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Your source for news, updates and guidance on all things trademarks and intellectual property.

Top 8 Tips for Effective Trademark Docketing

Alt Legal Team | August 17, 2023
6 min read

IP and trademark docketing is a crucial aspect of any IP professional’s practice. Effective docketing ensures efficient workflow, delegation of tasks, and time management. 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 sets forth the top 8 tips you need to effectively docket your IP and trademark matters, ensuring streamlined workflow and no missed deadlines.

Tip #1: Choose a high-quality computerized docketing system

IP and trademark law practices require a computerized docketing system to keep track of their matters. A computerized docketing system, versus a manual docketing system kept in a calendar, notebook, or spreadsheet, will help to ensure that you keep track of all deadlines, receive appropriate reminders, and maintain your files accurately. A manual docketing system is prone to error and does not allow for proper organization of data, nor will you receive reminders about upcoming deadlines.

In fact, the USPTO’s Office of Enrollment and Discipline (OED), which ensures compliance with the USPTO Rules of Professional Conduct and investigates allegations of misconduct, has sanctioned trademark practitioners for failure to use technology to keep track of important USPTO deadlines. As part of settlements in these actions, the OED has required attorneys to adopt electronic docketing systems.

Tip #2: Ensure accurate and timely data entry

Depending on the size of a firm and the number of matters being managed, data entry and management may be handled by an individual or a team of docketing specialists. Regardless of how many users are accessing the docket for data entry, it’s necessary that everyone follows a standard procedure for timely processing correspondence from IP offices and clients and inputting the data into the docketing system. It is also prudent to implement a system of checks and balances to ensure that all data has been entered and that it has been entered correctly.

Of course, if you are using a system like Alt Legal that uses automation to pull data directly from IP offices across the globe, much of this manual process will be eliminated. Alt Legal minimizes manual data entry and ensures that all matters in your docket are updated with the most current information available from the relevant IP office.

Tip #3: Schedule reminders

One of the primary functions of an IP docketing system is to help you stay on track with the many deadlines associated with IP matters. When inputting new data and deadlines into your docketing system, you’ll want to ensure that you are setting regular reminders that will appear on your docket to let you know about upcoming deadlines. Many docketing systems have built-in scheduled reminders that are appropriate for a particular matter. For example, you may receive 3-month, 2-month, and 1-month reminders before a Statement of Use or Extension is due. Or you may receive a 1-year, 6-month, and then monthly reminders before a Section 8/9/15 renewal filing is due.

With Alt Legal, you don’t need to set any reminders – our software will do that for you automatically. 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.

Tip #4: Run regular reports

A key factor in effective trademark docketing is to run regular reports to help you stay on top of deadlines, distribute work, and to keep clients and colleagues informed. You’ll want to run reports showing your full docket of upcoming deadlines at least monthly. Additionally, you should run a report each week showing the deadlines that week to ensure that all deadlines have been addressed. You can also run client-specific dockets at regular intervals to check on portfolio status and health.

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.

Tip #5: Get continued training and support

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, 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.

Tip #6: Provide docket access to the right people

Most trademark docketing software vendors provide you with the ability to assign different roles to users on your team. This means that some users may have read-only access and others may have edit access. It’s important to make sure that at least two users 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. Providing too many members of the team with edit access can be problematic if edits are inadvertently made or entered incorrectly. Controlling who has edit access to the docket is very important.

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.

At Alt Legal, we offer unlimited “seats” so you can grant read or edit-only access to anyone on your team. This feature is also useful for in-house users who may want to grant read-only access to non-legal team members. Additionally, law firm users may use this feature to grant 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.

Because Alt Legal is so easy to use, users with read-only access, even those who have never used docketing software, will find that Alt Legal is incredibly intuitive and user-friendly. They will easily be able to navigate within Alt Legal to find the information they are looking for and to run reports for their marks.

Tip #7: Communicate with clients about deadlines and matter status

One of the most important elements of effective docketing is obtaining the appropriate client input. Client input is often necessary for you to keep your matters up to date. You’ll need their input to appropriately respond to a particular deadline and to determine whether to keep a matter active. If you do not get the information or approval necessary to meet a deadline, you risk putting your client’s IP rights in jeopardy. Therefore, it is important to utilize your IP docketing software to apprise your clients of updates to their matters and upcoming due dates.

Advanced and automated IP docketing software like Alt Legal allows you to create template letters for each stage of the trademark prosecution process so that you can promptly advise clients of updates and upcoming deadlines with just a few clicks. Alt Legal’s templates will pull in information directly from the docketing software, saving you time and helping you avoid errors as you report this information to clients. Promptly providing information to clients about updates to their matters and upcoming deadlines, as well as information or approvals that may be required from them, allows you to nurture the client relationship and give the client ample time to provide their instructions for proceeding.

Tip #8: Use your docketing software to its maximum capabilities

The most advanced trademark software goes beyond simply calendaring deadlines and will offer advanced features to help enhance your trademark practice. The software may offer advanced features including document storage, custom reporting, internal and external communication tools, and client intake forms. These additional features aren’t simply “nice to have” or “bells and whistles.” Attorneys who rely on IP docketing software benefit from these features to stay organized and practice more efficiently. Alt Legal offers many advanced features including:

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