Top 10 Mistakes in Trademark Docketing
Alt Legal Team | October 12, 2023
Keeping your IP and trademark docket up-to-date and accurate is one of the most crucial aspects of any IP or trademark practitioners’ work. IP and trademark docketing is especially important because missing deadlines related to IP and trademark matters 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. Also, for lawyers, missing deadlines can result in disciplinary proceedings before their state bar association and/or the USPTO Office of Enrollment and Discipline (OED). Read more about the true costs of missing IP and trademark deadlines here.
This article discusses the top 10 trademark docketing mistakes to avoid.
1. Entering information incorrectly in the docket
If the matters in your docketing system are entered with errors, when you generate reports and receive reminders, deadlines and other matter details will be incorrect. This means that you could miss deadlines or submit incorrect information to the USPTO with your filings.
One way to prevent entering docketing errors is to avoid using a docketing system that requires users to enter information manually. Instead, you can use a docketing system like Alt Legal which provides the highest level of automation, eliminating most manual data entry.
Alt Legal connects to the USPTO and updates your docket daily with new marks, status updates, and notifications from the USPTO. You will never have to manually enter mark information or update USPTO trademarks again. In Canada, Alt Legal’s CIPO database connection retrieves all trademark data, deadlines, and status updates. In all other jurisdictions, in partnership with CompuMark, Alt Legal automatically retrieves data from 180+ global IP offices and creates renewal and use deadlines when foreign trademarks are registered and renewed.
Additionally, Alt Legal automatically calculates deadlines and sets reminders. You’ll receive daily emails from Alt Legal with status updates and reminders about your upcoming deadlines. There’s no need to check your docket or worry about missing deadlines – Alt Legal’s advanced automation does the work for you with 100% accuracy.
2. Failing to docket regular reminders
The worst types of docketing errors result in missing deadlines which can result in expensive fees to recover actions or even a loss of client rights, not to mention, a very upset client. The best way to prevent missing deadlines is to ensure that you are receiving regular reminders from your docketing system about upcoming deadlines. That way, you are always aware of upcoming deadlines and have ample time to prepare responses, collect information from clients, and/or to request extensions of time to file responses.
With many docketing systems, you will have to manually enter reminders at regular intervals so that you are aware of upcoming deadlines. With Alt Legal our software automatically sets reminders for you based on popular default settings that suit most practitioners. Alt Legal will also sync with your Outlook calendar so that your reminders will appear there as well. The schedule for reminders is fully-customizable and our team can adjust default reminder settings for what best fits your team’s workflow.
3. Failing to run regular, accurate reports
One of the key ways to manage your trademark docket and to ensure that you are aware of all upcoming deadlines is to run regular reports. You can run reports based on specific time periods, capturing all matters and clients; or you can run reports based on clients, showing all of their matters regardless of time period; or you can run reports based on the attorney managing the matters so that the responsible party can view their matters. There are many other types of reports to generate, however, these are the most common types and will provide the most information.
All trademark docketing software allows users to run reports based on selected criteria. However, some trademark docketing software is particularly difficult to use and often only one user at any organization knows how to run reports. Because running reports is difficult and time consuming, practitioners may not run reports as frequently as they would like which can result in missing deadlines or being unprepared for upcoming filings and rushing to get them done.
However, Alt Legal makes it easy to run reports. 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. Alt Legal also allows users to save frequently-run reports that automatically update each time you view the report. Running reports using Alt Legal is so simple that any user can confidently run reports in minutes.
4. Keeping disorganized files and records
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. Failure to maintain organized files can cause you to waste time trying to locate information. It can also potentially result in filing errors and missed deadlines.
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.
5. Setting incorrect software user permissions
When too many users have access to docketing software, or when users don’t fully understand their roles, users may make changes to records and/or inadvertently enter incorrect information, which could potentially result in filing errors and missed deadlines. Users may also have access to matters that they are not responsible for and inadvertently make erroneous updates or filings.
At any organization, it’s important to consider who has access to the docket and which users have read-only access and which users have edit access. At least two users should have edit access, even if only one person on the team is regularly editing matters in the docket. If that primary individual is out of office, there needs to be someone on the team who can cover and edit the docket while that individual is away. Additionally, there may be members of the team who only require read-only access.
The issue with assigning user roles is that many docketing software providers charge subscription fees based on the number of users or “seats” and may charge higher rates for users with edit access. This limits your flexibility in assigning roles and providing access to the docket.
It’s also very helpful for users to have access to a firm/organization docket as well as their own individual docket to avoid making docketing and/or filing mistakes. Not all docketing software allows users this level of customization when accessing their platform.
At Alt Legal, we offer unlimited “seats” so you can grant read or edit-only access to anyone on your team, plus we enable you to customize the view for each user so that you only see matters that are relevant to you. These features are also useful for in-house users who may want to grant read-only and restricted access to non-legal team members. Additionally, law firm users may use these features to grant restricted, read-only access to clients (including in-house clients), foreign associates, and more. Providing 24/7 docket access can be an excellent marketing tool for lawyers looking to deliver a client-centered experience.
6. Failing to use docketing software correctly
A trademark docketing system is only effective if users feel confident using the software. Trademark docketing software can be complex and intimidating, particularly because the implications for errors are so significant. It’s a good idea to check in with all users every 3-6 months to ensure that they are comfortable using the software and are able to find the information that they need.
Alt Legal was specifically developed as a solution to overly complicated, outdated IP docketing systems. The interface is simple and intuitive. You can view your docket as soon as you log in, then click or search for a mark using search fields or filters. You can also view detailed information about the mark including status, timeline, all relevant documents, and more. Alt Legal offers free training and unlimited support via phone, email, and live chat, but we don’t think you’ll need much of it. Alt Legal customers value our intuitive software and find themselves up and running in no time.
7. Missing international deadlines
Tracking international trademark matters can be very challenging as IP laws differ in each country and you are often relying on your foreign counsel to provide you with relevant and accurate information about upcoming deadlines. One of the best ways to avoid missing international trademark deadlines is to keep track of international matters in your own docket and spot-check updates and new deadlines as they appear in your docket.
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. Additionally, Alt Legal recognizes that laws change over time. Alt Legal will apply historic deadlines and renewal dates when applicable while recognizing the latest updates to global trademark laws, applying those to current matters when applicable.
8. Failing to docket licenses, domains, agreements, etc.
While registering and maintaining trademarks is the most important part of trademark ownership, it’s also very important to manage any trademark-related licenses and agreements as well as domains. Failure to monitor deadlines/dates that trademark owners have agreed to and failure to renew domains in a timely manner can result in a loss of trademark rights as well as improper usage by third parties.
You can avoid these types of errors by using your trademark docketing system to docket relevant contractual dates as well as domain expiration/renewal deadlines. Many docketing systems allow you to purchase extra “modules” or “wizards” to docket matters other than trademarks – but the costs can add up over time. Alt Legal allows you to docket any number of custom matter types at no charge.
9. Docketing recordals and assignments incorrectly
When ownership of trademarks changes hands, it’s very important that the proper recordals be filed with the USPTO and that changes are reflected in your docket. That way, you can ensure that the proper parties are apprised of all updates pertaining to their marks. Manually entering recordals and assignments in your docketing system can be complicated and error-prone, but with Alt Legal, all recordals and assignments will automatically populate in your docket so that your docket reflects the ownership records in the USPTO’s TSDR system.
10. Failing to notify clients about updates to their matters
One of the most important parts of trademark practice is to keep clients informed about their matters. This can be time-consuming and tedious, particularly when there are so many stages in the USPTO trademark prosecution process where client updates are warranted. It can be helpful to maintain a bank of template client letters. However, this is a lot of work to set up a bank of templates and each time you send a letter, you must customize the letter by manually entering the correct matter and client information.
Alt Legal makes it easy to communicate with clients about their matters. Alt Legal provides pre-built email templates to quickly notify clients and other key stakeholders of important prosecution milestones. Our docketing software recommends relevant templates, auto-populates matter-specific data, and creates a draft in your email program. You can still further personalize the email before sending from your email servers. Alt Legal’s email templates save you time and help you to avoid error since you will not need to manually enter any client/matter information.
Extra Credit – Fun tip!
Do not use your trademark docketing system to calendar birthdays, lunch dates, reminders to buy your partner flowers, or appointments! Believe it or not, we’ve seen it! Docketing systems are not calendars and should not be used to keep track of your personal deadlines. At Alt Legal, we encourage a healthy work-life balance! Use your trademark docketing system for your clients’ IP matters and find an excellent lifestyle calendar to handle your personal deadlines and reminders.