Proactive Trademark Practices for Companies – Part 9 Track Trademark Assets and Competitors

Track Trademark Assets and Competitors

An effective strategic IP plan will prompt the development, acquisition, maintenance, and exploitation of IP assets such as trademarks that further company goals and provide value to the company. Keeping an accurate inventory of trademark assets, and the procedures used to acquire, maintain, and exploit them, is an essential first step toward maximizing the return on this investment. This is true whether the company elects to formally register their trademarks or not. Once trademark assets are inventoried and existing IP procedures are documented, areas for improvement can be identified and implemented.

The tracking and documenting of trademarks by a company is not only for the purpose of building the company’s intrinsic value or suing its competition. Taking appropriate steps during each new trademark project to document the right information can significantly reduce the company’s future frustrations, stress and legal bills, especially if it is ever accused of infringing trademarks. Many companies are naive and assume that information can be gathered if and when they are ever accused. But often they find it was never saved to begin with or that the original project participants are no longer with the company or may have forgotten pertinent information.

Consequently, a trademark applicant must be prepared to document the nature, character, and extent of the use of the trademark, and how that use compares with the use of other marks for similar products and services, to show the ordinary course of trade in the applicable field, thereby qualifying it for or supporting a Federal registration as set forth above. Documenting all uses of the mark that involve sales and provision of services is essential data required to establish an effect on interstate commerce.

For a time, as you begin providing products and/or services and using your mark, you should track all sales and services, noting the location of the person to whom the sale is being made or the service provided. For Internet traffic to a site through which relevant products are being sold or services are being provided, if possible, track the general origin of the visitors (through IP address logging, etc.). If your goods and services will be provided only within a state, seek ways to document sales to customers visiting from out-of-state (e.g., asking for ZIP codes at time of sale, etc.).

You should also keep a record of how and when the trademark was selected, adopted, and created, who participated in these processes, and any assignment documents that are needed to confirm company ownership. Documenting ownership and creation helps the company show that the trademark was not taken from someone else and that the company has a right to use it.

The foregoing suggestions will help to strengthen the extent of the use of your mark and support its use in interstate commerce should anyone challenge your right to own that mark. You should also keep specimens of trademark use, as well as make a regular record of the earliest sales and retain copies of invoices along with copies of payment, or other evidence of providing products or services that may be available. Initial sales, and therefore dates of first use, are often questioned when they are not followed up by bona fide commercial sales and when there is no proof of ever having received any payment.

Recognizing the long-term value of and investing in your own company’s IP assets is only part of an overall IP strategy. You should also analyze the strengths and weaknesses of your competition and their trademark and other IP assets. Adopt a systematic program of identifying and analyzing the competition’s trademarks and other IP assets. For example, early information about competitors’ technology under development or in use will allow you to direct investment into areas not already foreclosed by your competitors and to anticipate their attempts to design around or improve upon your own company’s IP assets. Likewise, a systematic program can provide opportunities to enhance the value of your own trademark and other IP assets, spark new ideas, and highlight opportunities and incentives for acquisitions or joint ventures for example. Furthermore, when potential problem areas are discovered early, it is easier to devise solutions, fewer R&D resources are wasted, and exposure to litigation may be limited. Consequently, companies with a systematic approach will have substantial advantages over businesses that do not have such a program.