The Trademark Doctor Is In: 4 Relatively Painless Ways To Protect Your Company's Future And Increase Your Bottom Line In The Process

by Ladas & Parry LLP

If you are anything like me, you don't think of going to see a doctor when you are not feeling ill.  Even if you like your doctor, you dread the idea of regular check-ups, which grow even more unpleasant when you consider the possibility that she might discover something requiring testing, treatment, and/or follow-up.  Probably after some persistent goading, you end up making an appointment and you maybe even begin to follow your doctor's advice regarding diet and exercise, reluctantly recognising the value of an ounce of prevention over the alternative.
The health of your company’s trademark portfolio requires the same kind of regular review and realignment, preventative maintenance, and a proactive approach.  This is not to suggest that your trademarks are as important as your personal health, but they can be among your company's most valuable assets, generate significant income, and with proper care, outlive you and serve your company for generations.  While your trademarks may not often be your top priority when you have numerous other responsibilities, you might consider the following four relatively painless ways to reduce cost and increase value through proper portfolio management:
1) Review your company's portfolio with your marketing team and legal counsel at least once per year.

An hour or two per year to look with your attorney at the list of your company's trademarks (and related properties, such as domain names and social media accounts), the goods and services covered, the countries in which they are registered/pending, and their statuses and deadlines in relation to your existing business activities and your short and long term plans is time well spent.  This can save your company money, for example, by identifying registrations you no longer need to pursue or maintain (and pay for), or ones that might be replaceable by less costly regional registrations (i.e., the European Community Trademark).  It can also reduce the time and cost of addressing deadlines for individual registrations on a piecemeal basis, and serve to educate and align your attorneys and your businesspeople.  A portfolio review can remind you and inform your counsel to seek appropriate protection for new brands, new products or services, in new markets of interest to your company.  Finally, it can facilitate your company's ability to recycle and leverage your legacy brands for new purposes. 
2) Educate your marketing personnel about when to bring issues and questions to your attention.
Many legal budgets have been exhausted because a marketing person did not timely give the company's trademark counsel sufficient advance notice to consider the risks of the activity.  As a result, numerous litigations have arisen and companies have been forced to rebrand at significant expense.  Regular meetings with your marketing team to learn about what they are pursuing and to educate them about the types of activities that they should bring to your attention and when they should do so can save your company substantial amounts of money.  By helping your marketing personnel to understand why a particular proposed activity might be too risky or when there are appropriate legal steps to take to support it, you can protect the company while fostering a sense of cooperation and alignment between the legal and business teams.  This can minimise any reluctance on the part of the marketing people to bring relevant activities to your attention.  Examples of the kinds of activities about which you should be informed include the planned use of a new brand or sub-brand, the expansion of products or services offered under an existing brand, the short or long term plans to enter a new market, the partnering with another business in which one party will be permitted to use the other’s trademarks under a license, the acquisition or divestiture of a company and its assets or a portion thereof, and the pursuit of a bank loan for which intellectual property rights may be used as collateral.  Your marketing personnel may also need to be informed regarding use of the ™, ®, and other symbols and attribution language on products, marketing materials, and annual reports.
3) Develop a policy regarding monitoring and enforcement of your company's rights.
Ownership of trademarks does not exist in a vacuum.  Rather, your company has an ongoing responsibility to monitor efforts to register or use similar trademarks and to take action in order to protect consumers from attributing the good will of your company to those providing potentially inferior products and services.  While a history of non-enforcement can result in limitations or even an inability to subsequently enforce trademark rights, it is usually impossible to take action against every conflicting application or unauthorised use of the same or a similar mark for similar or related goods or services in every jurisdiction.  By developing an appropriate policy as to the circumstances when your company may likely take action and how aggressive that action should be, you can streamline your monitoring efforts and set appropriate expectations of management and personnel in your company regarding the offending uses they may encounter.  For example, watch services related to trademark applications and domain name registrations can be tailored to reduce the overall number of notices you may receive, while increasing the percentage of those notices which lead to taking action and increasing the success rate.  This can potentially reduce the overall of cost of monitoring services to which you subscribe, the amount of time spent reviewing less relevant watch results, and enforcement costs.
4) Develop an informed strategy for clearing and registering new marks in all of the markets of interest.

You may be tempted to contain costs by initially clearing and applying to register a new mark only in your home country.  This is often penny wise and pound foolish because of the substantial risk that bad faith actors in certain other countries might seek and obtain rights that will later prevent your company from registering its mark and entering that foreign market without payment of a substantial “ransom”.  While there are international treaties that can facilitate efforts to obtain corresponding registrations in other markets, you should educate yourself about the limitations and costs associated with utilizing these mechanisms.  For instance, The Madrid Protocol enables companies in certain major markets to simultaneously apply to register their mark in their home country and in numerous other countries.  However, U.S. companies seeking to do so can discover that they have unnecessarily limited the rights to which they might otherwise be entitled as a result of differences in requirements under differing laws.  Another treaty, The Paris Convention, in principle allows the owner seeking to register its trademark directly in various foreign countries to “claim priority” such that its applications will be treated as if they were filed on the same date as a home country application, provided that the foreign applications are filed within six months of the home application.  While priority can be claimed fairly easily by a non-U.S. applicant seeking to register its mark in the United States, priority claims in other countries frequently require official translations, notarisation, and/or legalisation, the costs and efforts of obtaining which can outweigh the ease of simply applying in the most relevant markets contemporaneously.  Rather than deferring efforts to obtain rights abroad, you should consider the various options and associated limitations, and develop a strategy regarding how best to obtain trademark rights in the markets of interest to your company.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ladas & Parry LLP | Attorney Advertising

Written by:

Ladas & Parry LLP

Ladas & Parry LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.