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The Trademark Doctor Is In: 4 Relatively Painless Ways To Protect Your Company's Future And Increase Your Bottom Line In The Process

By Matthew D. Asbell
Posted: 10th September 2013 08:51
If you are anything like me, you don't think of going to see a doctor when you are not feeling ill.  Even if you like your doctor, you dread the idea of regular check-ups, which grow even more unpleasant when you consider the possibility that she might discover something requiring testing, treatment, and/or follow-up.  Probably after some persistent goading, you end up making an appointment and you maybe even begin to follow your doctor's advice regarding diet and exercise, reluctantly recognising the value of an ounce of prevention over the alternative.
The health of your company’s trademark portfolio requires the same kind of regular review and realignment, preventative maintenance, and a proactive approach.  This is not to suggest that your trademarks are as important as your personal health, but they can be among your company's most valuable assets, generate significant income, and with proper care, outlive you and serve your company for generations.  While your trademarks may not often be your top priority when you have numerous other responsibilities, you might consider the following four relatively painless ways to reduce cost and increase value through proper portfolio management:
1)Review your company's portfolio with your marketing team and legal counsel at least once per year.
An hour or two per year to look with your attorney at the list of your company's trademarks (and related properties, such as domain names and social media accounts), the goods and services covered, the countries in which they are registered/pending, and their statuses and deadlines in relation to your existing business activities and your short and long term plans is time well spent.  This can save your company money, for example, by identifying registrations you no longer need to pursue or maintain (and pay for), or ones that might be replaceable by less costly regional registrations (i.e., the European Community Trademark).  It can also reduce the time and cost of addressing deadlines for individual registrations on a piecemeal basis, and serve to educate and align your attorneys and your businesspeople.  A portfolio review can remind you and inform your counsel to seek appropriate protection for new brands, new products or services, in new markets of interest to your company.  Finally, it can facilitate your company's ability to recycle and leverage your legacy brands for new purposes. 
2) Educate your marketing personnel about when to bring issues and questions to your attention.
Many legal budgets have been exhausted because a marketing person did not timely give the company's trademark counsel sufficient advance notice to consider the risks of the activity.  As a result, numerous litigations have arisen and companies have been forced to rebrand at significant expense.  Regular meetings with your marketing team to learn about what they are pursuing and to educate them about the types of activities that they should bring to your attention and when they should do so can save your company substantial amounts of money.  By helping your marketing personnel to understand why a particular proposed activity might be too risky or when there are appropriate legal steps to take to support it, you can protect the company while fostering a sense of cooperation and alignment between the legal and business teams.  This can minimise any reluctance on the part of the marketing people to bring relevant activities to your attention.  Examples of the kinds of activities about which you should be informed include the planned use of a new brand or sub-brand, the expansion of products or services offered under an existing brand, the short or long term plans to enter a new market, the partnering with another business in which one party will be permitted to use the other’s trademarks under a license, the acquisition or divestiture of a company and its assets or a portion thereof, and the pursuit of a bank loan for which intellectual property rights may be used as collateral.  Your marketing personnel may also need to be informed regarding use of the ™, ®, and other symbols and attribution language on products, marketing materials, and annual reports.
3) Develop a policy regarding monitoring and enforcement of your company's rights.
Ownership of trademarks does not exist in a vacuum.  Rather, your company has an ongoing responsibility to monitor efforts to register or use similar trademarks and to take action in order to protect consumers from attributing the good will of your company to those providing potentially inferior products and services.  While a history of non-enforcement can result in limitations or even an inability to subsequently enforce trademark rights, it is usually impossible to take action against every conflicting application or unauthorised use of the same or a similar mark for similar or related goods or services in every jurisdiction.  By developing an appropriate policy as to the circumstances when your company may likely take action and how aggressive that action should be, you can streamline your monitoring efforts and set appropriate expectations of management and personnel in your company regarding the offending uses they may encounter.  For example, watch services related to trademark applications and domain name registrations can be tailored to reduce the overall number of notices you may receive, while increasing the percentage of those notices which lead to taking action and increasing the success rate.  This can potentially reduce the overall of cost of monitoring services to which you subscribe, the amount of time spent reviewing less relevant watch results, and enforcement costs.
4) Develop an informed strategy for clearing and registering new marks in all of the markets of interest.
You may be tempted to contain costs by initially clearing and applying to register a new mark only in your home country.  This is often penny wise and pound foolish because of the substantial risk that bad faith actors in certain other countries might seek and obtain rights that will later prevent your company from registering its mark and entering that foreign market without payment of a substantial “ransom”.  While there are international treaties that can facilitate efforts to obtain corresponding registrations in other markets, you should educate yourself about the limitations and costs associated with utilizing these mechanisms.  For instance, The Madrid Protocol enables companies in certain major markets to simultaneously apply to register their mark in their home country and in numerous other countries.  However, U.S. companies seeking to do so can discover that they have unnecessarily limited the rights to which they might otherwise be entitled as a result of differences in requirements under differing laws.  Another treaty, The Paris Convention, in principle allows the owner seeking to register its trademark directly in various foreign countries to “claim priority” such that its applications will be treated as if they were filed on the same date as a home country application, provided that the foreign applications are filed within six months of the home application.  While priority can be claimed fairly easily by a non-U.S. applicant seeking to register its mark in the United States, priority claims in other countries frequently require official translations, notarisation, and/or legalisation, the costs and efforts of obtaining which can outweigh the ease of simply applying in the most relevant markets contemporaneously.  Rather than deferring efforts to obtain rights abroad, you should consider the various options and associated limitations, and develop a strategy regarding how best to obtain trademark rights in the markets of interest to your company.

Matthew D. Asbell is an Associate of Ladas & Parry LLP. Matthew primarily practices trademark and patent law, both domestically and internationally.  With a diverse background in the entertainment industry, information technology, and medicine and proficiency in several languages, he is comfortable working with a wide range of clients.  His certification as a Social Media Strategist further supports his ability to handle complex intellectual property matters arising in the Web 2.0 space.
Matthew received his B.S. in Psychology from Carnegie Mellon University and attended the Medical College of Pennsylvania and Hahnemann University School of Medicine.  He received his J.D. from the Benjamin N. Cardozo School of Law, where he was president of the Intellectual Property Law Society and Acquisitions Editor of the top-ranked Cardozo Arts and Entertainment Law Journal.  As an active alumnus, he serves on the Cardozo Alumni Executive Committee, chairs the Alumni Intellectual Property Committee, and mentors numerous law students.
Matthew is an active member of the American Bar Association, in which he has served as a Young Lawyer Fellow of the Section of Intellectual Property Law, a Chair and Vice Chair of the Intellectual Property Committee of the Young Lawyers Division, and a Liaison from the Young Lawyers Division to the Section of Intellectual Property Law.  He has chaired the Young Lawyers Committee of the New York State Bar Association Intellectual Property Section, and is an active member of several other bar association committees related to intellectual property.  Matthew has authored and co-authored publications and given presentations on the topics of trademark, licensing, copyright, patent, broadcasting and internet and privacy law.
Prior to becoming a lawyer, Matthew, a native of Philadelphia, moved to New York City, where he managed emerging singer-songwriters and recording artists, trained others to use software applications more efficiently, and met his wife, a Brazilian staff member of the United Nations.  Matthew enjoys all aspects of creativity, technology, language and culture.
Matthew can be contacted by phone on+1 212 708 1800 or alternatively via email at

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