Regularly reviewing the trademark applications and registrations in your company’s portfolio to ensure they align with its needs and priorities is crucial for maximizing the benefits of trademark protection.
What is your company selling?
For starters, compare your company’s product and service offerings to the goods and services in its trademark registrations and applications on a country-by-country basis, identifying gaps in coverage. While it’s ideal to own trademark registrations that cover all of your goods and services, it’s not always practical to do so. For example, a company may regularly offer new or limited-edition products to keep consumers engaged. In these situations, a sensible strategy might be to focus on protecting the trademarks connected to the company’s most profitable, most popular or highest selling products and services.
What hasn’t your company been selling?
Did you know that your company’s registration may be vulnerable to cancelation by a third party because of non-use? It can happen, so a best practice is to regularly assess whether your company is using the marks on every product or service in the registrations it owns on a country-by-country basis. In certain situations, it makes sense to file new applications if some—or all—of the products/services in a registration are not being sold.
Where is your company selling?
Now ask: does the company own trademark registrations/applications in the countries that are critical to its business? In today’s global economy, it’s not uncommon for companies to need trademark protection outside the borders of their home markets. It is a best practice to file for trademark protection up to 1-3 years in advance of entering new country or region. Of course, before filing any new applications, be sure to conduct a trademark availability search to avoid conflicts.
If it’s not practical to secure protection in each country where you’re doing business, prioritize obtaining trademark protections in regions that are strategically important—i.e., markets where the company generates significant sales or where competitors have a strong presence. Securing trademark protection in strategically important countries can strengthen your company’s global presence and mitigate risks associated with international expansion down the road.
What trademarks are being used?
In the US, a company acquires common law, enforceable trademark rights just by using a trademark to identify goods and/or services. While registration of the US Trademark Office provides enhanced legal benefits, it is not required. In most countries other than the US, registration IS required.
This means that your company may wish to prioritize filing applications internationally to cover its most important trademarks, rather than applying to register every single one of its trademarks in the US.
Conclusion
Adhering to a schedule for regular reviews will help identify your company’s gaps in coverage in a timely manner and better ensure that its trademarks align with current business activities and strategic priorities. Companies should follow a timetable that makes sense for their business. An annual audit may work for many organizations, but quarterly or semi-annual reviews may be more appropriate for those that frequently adjust their offerings.