Internationalizing a Trademark Watch Portfolio in TM TKO

With TM TKO’s jurisdictional expansion, you’ll want to make sure that you are taking advantage of the ten new countries (CA, MX, EUIPO, FR, DE, ES, UK, AU, NZ, and WIPO) to protect your clients with watching. 

I. Creating International-Focused Watches based on a US Portfolio

Many practices have a bunch of US clients that are mainly active in the US, and some clients with more international business. Let’s walk through setting up a more selective portfolio to focus on these multinational clients.

Let’s pick a company as an example — we will use DomainTools. [We don’t represent or provide services to them or their counsel; this is purely an example. The same is true for all examples provided below.] A quick search indicates that its marks as held by Domain Tools Holdings, LLC (US and AU) and Domain Tools Holdings, SARL (EU). The goods and services covered in each are pretty similar.

Go to Portfolio and set up a new Attorney Portfolio — Attorney Portfolios drive watches, while Firm Portfolios are focused on conflict checks. Let’s give it a descriptive name – DomainTools international watch portfolio – keep the US as the “home” jurisdiction, and apply the watches in all ten jurisdictions. The “home” jurisdiction is important — DomainTools has registrations elsewhere, but we only need one “home” since their portfolio consists of the same mark protected in multiple places. If we had set up all countries as “home,” we’d have multiple overlapping watches for basically the same thing — the US, EU, and AU registrations cover basically the same classes and goods/services — and you would have to needlessly wade through extra results.

You’d only want to select multiple “home” jurisdictions if your clients had multiple key marks in different countries, e.g. a consumer products company with localized brands. Even there, you may want a more targeted search to avoid too much overlap. Your setup page will look like this:

If you want to “internationalize” only a single watch or a handful of watches in an existing portfolio, just go to the Watch tab then Manage, select the watch you want to expand internationally, and click Edit. Change the Jurisdiction selector to add whatever additional jurisdictions you want.

II. Setting Up Watches For Practices Outside the US

Let’s say you are a lawyer based outside of the US, and need to set up both domestic and international watching. The international part will be the same as we describe in part (I) of this blog post, above.

The domestic side can be a little more complex than in the US, where we can use correspondent email addresses to quickly set up a portfolio. The only international jurisdiction where any email addresses are in public data is Mexico, and even there it’s not complete.

We suggest using either attorney name or firm name firm name. Some jurisdictions have both, like Canada, but even there it’s not consistent — attorneys must enter their information in a particular way to get both covered. If your jurisdiction doesn’t allow you to limit by attorney name — and you are operating in a multi-lawyer practice group that doesn’t have shared clients — you may have to pair firm name + client names (add a group of Owner fields, separated by a Boolean OR) to focus on just your portfolio. 

As above, the firm / companies are used purely for example purposes.

Another way to do set up a watch portfolio would be to limit the watching to just domestic clients, as in the example below for a Canadian law firm.

III. Need a Hand?

Don’t hesitate to set up a time to talk if you need a hand! Just use the “schedule a consultation” link at the bottom of any page in TM TKO (after logging in), and we’ll be happy to assist and make sure you get the most out of this new international watching resource.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s