Intellectual Property Management Checklist

Pull the firm's USPTO and state trademark registrations: firm name, logo, taglines, fund names, and any registered service marks. Confirm the registration class covers financial services (Class 36) and any related goods. Note next renewal dates so the registration step can plan around them.

List all client-facing white papers, market commentary, quarterly outlooks, and webinar decks produced in the period. These are copyrightable works; many firms register the most-distributed pieces with the U.S. Copyright Office to enable statutory damages on infringement.

Capture proprietary risk models, allocation algorithms, screen criteria, and rebalance logic — the items that give the firm its edge and are not patented. Trade-secret protection under the DTSA depends on the firm taking reasonable steps to keep them secret, so an inventory is the first piece of evidence.

Assign a rough valuation to each asset — replacement cost for models, attributable revenue for branded fund names, marketing spend for client publications. The number drives prioritization for registration, monitoring, and insurance coverage.

Section 8 declarations of continued use are due between years 5–6 and 9–10; Section 9 renewals every 10 years. Missed deadlines cancel the registration. Confirm specimens of use reflect current branding, not the original 2015 logo.

Register the period's flagship pieces with the U.S. Copyright Office via eCO. Registration before infringement (or within three months of publication) preserves the right to statutory damages and attorneys' fees — critical for enforcement against blogs and content scrapers.

Hold a 30-minute review with the CIO or research head: any new model, screen, or methodology shipped in the period. Decide per item whether to file a patent, keep as trade secret, or publish defensively. Document the decision rationale.

For new hires in the period, verify the offer letter or employment agreement includes a present assignment of inventions ('hereby assigns', not 'will assign' — a common drafting bug). Confirm the same for contractors via work-for-hire / IP assignment language in their SOW.

Any vendor with access to model code, client data, or unreleased commentary signs a mutual NDA before access is provisioned. The DTSA requires the agreement include the immunity-from-liability notice for whistleblowers — old templates routinely miss it.

Audit the GitHub or Azure DevOps org for the models repo. Remove ex-employees still in the org, revoke personal access tokens older than 90 days, and confirm SSO is enforced. Departures are the highest trade-secret leak risk — leaver access removal needs to happen the same day HR processes the termination.

Run searches on the firm name, fund names, and registered taglines via the watch service (CompuMark, Corsearch) and a sweep of LinkedIn, X, and domain registrations. Look-alike domains and unauthorized advisor websites using the firm's brand are the most common findings.

For each hit, confirm whether the use is genuinely infringing, fair use / nominative reference, or something needing outside counsel review. Document the rationale; weak triage is what turns a defensible mark into one that gets diluted because nothing was done about repeated misuse.

Use the firm's standard C&D template; identify the mark and registration number, the infringing use, and a 14-day response deadline. Send via email and certified mail. Track the response — non-response after 30 days escalates to outside counsel.

Brief the firm's IP counsel: the asset, the suspected infringement, evidence collected, business impact. Counsel decides whether to file a UDRP for a domain, a TTAB opposition, or a federal complaint. Establish a budget cap before work begins.

Index the firm's licensable assets — typically index methodology, white-label model portfolios, or branded research feeds — against potential counterparties (TAMPs, ETF issuers, custodial platforms). Filter by strategic fit before reaching out.

Standard terms to confirm: scope (exclusive vs. non-exclusive, geography, channel), royalty calculation and audit rights, term and termination, indemnification, and a clear no-sublicense clause unless explicitly negotiated. Outside counsel signs off before execution.

Reconcile licensee-reported usage and royalties against the contractual royalty formula. Common gaps: licensee under-reports a sub-channel, or applies the wrong rate tier. Exercise audit rights once every 2-3 years on material licensees.