The Importance of a Trademark Check-In: Protecting Your Brand as it Evolves

Trademark registrations are a cornerstone of a strong brand. They help protect the words, logos and other distinctive insignia your customers use to identify your products and services. And they’re critical in any exit strategy. But they’re also not a ‘one-and-done’ task. Business strategies and collateral change, logos evolve, and your intellectual property portfolio has to adapt too. That’s where your routine trademark portfolio review comes in.  

What is a Trademark Portfolio Review? 

A trademark portfolio review is an audit of your existing trademarks and their usage. It involves reviewing several critical aspects of your intellectual property, including your current and pending trademark filings, as well as identifying any unregistered marks.  

Why Conduct a Regular Trademark Portfolio Review?  

While we plan to dig into some of the key business reasons to be careful with your intellectual property in a future post, we’ll list some reasons to review your portfolio regularly here: 

• It ensures alignment between your registered trademarks and your current business offerings and operations.  
• It uncovers potential conflicts at the earliest possible stage.  
• It identifies older registrations that can be abandoned, which may result in cost savings on maintenance fees.  
• It allows you to make informed decisions about brand positioning and enforcement actions.  

What Should You Look At In A Trademark Portfolio Review?  

You should consider the following questions at a minimum:  

• Does your trademark portfolio accurately reflect the marks and logos you are currently using, or are you using marks or slogans that you have not yet cleared and/or applied to register?  
• Are there outdated marks that are no longer in use and no longer require protection?  
• Has your company expanded into new types of products or services, or expanded operations or your customer base into other countries?  
• Have you checked to see whether other companies are using your mark or slogan without permission?  
• Are there strategic marks or slogans that you could develop and register to meet your business objectives?  
• Have you been involved in acquisitions, mergers, partnerships, joint ventures, or other transactions that might affect your trademarks?  
• Have you rebranded or refreshed your company logos or taglines?  
• Have you updated your intellectual property provisions on your website terms and conditions?  

This routine check-in is also a great time to consider whether your brand is using the marks, logos, or ideas of other companies. You’ll typically see this in joint ventures or licensing agreements, but it also arises if you engage in comparative marketing (i.e., marketing that compares your products or services to your competitors). It is critical to ensure that any use of others’ marks is done with permission or qualifies as “fair use.” 

How Often Should You Do a Trademark Check-in? 

The frequency of these check-ins depends on the size and complexity of your business. Companies which are holding steady with established products and services may be able to complete a review every two or more years. However, companies in a growth phase, looking to attract investors or exit in the near term, or that have recently updated their branding should consider adding a trademark portfolio review in the near term.  

If your company is due for a trademark check-in, reach out. CGL recently expanded its trademark and copyright expertise, and our attorneys would love to work with you.  

• Intellectual Property