Build an Ironclad Brand: Trademark Portfolio Maintenance

Best Practices for Maintaining a Trademark Portfolio

Keeping your company's trademark portfolio in good order requires staying on top of multiple deadlines, databases, and other recurring tasks. Here are some best practices to ensure that your trademark rights remain enforceable well into the future but remember that an attorney is your best bet against lapsed registrations and other potential issues with your intellectual property (IP).

1. Identify Assets and Create a Registration Database

First, you'll need to assess your situation by cataloging all your company's active trademarks to ensure that they're properly tracked in its portfolio. This includes things like service marks, slogans, logos, important domain names, and other pieces of IP that represent your business. Your trademark portfolio should also have all information related to your trademarks in this database, such as registration numbers, first date of use in commerce, renewal deadlines, and products associated with the mark.

2. Set Best Practices for Ensuring Clearance

Once you've inventoried your trademark portfolio, you can start implementing practices and procedures. An experienced trademark attorney will be an invaluable asset here, as their guidance can be instrumental in preventing litigation and other legal issues down the line. They can also help by conducting comprehensive trademark clearance searches to assess potential conflicts and provide a full range of due diligence.

3. Carefully Monitor the Trademark Portfolio

You might already know that you need to actively use the contents of your trademark portfolio or else you risk losing out on the protections gained by registering the marks with the United States Patent and Trademark Office (USPTO). You should regularly check up on all your trademarks and their associated products. If your products and trademarks start to diverge too much from the original registration, then it might be time to put in a new application. This clears a path for future growth and can minimize the risk of future litigation.

4. Practice Good Record Keeping

Well-organized files and record keeping can help support your company's claims to its trademark portfolio if there are ever disputes over who owns what mark. Be sure to store registration certificates, evidence of initial use, product photos, licensing contracts, and any other documents that could support your claims in a secure, accessible location. Being able to easily prove ownership will make things a lot easier if anyone tries to contest your trademark rights.

5. Keep Ahead of Deadlines

You'll need to make additional filings with the USPTO beyond your initial registration as a part of maintaining your trademark portfolio. Businesses accidentally lose out on trademark rights due to missed renewals far more frequently than you might think. Legal counsel can flag due dates well in advance and handle any necessary filings, making the whole process a lot easier and secure. For example, maintaining a registered trademark requires filing:

• A Declaration of Use and/or Excusable Nonuse of a Mark under Section 8 or Combined declaration of use & incontestability under Sections 71 & 15 filed between five and six years after registration, and
• A Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9 every ten years after registration.

6. Stay Vigilant Against Potential Infringement

Regularly working with a trademark attorney to conduct audits for potentially infringing marks is necessary to prevent unwanted surprises. They can also help implement procedures to catch bad actors like cybersquatters who can misappropriate your brand through deceptive domain names. When identified early on, your legal counsel can help neutralize many risks before they blow up into expensive problems.

7. Partner with an Experienced Trademark Portfolio Attorney

Handling over the management of your company's trademark portfolio to an attorney can help streamline its maintenance and safeguard your intellectual property from various threats that range from lost registrations to USPTO office actions. This isn't just a huge convenience - it will give you more time to focus on running your company and making the most of its brand identity too.

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