The evolving role of Trademark Administrators

The evolving role of Trademark Administrators

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This week’s INTA Trademark Administrators and Practitioners meeting will see hundreds of trademark professionals from across the globe gather in Berlin to build their networks, share best practice and explore the latest trends affecting the industry… and to catch up with technology suppliers like WebTMS, of course!

Just a glance at the conference agenda gives a hint at the dynamic and fast-changing world in which trademark administrators work today. Topics includes a look at how artificial intelligence can be applied to the trademark space, the protection of non-traditional marks around the world and issues relating to genuine use of trademarks in the EU. It’s clear that managing trademark portfolios today requires a real breadth of skills and awareness.

Added to this, the trademark ecosystem is growing exponentially, with upwards of 75 million marks active worldwide and, according to WIPO, more than 9 million filings in 2017. Rates of infringement are rising and the proliferation of commerce across the limitless online and social media landscape means that this won’t change any time soon.

Trademark management in the digital age…

The trademark environment has accelerated enormously, and trademark administrators have had to adapt. Several members of the WebTMS team started out as trademark administrators – this is what gives them such a good understanding of client needs and how to support them – and we asked them to tell us how they feel the role has changed.

The main theme is of course the impact of digitisation, as Business Development Manager Nick March explains. “In a relatively short space of time, trademark management has advanced from a slow and manual paper-based process to a high speed, online approach where software tools bring the relevant trademark data directly to the desktop at the touch of a button. Gone are the days of paper records and faxed filings that were a feature of my early days in the business!”

Automation has lifted a huge amount of the administrative burden associated with tracking applications, advising clients on progress and creating reports. Now administrators can create hundreds of trademark records in seconds, drawing data directly from the relevant country databases with just a few clicks of a mouse. Key dates are automatically calculated and alerts set up within management systems, so the risks of missing them are significantly reduced.

Searchable country databases have also reduced the need to engage in-country counsel to check the status of applications and registrations, as portfolio managers can monitor them online and even conduct preliminary clearance searches. This facility is enabling even smaller firms and practitioners to expand their marks into more jurisdictions than before, as the barriers to doing so have become far lower. At the same time, this means that administrators need more of a global mindset, as they are likely to be handling multiple jurisdictions.

There are still some aspects of trademark management that are burdensome – undertaking a complete portfolio reconciliation for a client’s marks, for example. Nick explains: “This can involve thousands of records and hundreds of jurisdictions so it’s not a task to be taken lightly. Many companies will outsource this activity to a third party, which can be costly and still requires the reports to be minutely checked once they are delivered. The ability to automate this activity so it can be undertaken  in-house is certainly a development that would move trademark management forward.

Technology expertise and doing more with less

Our team is agreed that exceptional attention to detail, strong communication skills and organisational excellence are still prerequisites for the trademark administrator role, but the growing use of software tools means that they also need to be very technologically competent. Support and Training manager Christinne Wiss remarks: “Far more than previously, they have to be able to evaluate the merits of the different software tools so that they get the functions they need and are able to use them effectively. This means making a commitment to ongoing training to keep skills current and that takes time.”

Whether they’re working in-house at a brand-owning corporation or in a legal firm, trademark administrators are likely to be under pressure to become more efficient, productive and cut costs. This means keeping up to date with technology developments that could help achieve this and often making recommendations to senior colleagues.

Christinne adds: “What strikes me is how much more trademark administrators are asked to take on today, including a lot of client-facing work, which means they are very much part of the brand of the business they work for. It has evolved into a hugely responsible role and – even with tools to support them – they are increasingly asked to do more with fewer resources.”

Career-building opportunities

The greater responsibilities and wider skillsets involved in today’s trademark administrator roles mean it is common to see individuals building highly satisfying careers. As Nick explains: “I’m seeing a lot more trademark administrators using this as a pathway to becoming trademark attorneys, or building out their careers in other ways. The strong community that we see at events such as INTA’s TMAP is encouraging people to seize opportunities and invest in training so that they can progress in our exciting industry.

“Accreditations such as the Chartered Institute of Trademark Attorneys’ Paralegal course , as well as the many free training resources offered by WIPO, are encouraging administrators to invest in themselves and increase their knowledge base, leading to more career opportunities.”

Certainly, the role of trademark administrator has changed significantly and will continue evolving alongside the rest of the fast-moving intellectual property industry.