to help make their jobs easier.  In addition, outside trademark counsel often can provide valuable insight based on their wealth of real-world experiences.

With this in mind, here are some effective trademark portfolio management strategies worth repeating:

Be a Valued Partner

The best trademark counsel and trademark administrators are the ones that have an open and transparent line of communications with their clients.  Most in-house trademark professionals have great relations with their product development and marketing teams. They educate them on the importance of trademark protection, and listen to their needs and concerns to help ensure that the company’s intellectual property investments are secured in a timely and cost-effective manner.

Create a Trademark Enforcement Plan

Surprisingly, many attorneys, both in-house and outside trademark counsel, can not adequately articulate the factors that they take into account when deciding how and when to enforce the client’s trademark rights.  Such factors, where possible, should be determined in advanced as part of an overall proactive trademark monitoring and enforcement plan, so as to avoid any surprises as to why a certain decision was made or not made concerning the trademark portfolio.

Remain Flexible

Attorneys can learn a lot from their business colleagues.  While a company’s trademark portfolio strategies, once approved, for the most part remain constant, the tactics to achieve the company’s brand enforcement goals should be open to fine-tuning and recalibration based on predetermined legal and economic preferences and outcomes.

By keeping in mind the above tips, trademark portfolio managers will better serve their companies and foster better relationships that are based on cooperation and mutual respect of all internal and external trademark team partners.

If problems arise, we have a solid understanding of Opposition, Revocation and Invalidity proceedings in the Trade Mark Office. Our comprehensive strategy helps you to make an immediate decision and help us help you to protect the registrations. As portfolio management professionals we pride ourselves on being pro-active and always thinking outside the box to help our clients recognise their potential. For example we identify gaps in your portfolio and highlight other potential avenues/ markets and opportunities for you to explore thereby adding value to the business.

If you have any inquiry regarding Trademark portfolio management in China, please do not hesitate to contact our China trademark lawyers for preliminary free advice.