Trademarks, including your company and brand names, are among the most valuable assets of your business. They can contribute directly to revenue generation through royalty or licensing payments, and by building your brand and market identity as well as the goodwill of your company.
An easy and cost-effective way to help ensure that you are protecting these valuable assets is to have experienced trademark counsel perform periodic trademark audits. A trademark audit will, among other things:
Help you identify the trademarks your business uses (including those possibly overlooked by management) as well as any federal and state registrations and applications you own for those marks;
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Assess the manner in which you are using those trademarks (to ensure that you are using them in a manner that will protect your rights and not cause them to be diluted or terminated); and
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Identify potential vulnerabilities in your trademark protection that competitors or copycats could exploit.
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Exploit existing marks
When we perform a trademark audit, we begin by surveying the trademarks currently being used by a business and the goods and services with which they are used, and identify any trademarks that are used outside the United States. We then analyze how they are being used and identify any instances of inadvertent misuse.
During an audit we often discover that trademarks are being used with new products and services that may not have been initially contemplated. We also frequently identify other vulnerabilities in protection, such as, words, phrases, or designs that are being used as trademarks that have not been recognized or registered as trademarks, and use of trademarks to refer to products or services generically (which will result in the loss of trademark rights). During an audit, we also often find that the business has expanded its use of a trademark to jurisdictions outside the United States. Because trademark rights are territorial, it is very important to identify any conflicts to use of a trademark in a jurisdiction prior to using the mark in that jurisdiction. As part of our audit, we also compare the list we generate with a list of your company’s applications and registrations, and verify that each application and registration is properly titled in the business’s name, which is particularly important in the case of trademarks acquired from others.
Domain Names
An audit also will identify all the domain names your company owns and those that you don’t own but might want to consider acquiring. Ensuring that you own the domain names that correspond to your trademarks is a relatively inexpensive means to prevent competitors and others from adopting those domain names and trademarks.
Do I need a federal trademark registration?
No, you don’t need a federal trademark registration to own or use a mark, but there are substantial benefits to doing so. Among other things, a federal trademark registration confers a legal presumption of ownership of the trademark nationwide, the exclusive right to use the
trademark on or in connection with those goods or services set forth in the registration, and the right to enforce your trademark rights in federal court (including the right to certain types of remedies not available for unregistered trademarks). When evaluating potential new marks, review our September 15, 2011 article for helpful tips about how to select strong trademarks by clicking here.
Do I need to register every trademark I use?
As with every investment your business makes, you should undertake a cost/benefit analysis before deciding whether to file a registration application. Such an analysis should include evaluating the profitability of the goods or services sold under the mark and the length of time you plan to use the mark. While there is no requirement that a registration application be filed prior to using a mark, it is critical to do some due diligence prior to adopting a new mark to avoid conflicts with pre-existing marks. We regularly assist clients with these types of analyses by identifying prior trademark registrations, pending trademark applications and other third party trademarks that might bar use of a proposed trademark. Early identification of such prior trademarks can result in significant cost savings in the event someone objects to your use of a proposed new trademark.
What else should I do to protect my trademarks?
You should periodically check your own marketing materials to ensure that your marks are being used and noticed properly. Additionally, you should monitor your competitors’ advertising and promotion activities, and consider sending cease and desist letters to infringers where appropriate. You also need to regularly monitor usage of your company’s trademarks on the internet. Failing to taking action to protect your trademark rights can result in a legal determination that you have abandoned those rights.
Contact Joseph S. Heino (jheino@dkattorneys.com) at 414-225-1452 or your D&K attorney with any questions regarding trademark audits or actions you can take to protect your trademarks (and the revenue they provide to your company).