While IPfolio has become well known among innovative companies for our patent management functionality, we’ve spent the last two years improving trademark management functionality to eliminate the common pain points inherent in traditional IP Management systems that have long frustrated trademark professionals. We spoke with IPfolio VP of Solution Delivery Heather Fleener to discuss why IPfolio's new trademark management functionality will make trademark managers efficient and deliriously happy.
A Life in Trademarks
Before we dive into the details and you head off to Seattle for INTA 2018, what’s your background with trademarks and how did you end up at IPfolio?
Heather: I’ve worked in IP for nearly 20 years as a non-attorney trademark professional, doing almost every activity related to trademark management and brand development you could name. Having spent time on both law firm and in-house teams, I’ve had a lot of hands-on experience managing global trademark portfolios and have been blessed to work with some brilliant trademark attorneys and business executives. Gaining an understanding of the intersection of the creative, IP-generating business functions and IP legal operations has had a huge impact on how I work.
As a former trademark manager, I’ve lived with the pain most software vendors create for clients by giving them a patent management system which has been adapted only slightly to support trademarks.
So… within a few months of joining IPfolio in 2016, I hijacked one of our internal demo systems and began configuring the type of trademark management functionality I thought we should have. IPfolio is an organization that celebrates innovation and creativity so no one objected that I’d created my own trademark project. After I demonstrated it internally, it became a priority. Our product team continues to refine and evolve functionality to create the system I always needed but never had.
Limitations of Managing Trademarks in a Patent Management System
That’s an ideal introduction for starting our discussion, which really begins with the limitations in the marketplace.
Heather: Historically, IP management systems have been—in fact, still are—built around patents. But they don't really function to support the needs critical to business operations in the trademark world. Trademark managers face entirely different challenges, so what is important to them is much different than what is important to a patent portfolio manager.
Most IP management systems aren’t trademark friendly; they aren’t configurable to provide insight and visibility into trademark-specific data that is critical for companies to manage the relationship between trademark assets and brand management activities, for example.
The business functions supported by the trademark team are different from those supported by the patent team, and an IP Management system should be robust enough to support both. It's not simply a matter of terminology, you know, “Issue Date” versus “Registration Date” and things like that. The fact that the trademark lifespan can extend far beyond that of a patent introduces complexities that are too often overlooked by vendors in our industry.
Trademark practitioners have learned to live with the less-than-ideal solution. That model doesn’t work anymore. It is painful, antiquated and rather ridiculous. I really, really wanted to change the status quo because the trademark world deserves a robust platform based on 21st century technology too.
Applying Patent Software Design Principles to Trademark Management
How did the change start?
In IPfolio, you can manage all your IP assets in separate and distinct modules created just for each specific type of IP right. We call these distinct modules “objects.”
When we started developing the trademark-specific objects, we built on the same infrastructure we’d already successfully launched with patents. We wanted to make certain we were developing a system that could keep track of all the little bits and pieces that oftentimes fall through the cracks.
We looked beyond basic trademark management and into all of the related activities and matters which are required for end-to-end trademark lifecycle management; search & clearance, renewals & maintenance, enforcements, conflicts, contracts, assignments, 3rd party trademarks, licensing and customs recordations. We added objects for Copyrights and Domain Names too, because those are generally get lumped into the same module as Trademarks.
Our users can manage all of it in their own way, in separate objects, inside a single IPfolio system. From there, they can build relationships linking various types of records and activities together in a way that provides amazing visibility and insight into the entirety of the trademark portfolio.
Customizability Should Not be Expensive
IPfolio: Customization is frequently one of those unexpected and punitive gotchas in the software world. Isn’t it?
Absolutely. It’s unexpected, punitive, and expensive. In twenty years, I’ve not worked with any two clients who manage their IP in the exact same way. There are themes of similarity, obviously, but there are also huge differences.
Business isn’t static, and the ability to configure a custom solution for a client using the “clicks not code” methodology, which is fundamental to the Force.com platform, means our clients don’t have to conform their business operations due to the constraints of a rigid system. It also means that as the business grows and changes, our trademark solution can as well, without changes costing a fortune.
One of the things I ask my clients—particularly those who have really convoluted process requirements— is, “Are you working that way because of a specific business need, or because of the limitations of your current software?” That is often a huge lightbulb moment.
It's a really big deal to be able to provide a customizable trademark solution to support specific-business needs for our clients, using configuration, rather than code. It is faster, cleaner, and dramatically reduces the implementation time, so our clients begin to see a return-on-investment much quicker.
IPfolio for Trademarks: The Origin
Where did product development actually begin?
After completing the design of the new trademark object, we examined other functionality we’d already successfully implemented for patents. In IPfolio we have the Invention Disclosure Portal, a web-based portal for inventors to submit Invention Disclosures. It’s pretty great functionality and creates a lot of efficiencies for in-house legal teams. Inventors login, complete the invention disclosure form, and submit it. Boom, their IDF record is automatically created in the IPfolio system and the Invention Disclosure Review process begins.
Any trademark manager who has worked with a creative Marketing team would have had the same thought I did – “Wow, we can use the portal to manage trademark search requests." I knew we could use the portal for a lot of other things, such as infringement reporting or marketing review requests, but trademark search was a big opportunity to improve what is generally an inefficient and unwieldy process for many companies.
Trademark Search & Clearance Made Easy
How did you fix it?
We transformed our Invention Disclosure Portal into the “IP Portal” and it now supports both invention disclosure submissions and trademark search requests. I love showing it to clients.
Marketing and business development people are always creating new product names, trademarks, taglines and slogans—sometimes very, very long lists of them—for clearance. From the legal side, managing the review, clearance, and reporting can be a huge pain point.
Instead of receiving lists of trademarks via email or in an MS Word template, the IP portal allows business users to submit the trademark search request with all the required details—on a page completely customized by the client—creating the Search record in IPfolio upon Submission. The long list of names can be captured as individually entries, to allow for the management of the clearance process for each individual proposed trademark, if needed.
Does outside counsel pitch in here?
Sometimes. It depends on the client’s needs, and how the process is configured internally. We have standard functionality which can be easily adapted to support how the client works. Some companies do everything in house. Some may perform a knock-out search internally and then send a preliminary search request to their outside counsel, or directly to a search vendor.
What we’ve done with trademark search requests—and with trademarks in general—is create maximum flexibility. For example, a client can send the search request to outside counsel or have outside counsel to come in, review the request, and then upload the results directly into the trademark search record, IPfolio supports whatever model the client needs.
What makes the trademark clearance process so different with IPfolio?
Access, transparency and efficiency. Marketing and business people can log in, create a search request, and provide all the details in one form for everything they need. It is then automatically created in IPfolio, with all of the back and forth managed using “Quick Action” functionality to send requests for more information back to the business user, and streamline notifications to the legal team.
The same business people can easily log back into the IP Portal and check the status of their trademark searches. The never-ending “Is it done yet?" emails are eliminated. Communication is streamlined and you eliminate manual processes by granting visibility to business users.
When we catch up with Heather returns after her INTA adventure, we'll complete our discussion of how IPfolio's has evolved to become a massive problem-solver for trademark management.