Mastering the renewals merry-go-round

WIPR reports on a selection of the world’s trademark renewal services, which are crucial tools for allowing companies to prune and protect their portfolios.

Thursday, May 17, 2018
World IP Review

Trademarks play a crucial role in establishing and protecting a brand’s identity in today’s competitive market, so it’s vital for businesses to know when and how to renew and maintain their rights. Many opt for a professional service provider, which will do the work for them (at a price, of course). 

With this in mind, WIPR spoke to a selection of providers and asked them to give us a rundown of what their services offer. We have also included user commentary where we have obtained it, and have provided shorter descriptions where client comments were unavailable.

 

CPA GLOBAL: The time-saver

CPA Global says it offers a flexible range of trademark renewals solutions that include technology and services.

It delivers “total peace of mind” with more than 50 trademark renewal professionals and customer service centres located around the world, according to the company.

A proprietary engine is used to calculate and validate important due dates, identifying and reporting data discrepancies to customers to ensure accuracy. In addition, CPA Global can deal with assignments, mergers, changes of name, address and/or legal entity at the point of renewal.

The features of the service include flexible renewal reminders detailing renewal costs, and multiple reporting frequencies (eg, annually, quarterly, or monthly) tailored to the client’s needs.

With the “trademark renewals on-demand” service, customers can transition a single year’s worth of trademark renewal data to CPA Global, which produces “better predictability of costs in trademark maintenance activity and reduced risk in the process”.

CPA Global says it provides upfront costs for trademark renewals, passes on competitively negotiated agent rates, and pays patent and trademark offices directly in jurisdictions where possible.

Molly Quong, legal support services manager at biotech company Thermo Fisher Scientific, says she chose CPA Global for trademark renewals because it had the best services available that fit the company’s needs.

“We feel we received a reasonable rate because of the size of our portfolio. We also know that CPA handles large portfolios like ours, so it was reassuring to have someone with experience working with our renewals,” she says.

"I LIKE THAT I HAVE ONE PERSON AT CPA GLOBAL WHO HELPS ME NAVIGATE THROUGH ALL OUR RENEWALS. THE SERVICE IS VERY PERSONALISED."

Quong says she likes having all the renewals going through one vendor instead of various outside counsel, adding: “I can ask one person all my renewal questions—this frees up a lot of email space for me and saves time. I like that I have one person at CPA Global who helps me navigate through all our renewals. The service is very personalised.”

Asked about the advice she would give to others considering CPA Global’s trademark renewal services, Quong says to “ask a lot of questions”, while reiterating that “having to go through one entity instead of many has its advantages, especially if you have a large portfolio”.

DENNEMEYER: A worthy contender on the market

Founded as a patent law firm in Luxembourg, the Dennemeyer Group developed the DIAMS iQ system as a flexible solution for trademark management and other IP assets. It manages the entire lifecycle of IP rights from filing to prosecution and controlling.

The system is compatible with existing IT infrastructures and has a secure interface that gives clients the freedom to access their IP portfolios 24/7 from any remote location, says the company.

DIAMS iQ provides efficient and smooth portfolio management, quick docketing, accurate data retrieval and numerous reporting options. Dennemeyer’s trademark software provides a flexible solution with automated administrative processes and a modular design at transparent costs with high security standards.

Mirjam Gut, IP paralegal at world football governing body FIFA, says that DIAMS iQ provides a fast, modern and easy tool that efficiently manages its sizeable trademark portfolio.

“We need a web-based database we can access from any remote location and to be able to send data directly from it,” she explains.

Gut says that some of the highlights of the software are the overview of data when opening 
a record; the document and workflow management system (including the document storage in the individual recorders and renewal process); and the personalised actions and events diary.

She also says that direct access to selected databases of trademark offices facilitates a quick, real-time status check of a trademark.

“Since introducing DIAMS iQ, the handling of both tool and portfolio has become more structured,” Gut says.

DIAMS iQ allows FIFA to enter more information into the database and provides a quick and easy overview of its records.

“We can quickly set up and pull reports,” comments Gut. “Remote accessibility makes our workflow quicker and information can be shared more quickly with our counsels as well as in our team.”

While DIAMS iQ has helped to streamline FIFA’s trademark management, Gut does note that a better search functionality and more administrators’ rights would be welcome.

Describing the service as “a worthy contender” in the IP database market, Gut concludes that the software is “an appreciated exoneration from a heavy workload”.

"IT IS VERY CONVENIENT TO AUTOMATICALLY RECEIVE A LIST WITH THE RENEWALS DUE, TOGETHER WITH THE NECESSARY DOCUMENTS TO EXECUTE."

“It is very convenient to automatically receive a list with the renewals due, together with the necessary documents to execute. The effective instruction procedure is easy and we need neither to upload the renewal documents nor enter any renewal dates any more since this is done automatically.”

MARKIFY: A highly accurate algorithm

Launched in 2010, Markify is a trademark search algorithm created by a group of mathematicians, linguists and computer scientists.

Markify offers full trademark search reports; a trademark search platform; full trademark watch; bulk identical watch; domain watch and application programming interface services, says the company.

All reports can be downloaded in any format and branded, with results being ranked according to relevance, thereby saving time for the user.

The full trademark search mark finds “all” (more than 99%) confusingly similar trademarks on a global level. Including all state marks and common law, the search is available for $129 per report.

Miguel Danielson, founder and managing member of Danielson Legal, says that Markify is “the best trademark software we have come across on the market”. “We have done quite a lot of comparison shopping among algorithm-based search providers and found that Markify is the best performer,” says Danielson.

“Their searches are consistently the highest quality from any vendor that does not utilise human search strategies. For the price, Markify’s search products can’t be beaten.”

Danielson adds that Markify’s fast turnaround time, low cost and quality performance “make it a great product for doing our clearance searches”.

“ASK YOURSELF WHETHER THE SERVICE YOU ARE CURRENTLY USING IS TRULY COMPETITIVE ON PRICE AND WHETHER THEIR RESULTS CAN’T BE IMPROVED UPON.”

 

For potential customers considering Markify’s trademark services, Danielson advises that they should give it a try.

“Ask yourself whether the service you are currently using is truly competitive on price and whether their results can’t be improved upon.”

PATRIX: Complete transparency on exchange rates and fees

Patricia, Patrix’s trademark and patent software solution service, is an all-inclusive IP case management system that has been in operation for over 20 years.

The trademark software management service can manage and process trademark renewal payments for its users. This allows Patrix to harmonise its systems with electronic communication, transfer and update of case data, says the company.

Patrix claims to have a different approach from other renewal providers, offering “best in industry” pricing by offering “fair exchange rates”. The trademark management system gives clients back credit if Patrix makes too much from foreign exchange rates, allowing customers to benefit from cost savings.

Its philosophy is to offer complete transparency on exchange rates and service fees. According to the company, this allows clients to know exactly where their investment is going. Additionally, customers benefit from the use of paperless communication in the form of instructions and all related documentations and receipts.

IP investments are safeguarded for years. Clients also profit from zero upgrade fees and full transparency on costs. 

One anonymous user said that after two decades working in IP, Patricia is the best IP docketing software she has used.

“Patricia’s workflows are exactly like the day-to-day activities, whether you are working in a law firm or corporate law department,” she says.

“The database is customisable which enables clients to docket items in accordance with the firm’s or department’s docketing procedures. The system includes country law updates which are easily downloaded from Patrix’s website.

"THE SYSTEM INCLUDES COUNTRY LAW UPDATES WHICH ARE EASILY DOWNLOADED FROM PATRIX’S WEBSITE."

“In addition, Patrix’s IP Annuity Service handles all our annuities due with a one-step setting to enable Patrix to know which cases should be paid or not.”

She adds that the electronic information exchange, coupled with annuity receipts imported into the corresponding case, means that “they are not thrown away or left in a drawer for filing”.

An area of Patricia that, she says, could be developed is the reporting function.

“Sometimes it seems it can be difficult to extract the information in the front end because a report needs to be created first,” the respondent suggests.

Another user says: “Patricia’s flexibility is what makes it different; it has allowed us to adapt the software to meet most of our customers’ needs and demands.”

He agrees that the reporting is a feature that is not as easy to use or design from scratch.

ANAQUA: Reducing risk for clients

Anaqua strives to make the renewal of trademarks a smoother process by effectively managing deadlines, as well as assisting clients with their pruning and renewal projects, says the company.

The service follows a well-defined methodology for managing trademark renewals. In an effort to simplify the renewal process and reduce the risk of missing dates, Anaqua’s payment services portal provides users with full service trademark renewal management from the time a mark enters into its system through its renewal cycles.

According to the company, Anaqua sticks to a process that reduces risk and ensures client awareness of the status of their trademarks. Each client is walked through the necessary steps for defining, configuring and loading data. The customer’s specific needs are considered by Anaqua when finalising the process.

"A BUSINESS ANALYST, WHOSE JOB IT IS TO ANALYSE THE TRADEMARK PORTFOLIO, IS ASSIGNED TO EACH CUSTOMER."

A business analyst, whose job it is to analyse the trademark portfolio, is assigned to each customer. This results in a better understating of the portfolio and the renewal timeframe for each trademark.

Once the details of the portfolio are agreed, the trademarks are imported into a management system. When a trademark is due for renewal, a renewal reminder is sent. The client’s requirements determine the timing of the renewal notice.

Anaqua will pay the trademark maintenance around the 20th of each month for the following month.

The firm also tracks all filing receipts and renewal certificates to ensure timely filing of the renewal. The documents are examined after receipt to ensure they comply with Anaqua’s management system data formats and imported into the system. Original documents are provided to the client quarterly or kept secure until requested.

In March, Anaqua announced that it entered into a multi-year agreement with McDonald’s Corporation to use its trademark management software.

The fast food chain’s IP portfolio consists of over 10,000 active trademark applications and registrations. Anaqua’s services will help McDonald’s manage trademark prosecution, enforcement and other related activities.

Speaking of the announcement, Bob Romeo, CEO of Anaqua, said: “McDonald’s and its trademark operations and related legal matters will be fully supported with Anaqua’s state of the art software.”

BRANDSTOCK: A freedom-to-operate focus

Brandstock provides a modern, efficient renewals service focused on reducing costs, increasing transparency and minimising administrative burdens associated with trademark renewals worldwide.

The service includes data transfer to its platform, a project leader to handle transition and ongoing delivery, flexible invoicing options and data migration back into the client’s docketing system. A 24/7 online portal for monitoring progress and downloading documents such as filing confirmations and certificates allows clients to maintain control and visibility at all times.

Pricing is based on three components: local patent and trademark office (PTO) fees, in-country professional fees and a fixed Brandstock handling fee per renewal.

"SAVINGS ARE SUBSTANTIAL COMPARED TO INSTRUCTING THE GLOBAL LAW FIRMS IN-HOUSE OR INDEED DELEGATING TO A LAW FIRM TO MANAGE."

Brandstock maintains a database of verified PTO fees to ensure correct fees are charged. The company says its pricing agreements within its law firm network ensure significant savings on professional fees as well. “Savings are substantial compared to instructing the global law firms in-house or indeed delegating to a law firm to manage,” the company claims.

CLARIVATE: A freedom-to-operate focus

Headquartered in the US, Clarivate Analytics sells itself on understanding the importance of clients’ ability to maintain their own freedom to operate on an international level while protecting their brands and assets.

"ITS IP PAYMENTS SERVICE IS A FLEXIBLE TOOL THAT HELPS CLIENTS MEET BUSINESS REQUIREMENTS."

Its IP payments service is a flexible tool that helps clients meet business requirements, with payment experts in place to use their trademark management experience in a wide range of industries, says the company. This helps customers to keep up with renewals, maintenance fees and other formalities.

The Clarivate system includes the IP Rules engine, which allows for consistency, accuracy and seamlessness between the software and payment services.

IPAN: Next generation of IP services

Founded in Germany in 2004, ipan prides itself on representing the “next generation of IP services and software”.

The firm has a global partner network of 100 law firms in 240 countries and has a mission statement of advancing the industry providing a complete IP service and software experience.

Ipan encourages its clients to focus on innovation, as opposed to the administration side of the business. Users of the software are given a single point of contact, a strategy that streamlines the workflow. This also means clients will need fewer resources, resulting in cost savings, says the company.

"IPAN’S TRADEMARK RENEWAL SOFTWARE CAN ELECTRONICALLY INTERFACE WITH A MANAGEMENT SYSTEM."

Its global network is achieved through an international partnership with experienced law firms. Ipan’s trademark renewal software can electronically interface with a management system, eliminating manual tasks and improving accuracy.

With more than two million IP rights under its management, ipan is considered to be one of the larger IP service and software providers.