You’ve invested time, energy and resources, but as little as 15% of the trademarks you own could actually be of strategic and commercial value to your business. It’s time to declutter your portfolio, says CPA’s Brigitta Best

Brigitta Best, CPA’s director and head of trademarks, knows a thing or two about the trademark industry. Before joining CPA she worked for another well-established IP service provider and has directed the growth of Avantiq, an independently owned, global trademark search service, into one of the bestesteemed trademark search providers in the industry in the last 13 years.

However, for Brigitta, the management of a streamlined trademark portfolio is no different to organising a wardrobe. ‘You have clothes you no longer wear, but you paid a lot for them and you think, well maybe I’ll need them again one day, so you just keep them there. And then one day, you run out of space, so you make the decision to down-size.’

Of course, she says, it’s not that legal departments are running out of space. It’s something far more fundamental and cultural: ‘In the past, nobody used to question when companies had huge trademark portfolios,’ says Brigitta. ‘In fact, the size of a trademark portfolio used to be the pride of the trademark department, and it was a natural cause of events for many trademarks to be renewed without measuring their value for the business. And yet, in an average trademark portfolio, only about 15% of registered marks are actually commercially or strategically important to that business.’

But those times of repeat renewal are now over, she says: ‘We are witnessing a  new drive for efficiency and, as a result, the whole industry is changing.’

Strategically thinking
In fact, it is this drive for efficiency that has seen the most noticeable effect on the trademark industry in recent years, rather than any fears about the impending recession. ‘I’ve been in the trademark industry for over 20 years, so I’ve been through a couple of recessions,’ laughs Brigitta. ‘Companies understand the need to protect their assets no matter the current state of the marketplace, so the impact is usually slim.’

Having said that, there is a huge move in the trademark industry towards efficiency, she says. It’s a trend that some IP specialists saw coming five years ago, but according to Brigitta it is only now coming into full bloom. ‘Overall, there’s a need to manage trademark assets in a more efficient, productive and measurable way,’ she explains. ‘Part of that is because many companies are now owned by their shareholders, but it also reflects a wider move towards value and return. Companies understand the need to squeeze every penny of value whenever they can and that includes IP.

‘CEOs and CFOs are beginning to ask: “Why do we need so many trademarks?”; “What are they costing us?”; “How many do we actually use?”; and “How many are commercially or strategically important to the company?”. Trademark departments need to have an answer to those questions.’

If you think about the way that products get named, it’s easy to establish why so much dead wood can exist in an organisation’s trademark portfolio. ‘The name finding process for new products and services is lengthy and expensive, sometimes hundreds of candidates are created and presented to the marketing department who pass the most favoured names to the legal departments for clearance,’ says Brigitta.

‘CEOs are beginning to ask: “Why do we need so many trademarks?”; “What are they costing us?”; “How many do we use?”’
-Brigitta Best

Once the candidates which are legally available and most liked are identified, they often will be filed, as the more you expose prospective names to the outside world, the more likely they will be discovered by competitors. ‘It is not uncommon for companies to shortlist 10- 30 names and file them all, even though only one will ultimately be used.’

For Brigitta, there are generally two types of trademarks at this stage: firstly those that are strategically necessary to ringfence what she calls the ‘Queen Bee’, which is to say the practice of filing similar names around the favoured name, so that the competition doesn’t find out which name you’re planning to use, as well as similar-sounding names that will ensure it is differentiated in the marketplace. Secondly, those other candidates that were liked by marketing and kept as additional candidates in case the favourite is not available, but will most probably never be used.

And, as Brigitta explains, it can take years before a trademark is adopted and used, during which time a company’s legal department has invested time, energy and money in protecting the shortlisted names: ‘It will have filed the names, taken them through the opposition period and fought for ownership, even though it doesn’t know which ones will ultimately be used,’ she says. ‘The question then is what to do with the others. The legal department thinks these names should be used for other projects; after all, they’ve done all the hard work. But what is fashionable today won’t be in five years time, so that is rarely – if ever – the case.’

Honing in on value
Nonetheless, it’s important for companies to audit their trademark portfolios to differentiate between those marks that are strategically and commercially important, and those that are simply unused residue from product brainstorms. And, for Brigitta, that’s one of the areas where CPA can help its clients.

‘A lot can happen in the life of a trademark and its caretakers,’ she says. ‘Department heads and staff come and go, and if you don’t know whether a mark is of importance it is just safer to renew what already exists. Add to that busy workloads and pressure from above to cut costs and headcounts, and forward looking IP management can seem an impossible task. But legal departments are now very much aware of the need to keep trademark portfolios slim, says Brigitta. ‘They have to justify to CEOs the budget necessary to manage it and its value to the company. CPA’s consultative services can help clients to save time and money by optimising their daily operations, so that the cuts aren’t forced on them, but are led by them instead.’

Indeed, for Brigitta, this is one of the biggest benefits CPA can bring: ‘We have the advantage of having seen many clients through this process already,’ she says. ‘We know what works and what doesn’t for individual businesses. That’s what I love so much about my role: you are part of the overall industry development.’


This article first appeared in IP Review, issue 23

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