Spring Cleaning – Eight Easy Ways To Get Your Trademark House In Order

Saturday, March 22, 2014 - 12:38

By the time you read this article, you will have moved your clocks ahead and will be getting ready for a change of season. Just as you might air out your house in anticipation of spring, your company can do the same with its trademark house. The following are eight fairly easy and cost-effective ways for you to take control of your branding and save money in the process.

1. Clean Up The Dead Wood

Take a look at your docket of deadlines and determine which trademark registrations are coming due for maintenance or renewal over the next 18 months. If the marks are no longer in use or have lost their strategic importance, instruct counsel to take no further action. And when you say no further action, make sure counsel knows you mean just that. No reminders and no bills. Simply let the registrations go and incur no further costs.

2. Take Inventory Of Your Current Brands

After you’ve cleared out the dead wood as suggested in No. 1 above, see what’s left and then determine whether there are any valuable brands that are not protected with a registered trademark. Prioritize the marks by value to the business, and then create a three-tiered list of countries where your company uses that brand. File applications for registration immediately in the most important countries. Your outside counsel should be able to provide you an accurate estimate of fees and disbursements as well as the timing from filing to registration. It’s important to remember that it can take several years to obtain a registration; however, in most countries the filing of an application at least secures your place in line against junior filers. And remember, unlike the United States, which recognizes common law rights based on use, in most other countries the right to continue using a mark without the risk of being enjoined by a junior user is dependent on owning a registration.

3. Watch For New Generic Top-Level Domains (gTLDs) And Register Your Mark As A Domain Name Where Appropriate

It’s now old news that the Internet Corporation for Assigned Names and Numbers(ICANN) is starting to approve new generic top-level domains to supplement .com and the others – .gov, .edu, .info, .net and .org – that we have grown accustomed to. What is new news is that as of this writing, there are nearly 130 new functioning top-level domains, among them .CEO, .technology, .management and more. The complete list can be found here. 

Review the list and see if any relate to your business activities. If your company manufactures and sells guitars, for instance, it must register <yourcompanyname.guitar>. If you don’t, someone else will. Yes, there are dispute resolutions systems in place to protect trademark owners. However, all legal proceedings, even arbitrations, are expensive. It is so much easier, faster and less costly to register your trademark as a mark upfront. Since new top-level domains are being rolled out all the time, one easy way to stay on top of the new domains is to record your most important registered marks with the Trademark Clearinghouse (TMCH). Having a trademark recorded in the TMCH allows you to register your mark as a domain name during a sunrise period when no one else can. And even if you choose not to register your mark as a domain name during the sunrise period, the TMCH will notify you when a third party seeks registration of a domain name including your trademark. You can then decide whether you want to file a complaint under ICANN’s Uniform Dispute Resolution Policy (UDRP) or the newly created, less expensive Uniform Rapid Suspension (URS). While the URS is faster and cheaper than a UDRP, the remedy is limited to suspension of the domain name, not a transfer. If you want to own and control the future use of the domain name, use the UDRP.   

4. Register Social Media Profile Names

Companies that communicate with their customers via social media platforms such as Facebook, Twitter and YouTube should register their social media profile names in all existing social media platforms. While Facebook and Twitter are the two most common and well-known social media companies, other social media platforms continue to grow in prominence and popularity. Your company must be prepared to communicate with its customers on these sites as well and to use a consistent profile name across all platforms. Think cross-platform registration is unduly expensive? Wrong. There are third-party services that will register your profile across all existing platforms for a flat fee of $600 and continually register your profile in newly created social media sites on a monthly basis for a relatively small fee. See http://www.knowem.com as an example of one such service. Once again, paying a little money on the front end can save you headaches and higher recovery costs after the damage is done by an unauthorized profile name registration. 

5. Review Your License Agreements

First, make sure your license agreements are not tantamount to an assignment. In other words, make sure they have finite terms and are not perpetual. Make sure there are provisions allowing your company as the trademark owner to control the quality of the licensee’s use of the mark. Once done, be certain that your company is actually exercising that quality control. Second, consider terminating old, unproductive license agreements, and signing up new licensees. And finally, make sure all terminated licensees are no longer using your company’s trademarks.

6. Trademarks Are More Than Words; Look For (and Protect) Non-Traditional Marks And Smells

If Coca-Cola had been interested only in word marks, it would not have protected rights to its unique style of print and the shape of its bottle. Owens Corning would not have registered the color pink for insulation. Harley-Davidson would not have registered the sound of its motorcycle engines, and the owner of U.S. Registration No. 2,568,512 for a mark described as "bubble gum scent" would have been left with a boring word mark for lubricants and motor fuels for land vehicles rather than an interesting smell. The point is this: trademarks come in all forms, and there’s a good chance your company has overlooked a logo, a color, a product shape, a package design, the look and feel of an interior or maybe even a sound or smell. Take a broad-based, comprehensive view. Allow your trademark counsel to be a true partner, to review all your marketing materials, and to provide an opinion as to whether your company may have any unregistered non-traditional marks.   

7. Place Your Most Valuable Trademarks On A Trademark Watching Service

There are many different types of trademark watching services. Some monitor the names of newly formed entities; others monitor newly filed applications, published applications, domain name registrations and usages online, including websites, marketplaces and social media. Your company must be aware of what is out there and be prepared to take prompt and appropriate enforcement action. Otherwise, your valuable brands will lose their distinctiveness and, in time, their market position. Online counterfeiting is rampant, and while many of the best-known marketplaces (e.g., eBay, Alibaba, DHgate.com) have their own IP enforcement policies and procedures, going after sellers on these sites can be like playing WHAC-A-Mole®. While significantly more expensive, oftentimes there is no substitute for going directly after the source. Consult outside trademark counsel for advice on the best policing and enforcement approach. Remember: one size does not fit all.

8. Buy Intellectual Property Insurance

General liability insurance typically excludes coverage for trademark infringement. And while Errors & Omission insurance (E & O) policies may contain coverage for trademark and copyright infringement defense, they most certainly do not provide coverage to help brand owners enforce and protect their rights. 

This is the purpose of IP insurance, which generally is available in three types: defense, prevention, and multi-peril. Defense insurance covers your company against infringement claims, including damage awards. Prevention coverage pays legal expenses required to enforce or protect your trademark rights. Multi-peril coverage helps navigate contingencies of litigation. For example, it can compensate your company for losses suffered as a result of being preliminarily enjoined in a way that business interruption insurance cannot. Other perils that may be covered by an IP Insurance include loss of ongoing royalties, loss of IP value due to nullification, the cost of redesign, remediation and reparations. Speak to both your IP counsel and insurance broker for more information.

Follow these helpful hints, and you’ll keep your trademark house neat, clean and well ordered. And you and your company can be assured of keeping some of your most valued assets safe and secure.


Eric T. Fingerhut is the Leader of Dykema’s Trademark Practice, resident in the firm's Washington, DC office. Ranked as a First Tier trademark lawyer in the World Trademark Review’s “WTR 1000,” he has practiced all aspects of global brand identity and reputation management for more than 20 years. His practice includes trademark, copyright, right of publicity, advertising, marketing, domain name and new media law. 


Please email the author at efingerhut@dykema.com with questions about this article.