Trademark Maintenance Programs

You may have filed one or more trademark applications, but do you have a program for regularly reviewing your trademark portfolio? Trademarks require maintenance in order to retain their protected status on the Federal Register. The first step in any maintenance program is to do an audit of what marks the business has and any gaps in protection coverage. You should especially look for:

  • Failure to seek registration of important marks
  • Registrations covering fewer than all goods/services
  • Registrations covering fewer than all countries
  • Registrations containing unnecessary disclaimers
  • Registrations on the Supplemental Register
  • Ownership not properly recorded
  • Section 15 (incontestability) declarations not filed

It is much easier to address issues like these as a matter of routine trademark portfolio maintenance, rather than in response to a crisis created by a third party’s unauthorized use of the company’s trademarks, a cancellation proceeding, or some other event.

It is advisable to periodically trim the deadwood from your trademark portfolio so that you can better manage and direct your company’s trademark resources.  A trademark audit is a good opportunity to identify trademark applications and registrations that should be designated for abandonment because they no longer have commercial value for the business. The fact is that business is dynamic. Your biggest money makers change over time. You need to adjust your trademark portfolio accordingly. As they say, failure to plan is a plan for failure.

You should look at how your staff uses the company’s own trademarks and those of others. Improper use can lead to genericism of the mark and loss of its protected status. In many cases, companies use the trademarks of third parties in improper ways, yet need only make some basic changes to come within the scope of the fair use doctrine. A minor change can obviate liability and costly attorney fees.

Many companies inadvertently abandon their trademark rights by improper usage, including failure to affix the mark to goods or by using the mark as a descriptive or generic term. World famous examples are aspirin and Zipper. More recently, Apple’s Ipad Mini was denied trademark registration. Active efforts such as those by Xerox to educate the public to call it a photocopy and not a Xerox copy can save a mark from generism.

It is important to confirm that the company is not in breach of any agreements or court orders that may limit its trademark use. Consent agreements can be breached by marketing department copy writers who were unaware of the restrictive covenants. These types of problems can be very difficult to correct once they are identified and challenged by others, but easy to correct if discovered and voluntarily corrected. Preventative maintenance pays off.

Companies that fail to police their licensees are often leaving money on the table.  A company that licenses its trademarks should periodically audit its licensees’ books to ensure that royalties are being paid in the correct amount.  Studies show that royalties are almost always under reported and under paid.

Licensors should take appropriate action to ensure that the trademark is being used properly and the quality of the licensed product is acceptable.  A licensor does not have to conduct regular inspections in order to meet its obligation to exercise quality control, but rather remain aware of the quality of the products and step in if there is a quality problem that could reflect poorly on the mark. This can be accomplished by requiring licensees to submit samples for review on a periodic basis.

Trademark owners should also take steps to ensure that their trademark is not being misused by others.  While it is best to monitor the marketplace for infringing activity on an ongoing basis, a trademark audit presents a good opportunity to review the landscape and identify any third party infringements that require attention. Policing is an important obligation of all trademark owners.  Internet searches are an effective way to monitor usage of the mark by the public. Don’t forget to include social media searches in your investigation.

An attorney conducting a trademark audit will take a close look at the company’s trademark policies and consider how they could be improved.  Given the rise of social networking and nontraditional marketing campaigns, the risk that a company’s trademark will be misused – inadvertently or not – is greater than ever.  It is therefore increasingly important that companies adopt in clear, written policies. Company policies serve to both educate and deter – both important to your overall maintence program.

Consult with your trademark attorney to help create or implement a trademark maintence program so your company realizes the most benefit from its intellectual property assets.