Why it Pays to Make Nice with Marketing

You may have read here before about the U.S. Patent and Trademark Office’s (USPTO) increased focus on removing “deadwood” – registrations that remain in force, but cover marks that are not actually in use for all of the covered goods and services — from the U.S. Trademark Register. The USPTO is considering various options for improving the accuracy of the Register, and this initiative is just one of many reasons why legal and marketing departments need to work closely together on trademark registration and protection strategy.

When both legal and marketing departments understand the plans and goals for a particular trademark, it simplifies laying the groundwork for effective registration, maintenance, and enforcement of the brand. It also makes it easier to maintain registrations going forward, particularly in the U.S., which requires periodic filing of declarations and specimens attesting to continued use of a mark as registered.

Following are five points that marketing and legal departments should discuss over the lifespan of a brand:

1. At inception, make sure all parties share a complete understanding of how exactly the mark will be used, and for what goods and services. Marketing departments are paid to be creative, and often have large and/or unusual plans for brand expansion and use that they do not fully share with the legal department. Similarly, the legal department will be able to advise early on how to properly use a mark to support registration, before promotion and use begin
2. At filing, identify product or service categories as broadly as allowed by the USPTO, to make it easier to attest to continued use of the mark, and supply suitable specimens, in the future in the event of a shift in business focus.
3. Throughout the lifespan of the brand, monitor the mark for proper and consistent use – be mindful that changes to or alternate formats, including the addition of new elements to a mark, could render current trademark registrations obsolete and necessitate additional investment in filings.
4. Routinely, prepare for post-registration maintenance and/or brand expansion, by evaluating brand goals.
5. Always, communicate regularly with one another, and maintain files showing use of the mark – to simplify meeting the USPTO’s periodic specimen/use requirements necessary to maintain registrations.

​Collaboration between legal and marketing can help a company create a more effective registration and enforcement strategy, saving the company time and money while making sure key brand assets are protected for years to come.

This article appeared in the July 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.