by Kristen Poggensee, Trademark Paralegal Associate Manager, Accenture

Kristen Poggensee of Accenture discusses here the benefits of working with IP management specialist Brandstock on clearing trademarks and taglines.

Accenture is a global professional services company, providing a broad range of services and solutions in strategy, consulting, digital, technology and operations. With approximately 384,000 people serving clients in more than 120 countries, Accenture drives innovation to improve the way the world works and lives. Accenture’s net revenues were $32.9 billion for fiscal year 2016 and it was ranked 37th in Interbrand’s “Best Global Brands 2016 Rankings” with a brand valuation of $12 billion.

I joined the company in 2013 from Motorola Mobility and I am responsible for managing Accenture’s global trademark portfolio of some 3,000 marks in more than 100 countries. In addition to enforcing our trademark rights worldwide, my team manages clearance and filing projects for new brands as well as marks acquired as a result of strategic acquisitions that we want to protect in additional countries in which Accenture operates.

First stage: screening

We conduct screening searches in-house using Corsearch’s screening platform (which provides access to over 150 trademark databases), complemented with a common law search using online search engines. We are generally confident that we can identify the most relevant ‘hits’ that require more detailed investigation or reject the proposed name at this stage.

Marks covering consulting and technology services are often similar. It is important for us to identify potentially conflicting marks whose owners are likely to object to our use and which are therefore, commercially, high risks. In order to assess that risk, we need to know how invested those owners are in their product or service, the size of their business and the sophistication of their customers (ie, are they more or less likely to be confused by similar marks).

Second stage: full availability

Once we have identified the hits we want to investigate further or understand better, we often solicit the advice of local agents in relevant countries who can provide detailed legal and commercial analysis so that we can fully understand the business risks involved. One common reason for needing such full availability searches is that many countries allow registration of Nice class headings, so we need to know exactly how a mark is being used in practice in the local market – something best done by experts on the ground.

Although Accenture operates in over 100 countries, we tailor search projects based on a number of factors using a tiered country approach. Generally, we conduct searches at a minimum in our ‘tier one’ countries, where we have the greatest presence and highest revenues. Our marketing function needs answers quickly, and this presents a considerable challenge that Brandstock helps me to meet.

I worked with Brandstock for many years while at Motorola building a reliable relationship, and I continue to do so at Accenture. People want to work with those they trust. Brandstock knows exactly what I want and can deliver high-quality full availability searches including an invaluable executive summary. Brandstock always works closely with its agent network to ensure that it delivers a commercial evaluation of risk; this is of vital importance to me in fulfilling my role.

Customer service: what makes the difference?

When I am given a new project by my marketing colleagues, I need to provide time and cost projections for approval quickly in order not to delay matters. Brandstock makes things easy for me, as it is completely transparent with regard to costs, and provides precise quotations, usually within 24 hours. Furthermore, the company’s pricing is highly competitive without compromising on quality.

Brandstock’s expedited search service is four to seven working days and its standard turnaround time is eight to 12 working days. I invariably need the expedited service and the company always delivers on time, making it easy to manage expectations with my colleagues. Search results are accessible via Brandstock’s proprietary web portal, and its executive summary is a huge time-saver.

Innovation: ‘Deep Screening’

Brandstock is constantly working to improve services and listens to its clients. We recently trialed its new ‘Deep Screening’ service in parallel with full availability searches for a tagline.

This service involves desk research carried out by Brandstock’s search team that looks at the legal and commercial risks using a combination of online resources. The format of the results, including a risk indicator graphic coupled with the links to the most pertinent hits in the executive summary, allowed us to quickly focus on potential risks.

I can already see how we can use ‘Deep Screening’ to double-check our in-house screening results and also to home in on where we need full availability searches, so reducing time and costs.

This article was also published on  WIPR.