Document 6516665

. Making senseof the law
The TrademarkAudit: What Is It?
BY GEORGEGOTTLIEB,ESQ.
rand names are found virtually everywhere in all
aspectsof modernsociety.Everyproducttodaycarriesits
own brand-- technicallya trademark- which distinguishes one productfrom anotherand identifiesthe product's
source. Examplesare endless-- televisionsets,silvertractorsandvegetableoil all carry
ware,shoes,sunglasses,
distinguishingbrands. Even genericproductsfound on
supermarketshelvescarry the brand nameof the supermarketor the global producer.Also, todayeveryservice
hasa brandnameof its own -- technicallya servicemark
-- which distinguishesone serviceproviderfrom its competitionandrefersto its source.Examplesareall around:
retail stores,airlines,radiostationsanduniversitiesall uticanreadilyfind themand
lize servicemarkssoconsumers
distinguishthemfrom othersin the samefield.
While brand namesare important and valuablecompany
assets,managementoften does not pay the attention
requiredto evaluateandprotectthesetrademarks;hencethe
needfor a trademarkaudit. Tfademarkaudits will enable
responsiblepersonnelin a companyto focus on the taskof
keepingmeaningfulconffol of theseassets.A consffuctive
andproductiveffademarkauditconsistsof a simplebut efficient threestepapproachto the process:(a) find them;(b)
evaluatethem;and (c) registeror maintainthem.
George Gottlieb
is a founding partner of the New York
City intellectual
property firm of
Gottlieb. Rackman
& Reisman,P.C.,
and afrequent lecturer on patents,
trademarlcs, copyrights, and trade
dress issues.
Finding Your Company'sTbademarks
(if theyare
Thebestway to find thecompany'strademarks
not alreadylistedin a cornpanydatabase
or if sucha databasehasnot beenrecentlyupdated)is to conducta careful
review of all of the company'sproducts,servicesand
relatedliterature. Trademarkscan be createdterms,e.g.,
thephotographicindustry'sgiant,Kodak@,andthe carpet
cleaners,StanleySteemer,or they can be words of the
ordinaryEnglishlanguagewhichhavebeenbecometrademarksdue to their associationwith specificproductsor
services,such as Life@ magazine. Furthermore,trademarkscanbe phrasesand slogans,logosanddesigns,and
evenunusualcolor combinations,packagingor displays,
which serveto distinguishthe productor serviceto which
they are applied. Thesetrademarksmay be found on the
productsthemselves,on boxesor displaysfor the products,andin advertisingandpromotionalmaterials.
The Evaluation Phase
list is madeof all of thesetradeOncea comprehensive
marks,it may well be foundthat someof thesearealready
registeredastrademarksor servicemarkson behalfof the
company in the United States Patent and Trademark
Office. This is partof theevaluationprocess.Is thetrademarkregisteredat all? Is the term in currentuse-- exactly the sameasthetermwhichhasalreadybeenregistered?
Or are there somevariationsof the original being used?
Are the goodsor serviceson which the term is currently
usedidenticalto the goodsor servicesfor which the mark
is registeredin the United StatesPatent and Trademark
Office? If thereis anyquestionon any of thesepoints,an
evaluationshouldbe madeas to whethernew initial or
additional trademarkfilings should be submittedto the
U.S. Patentand TrademarkOffice. A trademarkattorney
shouldbe consultedfor this purpose.Thetrademarkattorney will determineby various meanswhethera given
phrase,slogan,unusualcolor combination,logo or display
qualifies for a potential trademarkfiling. The trademark
attorneyshouldalso give an evaluationof all of the items
list of trademarks.
on the comprehensive
The Registration and Maintenance Process
This leads to the third step, which is the possible registration of new trademarks and the maintenance of trademarks
which are already registered. The trademark attorney will
recommend whether it is necessaryto conduct a searchto
determine whether or not a trademark which is being used
might conflict with a previously registeredor used trademark of another company. Since many companies are
already sophisticated in this area, these companies will
routinely contact their trademark attorney prior to adopting any new trademark. However, it often happensthat a
company,without knowing better,simply adoptsand starts
using a trademark and only later realizes that it should be
cleared for use via a searchand then registeredas a trademark in the United States Patent and Trademark Office.
All of thesevariations should be taken into accountduring
this third step of filing trademark applications and registering them, and maintaining prior registrations.
We often hear companies ask: "Since my company has
used this trademark for many years and no one has bothered me, why should I bother to registerit for the first time
now?" The reasonsare several. First, once a trademark is
registered, its status as a registered trademark is readily
available through searchesconductedby other companies,
and theseother companieswill automatically avoid implementing the use of a trademark which is "confusingly similar" to the registeredmark. Furthermore, once a federal
registration is obtained, its coverage is nationwide; a
trademark which is simply used by a company, but is not
registered,is only protectedin thoseareasin which its reputation has become known (usually those areas in which
the product to which the trademark has been applied is
regularly shipped). Third, once a trademark is registered,
it has a high evidentiary value in a court of lhw, one which
will make stopping another company from using the same
or a similar mark a much easierfeat to accomplish.
One present advantagewhich should be consideredis frling the trademark application for a given trademark in the
European Union (EU). The primary value of this procedure is that it will enable a single filing covering the fifteen (15) countries of the European Union in one administrative procedure, thereby eliminating the significant
cost of filing in each foreign country separately. The
EuropeanUnion covers all of the major countries of commercial importance in Europe. Otherwise, the trademarks
will have to be filed separately in the other countries
throughout the world. A similar system to the European
Union, called the Mercosur, servicesLatin America.
As a benchmark,if a company sells at least $10,000 worth
of goods and services in a country annually, it already
becomesimportant to file a trademark application in that
country to protect that trademark. Furthermore, in virtu"first
ally all foreign countries, a
to file" rule is in force:
this meansthat whoever files a trademark application in a
given country will be the owner of it even though they may
be aware of the prior rights of another company in a different geographic area. Thus, many companies file foreign trademark applications in anticipation of an expansion into a foreign market even though they have not used
their foreign trademarksyet in those countries.
In summary,the advantageof a trademark audit is to focus
on all of the brand name activity of a company. In a company that is not too well organizedin this area,namesmay
be adopted by advertising and promotional personnel or
production personnel without approval from executive
management. A trademark audit will find these trademarks, evaluate them and determine whether or not they
should be registeredin this country or abroad.
Reprintedfrom:
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Think About Foreign Filings
Once the foregoing stepshave been taken, careful consideration should be given to filing one or more of these
trademarksin foreign countries which may be of commercial importance to the company involved.
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