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In-House Counsel

: Law Department Management

A trademark of this blog, metaposts, and here is one on trademarks

By Rees Morrison

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The importance to companies of their brands and trade protections is evident (See my post of May 27, 2008: intangibles like trademarks account for 1/3rd of value of companies; Aug. 14, 2005: 248,000 new applications for trademarks filed with the U.S. PTO in 2004; May 28, 2005: online applications for US marks; July 31, 2005: European trademark applications and electronic filing; Sept. 22, 2005: trademarks play second fiddle to patents; Nov. 27, 2005: International Trademark Association; Nov. 28, 2005: auctions for trademarks; March 29, 2009: IP review boards cover trademarks; Feb. 19, 2009: IP team at Bosch and its TM specialists; and Feb. 19, 2009: IP at Phillips.).

Naturally, many of the posts have to do with law firms that serve as trademark counsel (See my post of Nov. 30, 2005: CPA and its global network of trademark firms; April 10, 2006: whether to count foreign trademark associates as external counsel; Aug. 21, 2005: large numbers of foreign trademark counsel; Aug. 7, 2007: many international matters involve trademark local counsel; and July 13, 2008 #: Tampico Beverages and consolidation of trademark firms.).

Trademark litigation registers on this blog (See my post of Dec. 31, 2006: odds are even for defendants in trademark litigation; Jan. 16, 2006: more data on trademark outcomes; April 9, 2006: metrics on number of trademark lawsuits; and June 11, 2007: rise in trademark litigation.).

Another slug of posts provide information about trademark costs (See my post of March 7, 2007: $1,200 per trademark renewal at TRW; April 22, 2007: development of UTBMS codes for trademark services; Sept. 9, 2008: should legal department budget include trademark costs; March 13, 2008: high pay for trademark litigators; Feb. 20, 2008: inexpensive internet survey to prove brand confusion; and March 5, 2009: percentage spent by EMEA companies on governmental IP costs.).

The cottage industry that sustains trademark services is large (See my post of Dec. 12, 2007: percentage of trademark work sent offshore; Oct. 9, 2007: offshoring trademark work; July 21, 2008: vendors that monitor how much is paid for trademark services; and Jan. 21, 2009: online compilation of TM-related vendors.).

To help legal departments manage their trademark portfolios, a number of software applications are on offer (See my post of May 1, 2005: specialized databases to track TM information; May 20, 2005: Anaqua as joint development effort; Feb. 4, 2007 on Honeywell and its patent and trademark databases; and Feb. 15, 2009: specialized IP databases and vendors.).

Full post as published by Law Department Management on August 19, 2009 (boomark / email).

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