Consider a Trademark Checkup as the New Year Approaches
A company’s trademarks protect its brand and are therefore some of its most valuable assets. Just like your annual physical with your doctor, business owners should review their trademark portfolio each year to assess value, strengths, weaknesses, and potential new marks to protect. Additionally, if you are considering selling your company in the next few years, having an adequately protected trademark portfolio can add tremendous value in an acquisition.
When reviewing the health of your trademark portfolio, you should consider these questions:
- Who owns your trademarks? It’s important to make sure the right entity owns each of your trademarks. Do a chain of title review and see if your transfers of trademarks were recorded by the USPTO over the years. If you want to protect your trademark rights against an infringer, it will be more complicated if the registrations are owned by a dissolved entity. If you want to sell your company, assign your trademarks, or license your brand, a clean chain of title is critical.
- What trademarks are now in use and protected? Look at your trademark registrations both domestically and abroad. You should conduct a search on the USPTO website and any foreign trademark office websites to ensure your marks are in good standing.
- Are there holes in your trademark protection? Are there any brands which you thought you had a trademark registration for, but do not? Is your trademark registered in all the regions where your goods are sold? You might want to file an application for an updated logo or an intent-to-use application for next year’s advertising plans. Have you expanded your product lines? If so, your existing trademark registrations may not cover the additional goods you are selling. Do you have marks that are registered on the USPTO’s Supplemental Register that have been in use for more than five years? If so, you should talk to a trademark lawyer about whether you should apply to register the mark on the Principal Register.
- Are you correctly using TM or ® symbols for your marks? The use of ® is reserved only for marks that have a trademark registration from the USPTO. When a trademark or service mark has a pending application, it’s correct to use tm or sm following the mark. In addition, if you haven’t filed yet for a trademark registration but intend to do so, it’s wise to use a tm or sm to notify the public of your claim of branding rights in a particular mark. This could dissuade others from attempting to use your mark (or something close to it) for competing goods and services.
A trademark checkup allows a company to review its trademark assets, identify new brands to protect and close any gaps in protection. Companies are usually aware of their core trademarks and brands, but a closer look at product lines, brochures, websites and other marketing materials may reveal other trademarks that have not yet been protected. Think about taking a close examination of your trademark portfolio before the end of the year, and feel free to give our intellectual property lawyers a call if you have any questions or need any assistance.