Trademark Audits: More Important Than Ever

by Adam Philipp on August 4, 2014

A trademark audit

Can help protect your IP;

Call to arrange one

When was the last time your business had a trademark audit?

If you’re like most companies, the answer is “never.”blog 8.1.14

But failing to give your trademarks a check-up can be a dangerous oversight.

If your business uses trademarks or service marks (registered or not) and you don’t use and maintain them properly you run the risk of losing them – and losing the significant investment and goodwill that may be associated with them.

Your company’s trademarks are the public “face” of your business. They’re valuable assets that never wear out or expire — so long as you take good care of them. According to USA Today, the world’s oldest trademark still in use is for Stella Artois – which dates back to 1366.

One trademark risk that businesses face is “genericide” – being destroyed by their own success.

For example, as the BBC recently reported, Tiffany & Co. is engaged in a dispute in the US with Costco, which it has accused of trademark infringement for selling “Tiffany” engagement rings.

Costco argues that “Tiffany” is now a generic terms for the type of rings at issue.

At a hearing in January, the judge let Costco proceed with the case:

While none of the evidence is by any means conclusive of the proposition advanced by Costco, it is, taken together and read in the light most favorable to Costco in this prediscovery context, sufficient to frame a genuine factual dispute as to whether the terms “Tiffany” and/or “Tiffany setting” have a primarily generic meaning in the minds of members of the general public in the context of ring settings.

Some of the issues that we review in the court in the course of a trademark audit are:

· What trademarks do you have?

· Are they registered or not, and where?

· Do you do business locally, nationally, or internationally?

· Do you have any pending trademark applications?

· How much money are you spending on applications for trademarks you never actually use?

· Have you submitted a “statement of use” for your pending trademarks or when is it due?

· Do you have a written policies for how your employees and third parties use your trademarks? If so, are they aware of it? How do you enforce it?

· Do you have domain names to go with your trademarks? Should you expand your portfolio of domain name registrations to include the new top-level domains?

· Do you use any third-party trademarks? For example, do you re-sell third-party products? If so, do you know what the third party’s trademark guidelines are and whether you’re complying with them? Do you have the right to use these marks?

· Are you aware of whether anyone might be violating your trademark rights?

· Does your business have a distinctive trade dress? For example, do your products, packaging, retail outlet, or restaurant have a distinctive appearance? Are others copying this in order to confuse and potentially “hijack” customers who are looking for your business?

· Are you policing the misuse of your trademarks so that they don’t become generic terms? Do you engage in consumer and media advertising to prevent “genericide” in connection with your marks?

Contact us if you’d like to know more about what a trademark audit can do for you.

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