In our last blog we discussed the importance of registering your trademarks as a means for avoiding trademark disputes. We continue here by explaining why and how to tend to those registrations once acquired. This tending to is referred to as “portfolio management” or “portfolio maintenance.”
1. This first point seems obvious but it is often overlooked. Ensure that the ownership information in the registration is up-to-date. If there have been any changes to key information since the original registration, the registration needs to be updated. Company name, address, contact email are examples of information that often change and need updating. Otherwise, correspondence from the trademark or someone trying to reach you about your trademark might be missed by you.
2. Periodically, the trademark owner must prove that it is still using the trademark. For federal registrations, renewals are under “Section 9” and proof of your continued use of a mark is made through a Declaration of Continued Use under “Section 8.”
3 Registrations should be reviewed to determine the availability of the mark for incontestability status. Incontestable status shields the trademark from certain (but not all) challenges – making your trademark somewhat bulletproof. Similarly, a mark registered on the Supplemental Register may be appropriate for transfer to the Principal Register, which also strengthens the registration.
4. Registrations should be reviewed to make sure that the goods or services listed in the registration are consistent with your actual use of that trademark. For example, if you began using the mark in connection with plumbing services, that will be reflected in your trademark registration. If you later expand your services to HVAC equipment, you may need to apply to add that new service to your registration.
5. Existing registrations might also not cover all geographic areas where you use your mark. For example, if you registered the mark with the State of California because you only used the mark there, you might need to register the mark elsewhere if you are now using the mark outside California. Another example, perhaps a more common situation, is a mark being initially registered in the United States with the mark later also being used outside the United States. A foreign registration may be appropriate in such circumstances.
6. Also, I’ve seen disclaimers in trademark registrations that may have been appropriate at the time of the initial registration, but are no longer appropriate. (A disclaimer is a declaration from the Trademark Office that the trademark owner does not have the exclusive right to the disclaimed portion of a registered trademark.) For example, in its registration for Google PLACES, Google was required to disclaim “places.” Removal of a disclaimer can strengthen the registration.
It is much easier to address these trademark portfolio issues in advance and not while under time pressure, rather than in response to a crisis created by a third party’s unauthorized use of your trademark or some other external event.
**** Remember, that none of our posts are or can substitute for legal advice. Our posts address general legal matters, while “legal advice,” on the other hand, is tailored by an attorney to fit your particular situation.****
David M. Lilenfeld