Brand Protection Today Article 3: Managing Your Brand Protection Program (aka How to Avoid the Budgetary Black Hole)
Brand Protection Today – A Series from InfoLawGroup
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Brand Protection Today
Article 3: Managing Your Brand Protection Program
(aka How to Avoid the Budgetary Black Hole)
by Rosanne Yang
We talked previously about how to choose your brand wisely in Article 1 of our Brand Protection Today series as well as the basics around why to monitor for infringement of your brand and tools available to do that in Article 2. We observed that with all the tools out there, a brand protection program could easily become a budgetary black hole. And that brings us to our topic for today, which is how to approach your brand protection program in a way that makes sense for your company and your budget.
There is no one right way, and each company’s needs are going to be a little different. But the one thing every company has in common is that in order to maximize your efforts and minimize your risk of going over budget or making unfounded claims that lead to liability for your company, there should be a clearly defined approach that the company is aligned on. The approach should consider a variety of elements including who participates, how it is funded, what the problems are, what the scope of inquiry should be, and alternative approaches that might fit your situation better. Let’s address each in a little more detail.
Identify the Team
In some organizations the brand protection program is assigned to a single department or person. Often that rests with the legal department, but it also can rest with loss prevention, information security or IT, marketing, the PR/communications team, or even with the quality assurance department. In other organizations, there are uncoordinated efforts based on interests and abilities – lawyers look at trademark filings; marketing looks at social media; information security/IT looks at domain names; and quality assurance looks at the manufacturing facilities and their controls. In still others, brand protection falls to the person who recognizes the need (or doesn’t run away fast enough), regardless of their position in the company. These arrangements can all work, but there are shortcomings to be aware of. In the first type of arrangement, important perspectives and resources can be inadvertently left out. In the second and third, important information can be missing (not known and/or not shared). In-fighting about who does or should have the authority in any given circumstance is commonplace.
It is important to remember that each of these areas of the business has valuable insights on what is or is not important to look at, as well as what is or is not an issue that should be pursued, and at the same time each one individually rarely has all the information necessary to make a decision. All too often a company finds itself trying to talk its way out of a lawsuit or PR problem because a well-intentioned employee has taken action against someone the company already has a co-existence agreement with or takes aim at a business that actually has senior rights or a fair use defense.
Therefore, the best way to approach your brand protection program is to make sure that all the interests are represented in designing the program and in decision-making. That could take the form of a committee that together charts the course for brand monitoring, or it could just be a checklist of specific people to check with – or topics to explore – before settling in on a strategy.
Just be sure that your team includes an attorney experienced in intellectual property law. IP law can be highly nuanced, and there are a lot of misconceptions about what is and is not actionable. Having an IP attorney in-house or outside as a key member of the team can significantly mitigate the risk of making a claim improperly, which claims can result in unnecessary expense and liability to the company. (We will talk more about enforcement considerations next week!) Outside counsel especially can help with benchmarking on tools and solutions based on their experience with other clients.
Identify the Budget/Resources
The great news about assembling a team is the side effect of identifying more dollars that are available for the budget and/or resources that are already in use. For instance, if you want the legal department or outside counsel to monitor social media, know that many marketing departments and PR departments already are using tools that do just that. They are watching for different things perhaps, but there is no need to pay for a second tool when something already in use will do the job. It may be trivial to add a user to the tool or train someone who is already using the tool on what to look out for. Or perhaps the information security team has a large budget and won’t mind allocating some of it to domain name monitoring since they have interests to protect there too.
The finance team can also be of great assistance here too, so do not forget to take them as a partner in this. With a view to everyone’s budgets, they may be able to help navigate internal politics and identify where dollars can – or cannot – be found for brand protection.
Prioritize What Matters Most
You cannot protect against all things at all times, and any company is going to have a limited budget regardless of how big or small they are, or how many team budgets they can tap for assistance. So, the next thing is to prioritize what the largest risks are likely to be, and put your available dollars, time, and resources there. If you are a financial services company, domain names that can be used for phishing are likely to be more important than whether someone is selling t-shirts with your brand on them via an online marketplace. If your business is an app-based service, you likely want to make reviewing the app stores a central feature of your brand protection program.
You can also prioritize competitors, which may be worthwhile especially if it is a contentious or fast-changing industry, and watch what they are doing that might impact your brand.
Define Scope
Many monitoring tools have some level of scoping involved, and you should be sure to tailor your efforts to your needs. For instance, if you are a U.S.-based business with no intention of ever manufacturing or selling outside the United States, a trademark watch service focused only on the U.S. Patent and Trademark Office, and maybe the state trademark registries, may be enough. If you, on the other hand, are engaged in the global distribution of products, you probably want to be watching all the trademark registers around the world.
As a corollary, be sure that you select monitoring tools that cover your defined scope. Not all social media monitoring services, for example, cover all platforms, so you may miss the ones you are particularly concerned about.
Consider One-Time Surveys
If you are not sure how much of a problem you have in a particular area, consider the idea of doing a one-time or short term market survey to see whether there is a problem there and how big it is. For instance, maybe you don’t think you have a counterfeiting problem, but a survey of online marketplaces might reveal that you do. Service providers may have a practice of giving an initial survey report for free – a kind of try before you buy type of thing – and that could be useful for these one-time surveys.
You could also use annual or semi-annual surveys if you don’t want to have ongoing monitoring, for instance due to the time commitment or cost.
Measure Effectiveness
This one is tough. You could go years watching the trademark registries without finding any trademark application that you need to oppose, and then – boom! – the big one comes through, and if you are not watching you will miss it. Because the governmental recognition of trademark rights confers legal benefits, it is rarely wise to take your eyes off that ball completely.
It might be easier for other types of services, though. For instance, if you are paying for a domain name watch service but it is not providing actionable data or your list of things to check on again later becomes unwieldy, you may not want to continue that service. Or, that marketplace watch service may be finding tons of people legally re-selling items they purchased, but not so many counterfeits or stolen goods.
If a tool is not working for you, there is no reason to keep on paying for it and spending your valuable time to review its lackluster findings.
Revisit the Approach Regularly
Everything changes over time – markets, business direction, internal organization, and monitoring services – and the approach you decided on a couple of years ago may have grown less effective with these changes, or there could be better tools now available to make the program more effective. Be sure to tap all your team members for feedback on the existing program and ideas for alternate tools or approaches when you review the program.
Strong program management includes regular review of the approach, and realignment to the extent warranted. Experienced counsel can help you navigate much of this, and can help you benchmark against what they see in their day-to-day practice.
Managing a brand protection program can seem overwhelming when you start, but with a well-defined and regularly refined approach, any company can find a strategy to fit its needs. Of course, this is only the first part of ongoing brand protection. The second part is about enforcing your rights once you find something that concerns you. We will talk about that next week.
Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.
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