Trademarks – New Year, Clean Start

As 2016 draws to a close, now is the perfect time to slow down (or at least try), wrap up loose ends, and plan for the promise and possibility of a new year.

For businesses, the holidays are a particularly good time to take stock of assets and consider opportunities on the horizon. And, because brand assets are among a business’s most valuable properties, taking a year-end look at trademarks is a great way to ensure the portfolio is primed to work for the business in the coming year.

Following are some tips to help kick-start an annual year-end trademark audit:

• Form of Marks: Consider whether marks are still being used in the way they are registered. For example, is the mark now being used as one word instead of two? Has the mark taken on an altered, shortened, or abbreviated form in the minds of consumers? Are marks being used properly as trademarks (i.e., set out from surrounding text, marked as trademarks, and not used descriptively)?
• Accurate Goods/Services: Determine whether marks are still in use for all of the goods/services listed in their respective registrations.
• Expand Coverage: Determine whether use of any marks has expanded to warrant additional filings to cover new countries, products, or services.
• Formalize Protection: Identify marks currently in use that have not been registered and consider whether securing federal registrations would enhance their value.
• Ownership: Confirm that all marks are owned by the proper entity. If your business has acquired another’s assets in the last year, check to be sure that trademark assignments were executed and recorded with the U.S. Patent and Trademark Office. And, confirm that ownership records with various trademark offices reflect correct entity name, type, and address.
• Plan Ahead: Think about new marks that may need to be cleared for use with new product and service offerings, and search early to avoid having to change branding strategy mid-stream.

Domain names are also important brand assets, particularly for core brands or for products and services transacted for online. Some domain names may have perpetual value and need to be vigilantly maintained, while others may matter for a more limited time and can be jettisoned as soon as it is practical to do so. To be sure your domain names are supporting your trademark portfolio and overall brand identity, here are some tips for keeping a domain portfolio in good order:

• Compare to Brands: Review your domain name portfolio to be sure you own or otherwise control the domain names for your core brands. A simple administrative oversight is enough to allow registration for an important domain name to lapse.
• Plan Ahead: As you plan for the year ahead, purchase the appropriate domain names for new marks you intend to introduce over the course of the year. Consider registering them for one year and then renew only those that become part of a product launch, brand expansion, or otherwise have continuing value.
• Cull the Herd: If you still own domain names for discontinued products and/or services, consider taking them off of auto-renew so they’ll lapse when the registration expires.
• Check Ownership: Be sure your business is listed as the registrant and that the administrative and technical contacts are current. It is easy for an employee to inadvertently enter personal contact information when registering or renewing domain name registrations.
• Consider New gTLDs: The expansion of the generic top level domain name market has provided opportunities to register names directed to specific markets – including product or geographic categories. Although not for everyone, these new names may provide opportunities for those interested in a top level domain directed to a specific market.

These are just a few tips for how to take stock of your brand portfolios and keep them in ship shape. As you wrap up 2016 and set your sights on the new year, we wish you and your business a productive and successful 2017, full of promise, possibility, and opportunity. Thank you for the opportunity to be a part of your story!

This article appeared in the December 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.