New Years Resolution: Trademark Audit

New Years Resolution

The start of a New Year is a time where many of us are setting goals and plans for the upcoming year, both on a personal level and on a business level.  When setting and developing business objectives and goals for the new year it is extremely important to conduct a trademark audit.  As a trademark owner make your New Year resolution to reevaluate the status of your trademark assets!

What is a trademark audit?

Trademarks are not static.  A trademark is an intangible asset that, like other types of assets, should be audited periodically.  (A trademark audit should be conducted on a regular basis.  Trademark owners should strive for at least one trademark audit a year.)  A trademark audit involves a trademark owner reviewing and assessing their trademarks, existing trademark applications, and trademark registrations in order to identify any deficiencies, vulnerabilities, or weaknesses with their trademarks.

Why conduct a trademark audit?

A trademark is essentially the face of a business and thus one of a business’s most valuable assets.  Trademark owners should step back and review their business’s trademark assets for a variety of reasons, but the principal reasons for a trademark audit is to ensure that a business’s trademarks are adequately identified, protected, and exploited.  

What a trademark audit will do is help a trademark owner identify new and existing marks as well as give a business a clear overview of their intangible assets. And there can be havoc when a periodic trademark audit does not occur.  When trademark owners do not conduct periodic trademark audits they run the risk of missing deadlines, having registered marks canceled, and most importantly loss of valuable trademark rights.  

Moreover, trademark audits allow a business the opportunity to evaluate the direction of the use and maintenance of its marks.  For example, when a business reviews its trademark portfolio the business may decide that it needs to maintain its marks or register more marks based on its current marketing strategy.  Or maybe the trademark audit could determine if a business is under-protected and needs to register more marks in either domestic or foreign jurisdictions.  

Overall a trademark audit is an effective way to ensure that a business has adequate brand protection and avoids uneconomical maintenance of unnecessary registrations.    

How do I conduct a trademark audit?

Trademark audits can be conducted in different ways but mainly involve the review of trademarks, names, logos, slogans, domain names, trade names, and related agreements owned by the business.  

The following are some questions that businesses can ask themselves to conduct a start-of-the-year trademark audit analysis:

#1: Identify New Trademarks

(1) Have you been using a new name, logo, slogan, or domain name? Are you in the process of re-branding?

If you are using a new mark it would be sensible to file trademark applications to protect the new marks.  It would also be prudent to conduct trademark searches in order to identify potential conflicts with existing marks.

#2: Identify Gaps  in Trademark Protection

(1) Do your current registrations cover all of the goods and/or services that you provide in conjunction with the trademark?

As a business evolves over the years so does the business’s focus.  Perhaps the trademark has not literally changed, but what if the business’s products and/or services has?  If a business has expanded or changed their products and/or services, there is a great likelihood that the existing trademark registration is not providing adequate trademark protection.  It may be prudent to file a new application or expand your existing registration to cover the changed or expanded products and/or services.

(2) Do you have registrations in all of the countries in which you do business?

Oftentimes businesses ignore the great importance of registering a trademark in another country, or wait to file foreign applications for monetary reasons.  By not registering for trademark protection in foreign countries a business may be forced to one day deal with disputes in foreign countries that are expensive, time consuming, and may even cause the business to re-brand in different parts of the world.  

The main considerations a business should evaluate to determine if foreign trademark registration in a country is required is analyzing whether the business is selling, rendering, or planning to sell or render products or services in the countries either through the business itself or through distributors, licensees, franchisees, subsidiaries, partners, or sales agents.   Thus, the takeaway is, if a business is doing or anticipating doing business internationally, foreign trademark protection should be greatly considered.  

(3) Do you currently have applications and/or registrations for all of your important marks?

It is a vital marketing strategy to protect all of your important marks.  Even though a business may have their primary brand trademarked, frequently there are other marks that need protection too!  Common marks needing trademark protection and are often overlooked include logos, slogans, and product names.

(4) Have you made changes to trademarks that you have already registered?  

Trademarks should be used exactly as they were registered with the USPTO without deviation.  If a business has made any modifications or changes to their trademark, including the addition or removal of words or changing the mark design, it would be wise for a trademark owner to discuss with a trademark attorney whether a new trademark application would be appropriate.

#3: Update Contact and Ownership Information

(1) Has the owner of the trademark changed?  

A cognizant trademark owner will document any and all transfers of trademark ownership with formal documentation.

(2) Do you have a designated person for trademark matters within your business?

A business should always have an employee who is in charge of trademark matters.  Personnel changes can often cause a business to miss important trademark deadlines.  Having an employee of the business assigned to trademark oversight is key to the business staying compliant with deadlines and potential conflicts.  This person should be the main point of contact and have a relationship with the business’s trademark attorney.  

#4: Monitoring for Infringement

(1) Are you monitoring for infringement and taking steps to prevent potential trademark infringers?

Trademarks are not a register-it and forget-about-it thing.  Trademark enforcement requires vigilance and constant monitoring in order to ensure no other individuals or companies are infringing on your rights as a mark holder.  Basically vigilance is the only thing keeping your trademark safe.  You can monitor trademark infringement with something as simple as a Google search, or even utilize the USPTO’s Trademark Electronic Search System (or “TESS” for short).  In addition, should you spot a trademark infringement issue, one of the first conversations you should have is with an experienced trademark attorney.  As the issue could be as simple as sending out a cease-and-desist letter to the parties involved, but it may also be as complicated as filing a lawsuit in a court of law.  Thus, it is always advisable to seek legal advice from a trained and experienced legal professional when it comes to trademark infringement.

Conclusion

A thoroughly conducted trademark audit is essential in ensuring that not only a trademark owner’s trademark portfolio is current with proper protection, but also would help in identifying areas for expanded trademark protection.  If it has been a while since you have instituted an audit for your trademark portfolio, or it is your first time ever….then the beginning of 2017 is a great time to get started!  Happy New Year and happy trademark auditing!


Disclaimer – No Legal Advice:  The information and content available on this site is offered only for informational purposes and is not intended to be legal advice.  Posts are for educational purposes only as to provide general understanding and general information of the law, not provide specific advice.  Blog posts should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

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CHELSEA WOLD, is a law clerk for LegalForce RAPC. She received her Juris Doctor degree from Sandra Day O'Connor College of Law, Arizona State University in May 2016. On the personal side, Chelsea has her own blog that she started as a journalism major in college.