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Jan
19

Conduct An Annual Trademark Portfolio Review

Do your New Year’s Resolutions include a thorough review of your business’ trademark portfolio? If your business is like many others sometimes important but not urgent matters get put off for far too long. Matters that if caught early would have been simple to correct can be much more costly to resolve if they are left on the back burner for too long. You should consider if your business might benefit from an annual review of the trademark portfolio by a Trademark Attorney.

Here are some steps you might want your Trademark Attorney to undertake towards proactively managing your portfolio in 2011:

1. Review, on a global basis, all advertising and packaging for key products to confirm all trademarks and service marks are registered or on file and that the marks are used properly. If this is not possible an attorney should undertake at least a spot check of key marks.

2. Compile a “trademark use file” for each brand in each country where a product is sold or a service is rendered. In the event of litigation this data will be of immeasurable importance. When infringers are sued for trademark infringement they often counterclaim that a trademark or service mark has been abandoned due to lack of use. The mark’s owner must then establish that the trademark or service mark has been in continuous use. This is easily done if a company has kept an annual use file with examples of packaging, catalogs, and advertising displaying the trademark or service mark at issue.

3. Confirm that all registrations have been renewed properly, and that they cover the current products and/or services on which the trademarks or service marks are used .

4. Check on the status of any pending applications. In some countries it can take years to obtain registration and it is important to conduct frequent status checks to confirm that applications are proceeding on track to registration.

5. Check on the status of pending  litigation and oppositions. Be sure your foreign associates or outside U.S. counsel are not waiting on key information to progress a matter and that they are zealously representing your case.

6. If your business is an industry frequented by counterfeiters you should confirm that your trademark registrations are duly recorded with Customs where appropriate.

7. Check on any licenses. Are the license agreements up to date? Are  the Licensees adhering to all requirements? Is the Licensor, i.e., the trademark owner, properly controlling the nature and quality of the usage of the trademarks on the products or services at issue?

8. If your business employs marketing and sales staff you may want your Trademark Attorney to conduct short educational sessions on topics such as the proper development and use of trademarks and the need for employees to be vigilant for infringers and counterfeiters and what steps to take if they should encounter such problems.

9. Ask the Trademark Attorney to perform searches of key trademarks to ascertain if there are any potential infringements of the trademarks or service marks that should be brought to your attention. Generally it is easier to resolve matters the earlier you catch them since once a competitor has launched a product and is entrenched in his marketing campaign he is less likely to be willing to forgo use of a similar trademark or service mark without litigation. Towards this end be sure the company has a global trademark watch service in place so that you are notified if potentially infringing trademarks publish for opposition.

10. Check all websites to confirm proper use of trademarks,  service marks, domain names and copyrighted materials.

11. If your business uses domain names your Trademark Attorney can review the status of the domain names to confirm that they have been renewed, and can search the domain names against domain name registries and trademark registries to determine if competitors are improperly using your business’ domains names and trademarks, such as by registering your business’ trademarks as their domain names.

While all of this may seem like a lot of work remember that your business depends upon the strength of its intellectual property. Your trademark portfolio must be constantly maintained and proactively managed in order for it to support your business’ objectives.

Please note that this post is for information purposes only and does not constitute legal advice and does not create an attorney/client relationship.

Best of luck with your business in 2011!

Teresa H. Anzalone, Attorney, MBA

Symbus Law Group, LLC

610-420-7731

tanzalone@symbus.com

(Office: Gulph Mills, Montgomery County, Pennsylvania)


managing the “symbols of business”

About the author

Teresa H. Anzalone

Teresa is a Trademark Attorney with an MBA. She recently left the corporate world to join the law firm Symbus Law Group, LLC. Teresa is licensed to practice law in Pennsylvania. She directs the Pennsylvania office which is located in Gulph Mills, Montgomery County, Pa.