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Protecting Your Trademarks: Conducting an annual trademark portfolio review

published in McAfee & Taft tIPsheet | February 1, 2016

trademarks

By Jessica John Bowman

You already know how important it is to clear and register your trademarks. But clearing and registering your marks should be just the first step in your trademark-protection plan. To ensure that your marks continue to have value, get into the habit of conducting a review of your trademark portfolio on at least an annual basis. To start, make a list of your registered marks, and ask yourself the following questions:

  • Is the ownership information accurate?
    On occasion, records at the U.S. Patent and Trademark Office (“USPTO”) do not reflect changes in ownership that result from mergers, acquisitions, corporate restructuring, asset sales, and other business transactions affecting intellectual property. A periodic review of the ownership information on file with the USPTO will allow you to confirm that all transfers of ownership have been accurately recorded, or alert you of the need to record assignments with the USPTO.
  • Do the marks I am using match the marks depicted in the registration?
    It is common for businesses to make minor adjustments to their marks from time to time. These changes may not be problematic by themselves, but over time the changes can accumulate, resulting in a registered mark that looks materially different from the mark that is actually in use. Regularly comparing the mark depicted in your registration to the mark used in connection with your goods and services will help you avoid materially deviating from your registered mark, or alert you to the need to file an application for a new version of an old mark.
  • Have I actually used all of these marks in the past year?
    The only way to protect your marks is to use them. Look for any marks that may have been used infrequently and evaluate whether the cost of maintaining those marks is justifiable. Identify any marks that have value but have not been used frequently, and develop a plan for increasing the use of those marks.
  • Are the goods and services identified in the registration still accurate?
    Often, companies will add new product lines or remove old ones without considering how those actions affect their trademark portfolios. A regular review of your trademark registrations will allow you to add any new goods and services offered under the marks, and delete any goods and services that are no longer being offered. This review will also alert you to any improper use of the federal registration notice, which can only be placed on the mark when it is used in association with the goods identified in the registration.
  • Do I need to file any new registrations?
    Consider the marks that you use most frequently. Are all of the marks, including word and design marks, covered by your existing registrations? If not, consider ordering a search for any trademarks that are not covered, and begin taking steps to register those marks.

Finally, for all of your marks, both registered and unregistered, take a moment to collect examples of how the marks have been used since your last trademark portfolio review. Be sure to obtain examples of how the mark was displayed on goods or in connection with services, as well as exemplary advertising and promotional materials. In addition, consider collecting records reflecting the amount of money spent promoting goods and services offered under the mark, as well as a brief summary of how the goods and services associated with the marks were advertised and sold over the course of the year. These materials will be useful in the event you become involved in an opposition or cancellation proceeding.

These are just a few of the steps you can take to protect the value and continued viability of your trademarks. Make it a habit to perform these steps at least annually to protect the marks in your portfolio.

Please be aware that this publication does not contain legal advice. The views expressed in the article are provided for informational and discussion purposes and do not necessarily reflect the views of the author or of McAfee & Taft A Professional Corporation.