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Developing and Managing a Trademark Portfolio
Practical Law Legal Update 3-569-4065 (Approx. 4 pages)
Developing and Managing a Trademark Portfolio
by Practical Law Intellectual Property & Technology
| Published on 15 Jul 2014 • USA (National/Federal) |
A discussion of key issues trademark owners should consider when managing a US trademark portfolio, including developing, maintaining and exploiting trademark rights, implementing a trademark enforcement strategy and conducting trademark audits.
Effective trademark portfolio development and management are critical to maximizing and protecting a company's brands, which are often among its most valuable business assets. If a trademark portfolio is not properly developed and managed, the company may:
- Face an increased risk of infringement claims and other objections.
- Be unable to fully exploit and obtain value for its trademarks.
- Have difficulty enforcing its rights against infringers.
- Lose rights.
The key elements of trademark portfolio development and management include:
- Developing and maintaining rights.
- Exploiting rights.
- Policing and enforcing rights.
- Conducting trademark audits.
Developing and Maintaining Trademark Rights
While developing their trademark portfolios, mark owners should implement appropriate policies and procedures for:
- Selecting legally protectable marks.
- Searching and clearing new marks.
- Expanding or modifying use of existing marks.
- Ensuring that marks are properly used in commerce.
- Filing new trademark applications to seek federal registration for new marks or expanded or modified use of existing marks.
Trademark counsel should also get involved early in the trademark selection and clearance process to avoid making a significant business commitment to a mark that it cannot protect or that presents infringement risks.
After acquiring trademark rights, companies must properly maintain them by ensuring that:
- The marks are used in commerce and are used properly.
- Trademark registrations and domain names are maintained.
Exploiting Trademark Rights
In addition to using marks in commerce, trademark owners may also exploit their marks by:
- Licensing marks to third parties in exchange for royalties or other consideration.
- Selling marks, for example, marks no longer providing business value.
- Using marks as collateral to secure financing.
Policing and Enforcing Trademark Rights
Trademark owners should also create a trademark policing and enforcement strategy that includes policies and procedures for:
- Monitoring the marketplace for infringements and misuse.
- Investigating suspected infringements and misuse.
- Taking appropriate action against identified infringements and misuse.
- Protecting against cyberpiracy.
- Protecting against counterfeiting and gray market goods.
For more information on key considerations for effectively developing and managing a trademark portfolio, see Practice Note, Trademark Portfolio Development and Management and Trademark Portfolio Development and Management Checklist.
Conducting Trademark Audits
Periodic auditing is also essential for managing a trademark portfolio. A proper trademark audit:
- Provides a trademark owner with a complete picture of its existing trademark portfolio.
- Helps ensure the trademark owner's compliance with requirements and deadlines for acquiring and maintaining rights.
- Helps identify potential risks to the trademark owner's marks from non-use, improper use, chain-of-title issues and third-party conflicts.
- Enables a trademark owner to make informed decisions concerning management of the portfolio, including identifying:
- gaps in trademark registration coverage that may warrant the filing of new applications; and
- marks no longer of business interest.