Corporate counsel often wears many hats. Their primary focus is generally on contract, HR issues, regulatory compliance and risk management. Trying to further stretch their resources into specialized areas like intellectual property may not be the best approach to meeting your company’s legal needs in these less frequent endeavors. On the other hand, boutique firms can provide the specialized knowledge and assistance to support trademark matters on a very cost-effective basis. With small or modest portfolios, it may not be cost-effective to do this work in-house. The cost of training support staff and professionals, maintaining an adequate library of legal forms and owning current specialized software and subscriptions for docketing, searching and secondary resources often is more than the cost of outsourcing these functions.
I encourage you to actually review your budget for the internal cost expenditures on Lexis-Nexis, Thompson-West, and case management software/subscriptions. Doing it in-house is probably more costly than you estimated, and you are likely to find that these personnel resources could be allocated more efficiently to other project needs and budget items. The result will be a greater overall cost reduction for your legal department. If you coordinate with your marketing and executive staff for strategic planning, you could outsource routine filings, searches and watch services. What could you and your support staff accomplish with an extra few hours a week or month?
Contact our office if you would like to explore how we can be your “extended staff” and help your in-house legal department with some of the company’s trademark legal work.