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New Year – Consider a Trademark Audit

A trademark is an intangible asset of the company that, like most assets, should be audited periodically. Ideally, a trademark audit examines and evaluates the strengths, weaknesses, and relative value of a company's trademarks vis-à-vis its current or future business.

While trademark audits are often conducted prior to acquisition or development of a new technology or product, the beginning of a New Year presents a good point in time in which to evaluate the status of the company's trademark assets.

Trademark audits are typically substantial in scope, but the following is a useful, high-level template for auditing your trademark rights:

  • What's in your portfolio? The first step is to gather information on pending and issued trademark registrations owned by the company, both domestically and internationally. If you don't already have a document detailing pending and registered trademarks, conduct a search for trademark applications and registrations in the name of the company, any prior-used name of the company, the name of any subsidiary or division, and the name of any company that acquired you or that you acquired. ​

  • ​ Compare to what's in use. The next step is to compare what is pending and registered to what is used, or intended for use, by the company or a licensee.

  • Identify gaps in protection. After comparing what you have to what you use or intend to use, identify any gaps in protection. For example, is the trademark protected in all of the countries in which the product is sold or anticipated to be sold? Is the trademark protected for all of the goods and services with which it is used or intended for use? (This is especially important where the trademark is the subject of a licensing or merchandising program.) Consider whether a new application should be filed for an updated logo, or whether an amendment to the drawing of an existing registration may be filed. File intent-to-use applications for product/service marks "in the pipeline" or for those that are not currently protected. Also consider whether a claim of acquired distinctiveness can now be made for trademarks or trade dress previously not available for registration on the Principal Register.

  • What about what's not in use? Registrations for trademarks that are no longer in use may be allowed to lapse, or they may be sold or licensed for use by another under a properly drafted licensing agreement. Consider re-purposing a tagline or slogan for a discontinued product for use with another in the same product class.

A properly conducted audit can help a company bolster and expand its arsenal of trademark protection, clear out dead wood, reduce maintenance expenses, or monetize its trademark rights. And who knows, you may find a Picasso in your trademark attic that you forgot you owned, or that another company would love to add to its collection.

© 2019 Sterne Kessler

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About this Author

Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

202-772-8632
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy to procure fantastic short and long-term results” (World Trademark Review 1000, 2012 and 2013).

202-772-8688