Proper “Use” and Your Trademark Portfolio

I think it is good practice that, from time to time, brand owners audit their trademark portfolio to analyse their current practices, look at their future brand strategy, and compare those two in order to see where shortfalls exist and where current practices may need to be adjusted moving forward.

One part of a trademark audit should include a look into the use of the trademarks currently registered. Improper use of a trademark can lead to trademarks losing their distinctiveness, shrinking of the scope of protection, and loss of clarity in brand identity amongst consumers. Proper notice of trademark rights, such as properly adding the ® symbol to trademarks, can have a deterrent effect on likely infringers. In a similar vein, improper use of the ® symbol varies from country to country (no rules in Brazil; only with registered trademark marks in India, punishable by fines and even imprisonment), and thus having an accurate grasp of one’s trademark use and the relevant legal authority will help avoid unnecessary surprises.

Proper use is also important with respect to use requirements in different jurisdictions. In the United States, the standard of “a bona fide use of the mark in the ordinary course of trade” is necessary before a trademark registration will issue. In the European Union, Community Trade Mark (CTM) applicants receive a trademark registration first, and only after five years could the proprietor be required to demonstrate “genuine use”, and with different standards than in the U.S.

It is important to have an accurate perception of the use of existing registered trademarks and potential marks for which registration may be sought at a later date. By conducting an audit of the portfolio, which includes an assessment of use, trademark usage guidelines can be created for all the relevant parties in a company which is related to use of the brand. This will help to ensure that marketing managers, social media teams, and business groups will all use the brand in a unified and clear manner, and thus protect and increase the value of the brand.

– ck

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