Recently, I was discussing with a client a topic that I think is often overlooked by businesses.  If you’ve been following us for a while, you know we’re [perhaps not surprisingly] big proponents of businesses registering their trademarks at the federal level.  Although obtaining a registration is an important part of protecting the goodwill that a business has accrued in its trademarks, in connection with the goods/services it currently offers [hint, hint], doing so is not the “end of the story.”

When a company adopts a new mark in connection with its goods and/or services, seeking to “clear,” protect, and register the new mark are fairly obvious steps.  What may be less obvious, however, is ensuring over time that the coverage of an existing trademark registration adequately reflects any changes in the goods and/or services that a company offers.  Business models and company direction often change; companies and divisions are acquired and/or sold, and technology can change drastically.  Over time, the goods and/or services covered by the “original” registration may not fully (or at all) reflect a company’s current operations and offerings.  As a result, a company’s ability to enforce its registered trademark rights and/or use its own marks may be compromised.

Moreover, as time passes, third-parties can enter the marketplace and may be able to register similar marks for goods and services which, while not covered by a company’s original registration, have become core to the company’s business.  When the company belatedly tries to register its mark with significant new goods and/or services, it may suddenly find that it can’t [depending, in part, on the strength of the mark and how crowded the field is].  Consequently, valuable resources may end up having to be spent on cancellations or other actions related to junior users, who might have been deterred by updated filings.

Trademark maintenance and renewal deadlines are natural “checkpoints” for reflecting on the scope of coverage of a company’s trademark registrations, especially when (as is the case in the U.S.) verification of actual use is a part of the renewal filing.  However, such filings are generally due only every 6-10 years and may not be frequent enough to ensure adequate and accurate trademark coverage.  Working with experienced trademark counsel, centralizing management of trademark portfolios, and having an easy-to-read portfolio summary are some steps that companies can take not only to ensure that their trademark registrations continue to reflect marketplace realities, but also to secure their ability to use and enforce their marks, and to hinder junior users of similar marks.

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Danielson Legal is a boutique intellectual property and technology law firm in Cambridge, Massachusetts.

We represent international, national and regional companies, both large and small, in a variety of trademark, patent, copyright, licensing, and related areas of practice.

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