Trade Mark Data Migration and Auditing: Take your project from S.U.C.K.S to SUCCESS!

Trade mark portfolio data is a beautiful thing when it’s accurate, well-ordered, and safely contained in your IP Management System. However, sometimes it is necessary to move large amounts of data and check it for accuracy, a duty that often falls to trade mark paralegals and administrators. It can be daunting and time-consuming – not really anyone’s favourite task. In fact, you might even say it SUCKS! But with the right approach, you can ensure that your data moves to its new home safely and accurately – and stays that way.

At the 2024 CITMA paralegal conference, our business development manager Samantha Hands – who is herself a Chartered Trade Mark Paralegal – shared her top tips for conducting trade mark data migration and audits.

Reasons for moving and auditing trade mark data

There are two main reasons why you might need to move a chunk of trade mark portfolio data.

The first is when you are taking on a new client and onboarding their existing portfolio of marks. This can be a high-pressure situation with short deadlines. There are usually a lot of moving parts that you don’t necessarily have control over, and you need to quickly assess the quality of the data you’re onboarding.

The second scenario is when you are migrating to a new IP Management System (IPMS). In this scenario, you should have more control over the process – and of course your IPMS provider should be helping you at every stage – but it is still very important to get the migration right.

Whichever your situation, there are some things common to both activities. And of course, once you’ve moved your data, you need to establish processes for ongoing auditing to make sure your data stays accurate. Let’s take a look at the due diligence activities and processes you need to follow.

1. Getting the data

When you’re onboarding a new portfolio consisting of someone else’s data, it’s natural to be a little sceptical, and want to check data accuracy. You’ll also want to know what format the data is in – is it in an IPMS or spreadsheets? How will it be exported for transfer?

2. Conversion or “mapping”

This is the process of converting data from its original source into the format you need for your own record system and identifying where it will reside in your system. Another term for this is “mapping” and you should receive a mapping report that will show you where something in the original data will live in the target destination.

This must be a joint exercise between you and your IPMS provider, because the stakes are high – without the correct action and status mappings the automated calculations in the IPMS will be incorrect and major problems could result. This is a particular concern if you don’t have consistency over date entry in the old system, for example. If you use a mix of formats, the target system will not be able to accurately interpret the data and calculate renewal dates correctly, which could result in you missing deadlines.

Your provider will deliver their expertise in migration projects to make sure all the technical aspects that might cause problems are covered. You will provide your knowledge of the data to give context around anything unusual that might be part of the migration. It is important not to underestimate the time and investment needed here. A good IPMS provider will let you know the cost and time commitment required to make sure it’s right first time, and not wrong for the rest of time!  

As part of this process, it is a good idea to check whether there is any data that you don’t need to migrate, such as dead cases or long-settled disputes. This is easier if it is your own data coming from an old system that you’re replacing with a new one, as you’ll have the background knowledge to make the right call.

3. Testing

This mainly applies if you are migrating from one IPMS to another, though there is likely to be some more minor testing to do when moving in a new portfolio to your current system. You’ll need to allow for testing to ensure everything has mapped and moved correctly. This can be a time-consuming and complex process, with multiple testing phases depending on the scale of the project. During this phase you’ll need to ensure you are scheduling time for your review and approval before you complete the live conversion. It’s therefore advisable to have an overlap of the old IPMS and the new one for a period while the testing, validation and approval takes place.

Your new IPMS provider will also conduct rigorous testing before they hand over to you, but they will be looking at the raw data migration and checking the mapping has been executed correctly. It will be down to you to spot anything erroneous related to your proprietary processes – such as where you keep data when monitoring third party marks, for example, and whether that has moved into a logical place in the new system.

Your IPMS provider should be provide you with a project plan for you to incorporate into your own timeline, and it’s best to get an idea of timings well before giving notice to your outgoing service provider, or before agreeing to any deadlines from a new client.

Throughout the three steps above, make sure you’re getting help from your IPMS provider. That’s a given when you’re switching systems, but they should also be on hand when you are onboarding new client data. They have deep experience in all aspects of data management and movement and should be advising you throughout the process to make sure the new data is securely and safely transferred into their software.

4. Auditing

Once you have onboarded or migrated your data and it is showing in the places you expect it to in your IPMS you need to conduct an audit. If it is your own data that has simply been moved from one system to another, you should have a fair degree of confidence in it. However, if it has been previously managed by a third party – such as the previous incumbent firm – you need to treat it with a degree of scepticism and conduct due diligence on it. This may be something you offer as a chargeable service to a new client, in which case you can be as thorough as the allocated time allows, but even if an initial audit is not included in your fee, it is worth conducting some checks for your own confidence and to identify if the previous data owner has been missing anything.

Data accuracy auditing activities can include:

• Conducting proprietor searches – this will uncover any unexpected trade marks that were filed by entities in the company group that your client, or you as the brand owner, may not be aware of. You can then ascertain if these should be included in the project, or if they are not your responsibility.
• Carrying out screenings – particularly for new portfolios, having an understanding of third parties with similar or identical marks can help to anticipate any actions in or out. You may also find some trade marks that were missing from your proprietor searches as the company wasn’t on the list!
• Doing use checks – are trade marks vulnerable or no longer needed? This is particularly important when countries have use requirements, like the US and Mexico.
• Contacting foreign agents – let the representative on file at the local IPO know who is now responsible for the overall management of the portfolio. Not only is this important so they know who to send updates or seek instructions from, but they can also provide you with copies of their records for you to audit from. You may also look to consolidate and move the portfolio to your preferred agents.
• Auditing the records visually or using technology against the IPOs or agent data
• Ordering copies of the files from the relevant IPOs you are representative at
• Obtaining copies of email and paper trails – having the full case history of office actions, screenings and clearances, client instructions, correspondence with both the IPO and the opponent in disputes, to name a few examples, will be really helpful to ensure you have record of everything that has gone on, so you have a full picture and overview to make decisions or advise your client going forwards.
• Obtaining copies of co-existence agreements, licenses, letters of consent, POAs
• Obtaining copies of registration documents – at the very least soft copies, but hard, original copies may be required in some circumstances.
• Checking priority details for new marks under your management and how renewal dates are calculated in the different jurisdictions they’re active in. Sometimes (in Kenya for example) the renewal date is calculated from the priority date.
• Reviewing the details of any refused/withdrawn/opposed marks.

Always keep an eye out for any gaps in data, and anything that you no longer need. The aim is for a clean, accurate database with minimal duplication or extraneous material.

Data migration and auditing S.U.C.K.S!

In short, data auditing S.U.C.K.S – which is a handy mnemonic for the different aspects you need to cover:

Source: understand where your data is coming from, its quality and format, and identify the reference sources you’ll use to audit it.

Utilities: use all the tools you have to hand, including support from your IPMS Provider.

Cut it up: The best way to tackle a large project is in steps. Designing a step-by-step project plan, including the four stages above, helps the task seem less daunting.

Kick-off: Work out when you need to start the project to complete it. Identify all your deadlines and work back from there. If you’re moving to a new IPMS system, your provider should supply you with a project plan detailing the key steps and you can add your own to it.

Schedule: Keep a central schedule that all stakeholders can access and check in regularly to see that it is on track.

Data migration, onboarding and auditing is part of WebTMS’ DNA. If you have a project and you’re not quite sure where to start, check in with Sam and the team who will be keen to help put you on the path from “SUCKS” to “SUCCESS!”