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Top 10 Benefits of Trademark Docketing

Alt Legal Team | September 12, 2023
5 min read

Trademark docketing is a crucial aspect of intellectual property management for all brands and businesses. Trademark docketing helps trademark practitioners to manage and track trademark applications, registrations, renewals, and disputes. A well-organized docketing system affords many benefits for both brand owners and trademark practitioners. In this article, we will explore the top 10 benefits of trademark docketing.

1. Protect Valuable Intellectual Property

The primary benefit of trademark docketing is that it enables trademark practitioners to track important deadlines pertaining to clients’ or brands’ intellectual property. Trademark filings, registrations, and oppositions include numerous deadlines. These deadlines can be as soon as 90 days from receipt of a particular notification or can span the course of 6 or 10 years. Because trademark filings have so many deadlines to track, it is important for IP professionals to have a reliable docketing system to monitor deadlines. Failure to track deadlines, respond to IP office deadlines, and pay appropriate fees can result in expensive fees to recover actions. In a worst-case scenario, missing deadlines can result in abandonment of a trademark and ultimately, a loss of client rights. Therefore, trademark docketing is essential to protecting valuable intellectual property.

2. Ensure Efficient Workflow, Delegation of Tasks, and Time Management

Docketing is a key way to delegate work in an office and make sure that tasks are done efficiently and cost-effectively. In an IP group, there may be multiple attorneys or trademark administrators responsible for particular clients and/or tasks. Most IP docketing software will allow trademark practitioners to assign a particular individual to a matter and/or client so that when running reports, users can select all matters that “belong” to an attorney and/or trademark administrator in a group. This is helpful so that attorneys and administrators aren’t wasting time sorting through long reports containing matters that they are not responsible for.

Alt Legal allows users to assign personnel in an IP group to particular matters and across all matters belonging to a particular client. That way, when users login to their Alt Legal docket, they’ll only see matters that are relevant. Additionally, when receiving automatic daily email updates and calendar sync updates about upcoming deadlines, users can be certain that those updates are relevant for their clients and matters.

3. Improve client relationship with docket access

One non-obvious benefit of trademark docketing is improved client relationships. It may not be obvious because not all docketing software enables users to provide clients with access to their dockets. Alt Legal provides free and unlimited third-party access to dockets so that clients can view their matters and find answers to their questions anytime. Clients may be granted read-only access so that they are not able to make any changes to their docket. When pitching clients, you can mention that one thing that sets your firm apart from others is that you provide docket access to clients, allowing them full visibility into their matters at any time.

4. Prevent Mistakes Leading to Malpractice or USPTO OED Disciplinary Proceedings

Another important benefit of docketing is that by staying on top of deadlines, trademark practitioners will avoid missing any deadlines, allowing clients’ rights to lapse, and potentially finding themselves before their state’s ethics committee and/or the USPTO’s Office of Enrollment and Discipline. The USPTO OED investigates and determines claims of misconduct by attorneys and administrators and has the authority to impose sanctions and other disciplinary measures upon those who have violated the USPTO’s Rules of Professional Conduct. Missing deadlines generally and missing deadlines as a result of failing to use an electronic docketing system that will provide reminders are considered valid grounds for states and the USPTO to discipline attorneys and practitioners for ethical violations.

Aside from protecting clients’ and brand owners’ rights to their valuable IP, docketing serves the important purpose of protecting practitioners from malpractice suits and disciplinary proceedings. By having a sound docketing system in place, practitioners can ensure that they are aware of upcoming deadlines and have enough time to gather information and instructions and prepare filings.

5. Keep Trademark Prosecution Files Organized

IP matters require many filings and contain numerous attachments in the form of specimens, drawings, correspondence with the USPTO, and other documentation. Having an organized system for storing these documents is essential to a smooth and efficient workflow. A benefit of trademark docketing is that IP docketing software like Alt Legal provides an excellent solution for document storage by automatically collecting documents like applications, office actions, drawings, and registration certificates, and storing these items within the docketing system. This makes it easy to check the status of a mark and quickly access relevant documents. Additionally, Alt Legal users can upload their own documents and keep detailed notes about conversations with clients, colleagues, and co-counsel.

6. Streamline New Trademark Application Filings

Trademark docketing can help with more than just calendaring deadlines. The most tech-savvy docketing software like Alt Legal makes trademark registrations faster and easier than ever before with auto-generated client intake forms. Alt Legal generates custom, branded intake forms and questionnaires, allowing IP professionals to easily collect information about an application. Simply send the intake form to a client or colleague and receive notification once it has been completed. If desired, trademark practitioners can make any edits or corrections. Once the form is finalized, Alt Legal’s unique integration transfers the data directly to the TEAS application without the need to retype or copy-and-paste anything.

7. Identify Infringement and Enforce IP Rights

Another benefit of trademark docketing is that highly advanced docketing software like Alt Legal integrates with trademark monitoring and watch tools to help you protect your trademarks. Alt Legal offers Alt Legal Trademark Protection, a cost-effective monitoring and watch solution, that is available as an optional add-on service to Alt Legal IP Docketing Software. Alt Legal Trademark Protection includes Trademark Application Match and §2(d) Trademark Watch, a set of fully-automated monitoring and watch tools that practitioners can use seamlessly with Alt Legal IP Docketing software to provide an integrated docketing and full US-docket monitoring experience.

8. Track and build trademark portfolios

Docketing software allows trademark practitioners to run reports to review upcoming deadlines and analyze clients’ full portfolios of trademark matters. By analyzing reports, trademark practitioners can identify any holes in trademark rights and determine if additional trademark applications should be filed in various classes or in different jurisdictions. Additionally, reports can help trademark practitioners make informed decisions about which trademarks to renew or abandon, aligning trademark strategy with overall business goals.

Most trademark docketing software systems provide users the ability to create reports, but the process can be complicated, making it difficult to generate reports quickly and effectively. Alt Legal’s powerful reporting allows users to create custom reports with just a few clicks, download Excel files directly, and email internally or externally.

9. Effectively Manage Global Trademark Portfolios

Businesses and brand owners are increasingly operating on a global scale and require trademark protection in countries around the world. Trademark docketing helps practitioners keep track of important deadlines pertaining to international trademark matters. While local counsel will be managing filings in foreign jurisdictions, the primary attorney must still be aware of deadlines and registration periods and expirations to ensure that local counsel has arranged all of the necessary filings to obtain and retain intellectual property rights. Alt Legal makes it easy to track global trademark filings with its advanced automation, doing more than merely populating basic trademark data and calculating deadlines. Alt Legal’s CIPO database connection retrieves all trademark data, deadlines, and status updates. In all other jurisdictions, Alt Legal’s partnership with CompuMark enables automatic data retrieval from 180+ global IP offices. Alt Legal will create renewal and use deadlines when foreign trademarks are registered and renewed.

10. Reduce Costs and Risks Associated with Brand Management

By maintaining an organized and up-to-date trademark docket, trademark practitioners can ensure that clients’ and brands’ portfolios are complete, helping brand owners avoid costly penalties and fees associated with missed deadlines and even disputes and litigation. Should a brand fail to protect a particular mark in their portfolio as a result of not filing a timely application or missing key deadlines in the prosecution or renewal process, other parties may begin to use the mark which can mean a lengthy and expensive process to recover rights. In a worst-case scenario, rebranding may even be necessary if certain trademark rights are lost due to faulty docketing. As a result, trademark docketing is an essential part of brand management, cost-containment, and risk-reduction.

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