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Review Your Trademark Portfolio Every Which Way

WARNING: major trademark nerd content to follow… only those seriously interested in quality assurance need read on!

Seriously, we’re here to share a tip that may help you spot anomalies in your trademark portfolio, thus saving money… and heartache… and priority battles… later on. Here goes: We all know that it’s important to generate and review docket reports listing upcoming filing deadlines. (We like weekly meetings for that purpose.) But it’s often a good idea to add the following to the mix: produce and review a spreadsheet that lists your active registrations and applications in alphabetical order by country, then by mark. Like this:

Country Name

Trademark Name

Class

Trademark Status

Application Number

Filing Date

Publication Date

Registration Number

Registration Date

Next Renewal Date

Australia

DRINKER BIDDLE

45

Pending

123456

10/30/15

 

 

 

 

Benelux

DRINKER BIDDLE

45

Registered

789101112

10/30/15

 

789101112

10/30/15

10/30/25

…and so on. Depending on how large and active your portfolio is, you may want to do this at least quarterly.

Why? It helps you detect patterns: “Hmm, all those applications were filed in country X on the same day, but only one remains pending. Why?” You might need to ask local counsel that question. In so doing, you might be able to preserve an application that could have inadvertently lapsed.

Reviewing the spreadsheet will also help you spot gaps in coverage (“Why is that mark registered in India but not even pending in Pakistan?”).

If you only review deadline reports covering the next few months, you might never notice these issues.

As a QA double-check, consider generating a separate report listing only inactive registrations and applications. Your review of that report will help ensure that no registrations and applications were inadvertently marked as lapsed. And who knows – maybe you’ll think of a way to bring back a once-beloved brand!

©2019 Drinker Biddle & Reath LLP. All Rights Reserved

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About this Author

Jennifer Dean Intellectual Property Lawyer Drinker Biddle
Partner

Jennifer L. Dean assists clients with trademark clearance, registration and enforcement, with a focus on brand selection and management and litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She is vice chair of the firm's Intellectual Property Practice Group and the chair of Drinker Biddle's Trademarks Group.

Jennifer manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues. She assists...

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