By: Kelly Donohue, Wilkinson Barker Knauer, LLP
Last week, we discussed the benefits of federally registering your trademarks. But having a few federal registrations under your belt doesn’t mean your task of building a valuable trademark portfolio is complete. There are several additional steps you can take to make sure you are managing your trademarks wisely and getting the most value from them.
As we discussed last week, federal registration gives you many benefits and it is the most cost-effective way to protect your brand. Once you have those registrations in hand, however, it is important to periodically take stock in what you own and what you are (or are no longer) using. This can help you identify (1) new brands that can be exploited, potentially opening up new lines of licensing revenue, (2) vulnerabilities in your current trademark practices that could expose you to the risk of litigation, and (3) cost savings by identifying marks that are no longer in use and discontinuing their maintenance and enforcement. Proactively maintaining your trademark portfolio can also help you avoid surprises. Imagine discovering that an important trademark registration has lapsed only through the due diligence being conducted by a potential buyer of your station or station group. Not only is that an embarrassing position to be in, but it could compromise your valuation and your negotiating power.
Now that we have hopefully convinced you that conducting a trademark audit is a worthwhile effort, here are five easy DIY steps that will set you in the right direction:
- Identify your registered marks. The first step in a trademark audit is to identify any federal and state registered marks you own. Gather up a complete list of your active federal and state registrations and any pending applications. If you need help identifying what marks you own, your trademark attorney can help you by running a search in the federal and state databases.
- Identify what marks you use, but have not registered. Do you have any marks that are/have been heavily promoted, but are not registered? If so, consider whether filing a state or federal application would make sense.
- Tip: When trying to assess whether a mark or logo is being used as a trademark, look to see whether it’s something that consumers or advertisers will associate with your goods or services. Think broadly – it could be a logo, the name of a show, a tagline, a radio show host’s name, an element of your social media branding, your app logo, etc. Consider whether you have any non-traditional marks, such as sound marks (think of the NBC chimes). If in doubt, catalog the mark and call your trademark counsel for an assessment.
- Identify your media outlets. Take stock of all potential places where you might be using your marks, such as websites, over-the-air, in advertisements or marketing brochures, etc.
- Assess how the marks are being used. Review all of your media outlets carefully. Are your registered marks being used as registered, and for the services for which they are registered? Is proper notice being made (g., use of the ® symbol)? Take special note of any punctuation inconsistencies or design differences –small discrepancies can create big problems! Do the terms and conditions for your website provide notice of your trademark rights and include a warning that visitors are not free to copy your marks and use them for any purpose without your permission?
- Tip: It is critical to review the description of goods and/or services in a given registration to assess whether the mark is being used as described. If you are using the mark in a new way due to changes in technology or marketing strategies, then you may need to file another application to obtain adequate protection for your mark. For example, a radio station may have its call letters registered for “radio broadcasting services” in Class 38, but that registration arguably would not cover a downloadable streaming app. With today’s rapidly evolving technology, you may be using technologies that didn’t even exist when you first filed your trademark application.
- Assess what marks are registered but no longer in use. You can save some money in legal costs by identifying those marks that are registered, but are no longer in use.
There are other steps you can take as well, such as collecting examples of each mark in use, confirming that the chain of ownership in your registrations is accurate, reviewing the terms of your licensing agreements to ensure that they adequately protect you, etc., but the steps outlined above will get you started. Of course, if you need help or have questions along the way, just ask your friendly trademark attorney.
For more in our series on trademark issues, see Part One on what a trademark is and why it is important. Part Two talked about the importance of trademark searches. Part Three, as set out above, dealt with the benefits of Federal trademark registration. Part Five will run in the next MAB News Briefs, the week of January 9, 2017.
Reprinted by permission.