The Outsource Decision: Key Considerations When Optimizing Trademark Renewal Operations

For trademark portfolios with hundreds or thousands of marks registered in jurisdictions around the world, keeping up with renewals is a complex task with significant risk potential. Missing a renewal deadline can be catastrophic. This mistake can potentially lead to the loss of trademark rights in one or more jurisdictions or classes. Even in the best case, it may require re-registration—a costly, time-consuming process.

That is why many corporate legal departments and law firms have invested in personnel and systems to manage the renewal process. However, is that the most efficient and effective way to meet the challenge? When trademark renewals eat into your team’s valuable time, you may need to consider outsourcing the administrative burden.

Lots of moving parts

Consider all the factors involved in managing trademark renewals. In addition to keeping track of deadlines, in-house teams need to stay up to date on changing local fees, evolving laws and regulations for dozens or even hundreds of jurisdictions. They need to manage local agents operating around the world in different languages. Plus, they need to handle payment of agent and trademark office fees in a variety of currencies, making sure to pay on time.

These tasks add up to a significant administrative burden that diverts paralegals and attorneys from other activities—like making strategic decisions about which trademarks to renew, in which jurisdictions, and in which goods and services classifications.

The outsource decision

Outsourcing trademark renewals to a service partner can alleviate that administrative burden, freeing in-house professionals to focus on strategic tasks. Given the critical nature of trademark rights, corporate IP and law firm professionals should ask pointed questions about any prospective service provider:

  1. Do they have the expertise and experience to manage all renewal tasks, including more complex power of attorney (POA) and evidence of use (EOU) requirements?
  2. Do they have a well-established process for requirements management, with automated tools to maximize efficiency? Do they have processes in place to ensure accuracy and manage risk?
  3. Do they have a global network of vetted local agents that covers jurisdictions worldwide? Will they work with your preferred agents?
  4. Will they provide clear, transparent, and reliable pricing—and are their costs competitive?
  5. Will you receive a high level of service and attention? Will the service provider conform to your needs and preferences, rather than the other way around?

In summary, does the provider have the capabilities, resources, and commitment to help ensure your valuable trademark rights are renewed on time and on budget, so your team can focus on critical business priorities?

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A partner you can trust

With Clarivate™ the answer to these questions is a resounding “yes.” We offer a comprehensive solution for trademark renewals designed to safeguard your rights, while maximizing efficiency. We are uniquely qualified to optimize the renewal process with:

  • Unmatched trademark expertise and support. With more than 50 years of experience and a team of 200+ in 12 countries, Clarivate has the resources to handle renewals for even the largest global trademark portfolios.
  • Quality and accuracy assurance. Our data verification team manually verifies any discrepancies in public records. We have the world’s largest IP laws team that monitors thousands of renewal laws worldwide to help ensure compliance. Our comprehensive liability insurance minimizes the risk of costly errors.
  • Global agent network. Our global network of 2,000+ local agents enables us to handle renewals around the world. Plus, our negotiated agent contracts give us preferred pricing. Have agents you like in key jurisdictions? We’re happy to work with them.
  • Cost efficiencies. Our well-established processes, automated systems, and economies of scale enable us to maximize efficiency, resulting in highly competitive pricing for services.
  • Customized solution. We tailor our service around your needs, with flexible reminders and invoice settings. We handle all payments, so you receive a consolidated invoice in the currency of your choice, plus customized reports to simplify budget management.
  • Superlative service. A dedicated account manager is assigned to coordinate services and ensure your needs are met. Our Client Service Portal offers easy access to your portfolio, providing a 360-degree view and the ability to easily share case data with your IP team.

Some of the world’s leading brands entrust their trademark renewals to Clarivate. They recognize the value of having a trusted service partner who can alleviate resource strain, freeing up their own internal talent to focus on strategic priorities, secure in the knowledge that their trademark rights are in good hands.

Is it time to rethink your trademark renewal strategy? Contact us today to discuss how Clarivate can help.