Evaluating Your Portfolio - The Yearly Trademark Audit

Although it’s technically no longer the beginning of 2016 anymore, it’s always a good idea to reassess your trademark portfolio once per year.  A company’s trademarks are the “face” of its business and, therefore, some of a company’s most valuable assets.  Just like a doctor’s check-up, business owners should thoroughly review their trademark portfolio to evaluate strengths, weaknesses, gaps, and relative value of a company’s trademarks.

Trademark audits should assess the following:

  1. What trademarks are in use currently or are intended to be used this year?  The first step is to assess all of your company’s trademark registrations both domestically and internationally.  You should also check on the USPTO website and equivalent foreign trademark office websites to determine that your registrations are current.
  2. Are there any gaps in your trademark protection?  For example, is your trademark protected in all the countries where your products are sold?  You might want to consider filing an application for a newly updated logo or an intent-to-use application for any new advertising phrases you plan to use this year.  Have you expanded into new product lines?  If so, your existing trademark registrations may not cover the additional goods you are selling. You should also consider whether you may now qualify for acquired distinctiveness on marks that previously could not be protected on the Principal Register.
  3. Are you protecting any trademarks that you no longer intend to use?  If so, you may consider letting the registrations for such marks lapse. Additionally, you may want to consider re-using a tagline for use with a similar good or licensing the mark to another company.
  4. Who actually owns your trademark registrations?  Be sure the correct and best entity owns each of your trademark registrations.  You may wish to restructure your trademark ownership, possibly for tax benefits.  Have all the transfers of trademark registrations been properly recorded against your trademark registrations over the years?  In the event that you want to enforce your trademark rights against an infringer, it will be more difficult to do so if the registrations are in the wrong name.  Have any security interests been recorded and/or released?  If you want to sell your business, transfer your trademark assets, or even license your brand, a clean chain of title is critical.

A trademark audit ensures that your company has protection for marks it is currently using or plans to use in the near future, which will also enable your company to enforce its marks for all relevant goods and services in the geographic areas of interest.  Is it time for a good "Spring cleaning" on your trademark portfolio?

Image by HujiStat, available for use as part of the public domain.

More Reading