trademark administration and maintenance - …€¦ · · 2015-10-09trademark administration and...

Copyright © 2015 International Trademark Association 655 Third Avenue, 10th Floor, New York, NY 10017-5646, USA

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Trademark Administration and Maintenance

By Mary Katherine Merlino∗ and Virginia C. Smith∗∗ Updated by Michelle Renne∗∗∗

I. Introduction

This chapter discusses the administration and maintenance of trademark portfolios and describes associated recordkeeping systems. It also addresses the importance of proper recordkeeping procedures and the role they play in the maintenance, defense, policing, and use of trademarks.

The trademark management techniques discussed here are applicable to the activities of a law firm trademark group or a corporate trademark department. A law firm will, however, need to tailor its files, functions, and communications to fit the needs of its clients. These needs will vary from one client to another. In some cases, a client will rely on an outside firm to perform virtually all trademark-related functions; consequently, the trademark group will function much the same as a corporate trademark department would. In other cases, a corporate client may perform many, if not all, functions in-house and require only a limited range of services from an outside firm.

A skilled trademark administrator or paralegal (“Administrator”) can play an active and important role in a well-run trademark administration and maintenance program. The following list, deceptively short in appearance,

∗ Intellectual Property Paralegal, Cozen O’Connor P.C., Philadelphia, Pennsylvania. ∗∗ Paralegal Specialist, Exxon Mobil Corporation, Spring, Texas. ∗∗∗ Senior Marketing Properties Specialist, Mars, Incorporated, McLean, Virginia.

Trademark Administration

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broadly summarizes the Administrator’s activities in such a program. These are discussed in detail in the balance of this chapter.

• Play an active role in the creation and maintenance of files and computer database pertinent to creation, use, prosecution, and maintenance of a mark. This includes docketing in the computer system of all deadlines. Often this role is supervisory, and the actual tasks are performed by file clerks and/or docket clerks.

• Participate in both internal and external policing efforts; structure and administer appropriate programs. Correspond with client and with outside counsel and foreign counsel as appropriate.

• Participate in efforts to ensure proper use of trademarks; structure and administer appropriate programs. Correspond with client and with outside counsel and foreign counsel as appropriate.

II. Recordkeeping and Docketing

A. Importance; Definitions

Clear, accessible, flexible, and complete trademark recordkeeping and docketing are essential to the management of an efficient trademark practice, for several reasons. Poor recordkeeping and docketing can lead to missed deadlines, inappropriate registration of marks, greater costs for the trademark owner, and, in the worst case, irretrievable prejudice to the trademark owner resulting from attorney malpractice. By the same token, proper trademark registration maintenance is necessary to run the entire portfolio accurately and cost-effectively. Further, with the increasing globalization of business, staying informed about international political and legal changes that affect trade in general and trademarks in particular is important both to the practice of law and to the conduct of business, as well as for efficient recordkeeping. In a trademark practice, as in any business, prioritization of work and good time management skills enhance productivity and efficiency. Finally, performing all of these tasks properly makes due diligence, which is required in any legal practice, quicker, easier, more accurate and complete, and less expensive. In trademark practice,


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time and deadline considerations are inseparable from substantive factual and legal information about the portfolio.

In this chapter, “recordkeeping” refers either to the organization of files (both in paper and in electronic form) or to a computer system that tracks and summarizes the contents of the files. “Docketing system” refers to a system of any type used to calendar deadlines.

B. Benefits

The ability to access, sort, and manipulate the contents of a trademark portfolio facilitates finding information and documents when needed. Good recordkeeping makes registration strategy, planning, prosecution, maintenance, resolution of conflicts, due diligence, and litigation easier and less expensive, and can prevent the omission of important documents in due diligence and litigation.

C. Filing Systems

Whatever filing system is used, its chief purpose should be to enable its users to find documents when they are needed, in a relatively quick and easy manner. The type and sophistication of the system used may depend on the size of the portfolio, whether the user is a law firm or a corporation, and other criteria specific to the particular organization.

1. Types of Systems

Generally, in a corporate environment, the organization of trademark files is based on either an alphabetic or a numeric system. The alphabetic system can be organized by trademark, and within a given trademark by country, or vice versa. The sorting method depends solely on the needs of the user. For example:

• MOBIL

o Argentina

o Brazil

o Canada


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or

• Argentina

o ESSO

o EXXON

o MOBIL

If the primary sort is to be by client, as is usual in a law firm environment, either of the above sorting methods may be used as a subsidiary sort, below the listing for the client name or client code. Alphabetic filing systems require care and exceptional consistency in naming files, but if that task is handled correctly anyone can locate any file with ease.

Numeric files are assigned a sequential accession number at creation and placed on the shelf in the numeric order. The number corresponds to the computer record for that matter. This system eliminates uncertainty as to the name of the file when searching; however, it is dependent upon the ability to search the computer or a master list, and in the event of a crash or power outage, the files are inaccessible without a duplicative backup paper system. Numeric systems generally are very popular with law firms, as they can provide a multilayered architecture and the numbers assigned can be the same as, or more easily tied to, billing numbers. A portion of the file/matter number may identify the client or trademark owner, another portion may identify the specific version of the trademark, and a further portion may identify the country/jurisdiction and/or the number or sequence of the application for that specific version of the mark in that jurisdiction.

Examples:

• 01234.0001.TMUS00 (Client.mark.trademark in the United States, first application)

• 01234.0001.TMUS01 (Client.mark.trademark in the United States, second application)

• 1234.0001.TMCA00 (Client.mark.trademark in Canada, first application)


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• 1234.0001.STVA00 (Client.mark.state trademark in Virginia, first application)

With either system, a scan code may be placed on a file so that when the file is withdrawn and scanned there is a record of when and by whom the file was withdrawn. This can facilitate having an office or rooms of files scanned to update the file location database if the Administrator’s firm or department has this resource.

Alternatively, files may be nearly all electronic, utilizing a document management system or file server. This reduces the volume and/or the resources and overhead needed to track physical paper files.

2. Organization of Files Within System

In-house and outside counsel may have different needs and criteria when selecting a filing system. In-house practitioners usually manage the portfolio of only one owner or a limited number of affiliate owners. Outside counsel handles


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the files for multiple clients, which requires the ability to keep the files separate but easily accessible.

The examples of alphabetic and numeric sorting methods described above pertain to all “mark” files, or files created for the prosecution of a specific trademark application. Other types of files are needed for conflicts; agreements; business transactions; and detailed information on country laws, foreign agents, client administration, vendors, and the like. In a corporate environment using an alphabetic system, conflict files usually are indexed by mark. A law firm is likely to index conflict files by client, then by mark; business transactions by mark or the name of the other party involved; country law information by country; and vendor information by either vendor name or type of vendor (e.g., translators).

Trademark registration certificates and original agreements with other parties may require special filing systems such as fireproof safes or off-site secure storage. If a company or law firm adopts a policy requiring special storage of original records, compliance measures will need to be considered when recordkeeping policies are established. Otherwise, original documents may be stored in the file from which they originated. It should be noted, however, that if records retention policies require periodic archiving of files, certificates and agreements will be less accessible once archived. Original agreements in particular can be difficult to locate if filed this way, because it is not always clear from which file the matter originated (i.e., a mark file or a conflict file), particularly when an agreement is worldwide in scope. A useful alternative method might be to file photocopies of the originals in the originating file and store the originals separately, either on-site or off-site. Agreements should be indexed by party and/or mark for ease in location. A cross-reference sheet might be placed in the file to indicate the identity of related files, or the relevant information could be recorded on the file jacket.

a. Electronic/Digital Files

For the sake of efficiency and ease of retrieval it is strongly recommended that the Admnistrator’s firm or department maintain a library of electronic copies of all registration certificates, renewal certificates, recorded assignments/changes to ownership documents, license agreements, consent/coexistence agreements,


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settlement agreements, asset purchase agreements, opposition/cancellation final decisions, and final court decisions. These kinds of documents may be needed for a host of matters, including as evidence/exhibits in responses to refusals to register, enforcement, litigation matters, license agreements, due diligence, divestitures, etc. The most common and compatible electronic form is likely a PDF or a multipage TIFF file. In many cases, the original (hard copy) of the document may need to be pulled only in limited circumstances. Electronic copies of these documents often can be stored in or attached to the docketing system record for the original matter. Depending on how often they are likely to be needed, it may make sense also to keep a library of them together on a document server or in a document management system, so that they can be more easily printed, attached to an email, combined into a larger PDF document, etc.

If the firm or department has not been maintaining some type of digital library of these kinds of documents, and the Administrator has permission to begin keeping one, he or she should bear in mind the following considerations/ recommendations:

• The space limitations and security of the document management, document server, or docketing system.

• Begin with current or new matters, going forward first.

• Develop a plan to prioritize the digitizing/scanning of older registrations and other documents.

• Consider prioritizing core marks first.

• Consider scanning registration certificates and other related documents at the next renewal unless something is needed sooner.

• Choose simple, but consistent, naming conventions for file names that will allow the sorting of a large library based on key criteria and needs. Pay attention to formatting and punctuation so that users can read and absorb the information in long lists. For example:

o (Country) MARK (Cl. ##) – Reg. No. ###### - Registration Certificate (document date)


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o (Country) MARK (Cl. ##) – Reg. No. ##### - Renewal Certificate (document date)

o (Country) MARK (Cl. ##) – Reg. No. ##### - Assignment Recordation (document date)

• If it is decided to incorporate a set of abbreviations, ensure that staff uses these abbreviations consistently.

• Use punctuation thoughtfully and eliminate it from application and registration numbers (no commas, dashes, slashes, etc.).

• Consider how dates may be best sorted and understood from an international perspective. For instance, the date may be given in the form Year-Month-Day (this sequence tends to sort better when all components are numeric). Examples:

o 2015-JAN-01

o 2015-01-01

o 20150101

b. Client and Foreign Agent Contact Lists

It is extremely useful to maintain current contact information for all clients and foreign agents. An individual file can be created for each client that contains information relating to that client—for example, whom to contact for which matters; current mailing address, telephone and fax numbers, and email address(es); billing procedures; and any other information specific to that client. Similarly, individual files, including contact information and fee schedules, can be created for foreign agents in each country. In addition, many trademark databases contain fields for complete agent information, which can be linked directly to the records of the marks for which the agent is responsible; this option is addressed more fully below (see Section II.D). Finally, a “contact book” can be created and be made accessible on a computer network to all users on a read-only basis. Such a resource would be fully searchable in all fields, perhaps organized by country, and would include all contact information for clients, foreign affiliates, agents, and any alternate agents; billing information; and any other


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pertinent details or exceptions. For efficiency’s sake, it is recommended that a spreadsheet be used, in order to maximize sorting and filtering options.

D. Computerized Docketing System

The purchase or upgrade of a computerized trademark docketing system is a critical decision requiring analysis of many needs and factors, including the number of users and types of user access (i.e., ability to change and enter data vs. read-only). Usually the number of persons with editorial clearance is limited, with most users granted access on a read-only basis. This ensures more consistent entry of data and minimizes errors. Features of trademark systems vary widely, and often it is difficult to assess the usefulness and friendliness of a system before using it.

A detailed schedule of trademark features, organized both by feature and by trademark database fields, is set forth in Exhibit 1 and Exhibit 2, respectively. Among the information fields and features that may—or should—be included are the following:

1. All filing and/or registration particulars.

• Mark (need to be consistent when entering descriptions of design marks—e.g., INTERLOCKING X DESIGN vs. DOUBLE X DESIGN)

o Recommended practice: Each version of the mark should bear a distinct description, especially when there are multiple stylized marks and/or versions with design elements. For example:

• MARK (word mark)

• MARK (stylized 1)

• MARK & Design 1

• Country or jurisdiction

• Administrator’s reference

• Client reference

• Agent reference


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• Status (registered, filed, lapsed, etc.) and substatus

• Application and registration numbers and dates

• Ability to display and retrieve images

• Docketing system

• Class and goods and/or services, and whether the class is international or local (request translations of final goods and/or services descriptions from agents)

• Associated marks

• Licenses and registered users

• Changes to ownership recorded (name changes, assignments, security agreements, licenses)

• Owner and/or client—ability to include contact information

• Business unit that uses the mark

• Agent—ability to include complete contact information

• State registrations

• Domain names

• International registrations (IRs), European Community (Community Trade Mark (CTM)) registrations, and African Intellectual Property Organization (Organisation Africaine de la Propriété Intellectuelle) (OAPI) and African Regional Intellectual Property Organization (ARIPO) registrations—special considerations:

o Are all countries covered displayed?

o Ability to add new countries that may join one of these regional organizations in the future?

o Ability to distinguish between a Madrid Agreement member and a Madrid Protocol member?

o Does a search by country (e.g., Spain) reveal protection in that country through an IR or a CTM?


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2. Clearance searches.

• Mark(s)

• Jurisdiction(s)

• Type of search (preliminary, full/comprehensive, design, etc.)

• Status (cleared or not for use; mark adopted or not adopted; etc.)

• Link to record for corresponding application filing, if relevant

3. Conflicts.

• Both parties’ names and marks, with application or registration numbers

• Country or jurisdiction

• Type of conflict (opposition, cancellation, infringement)

• Status

• Resolution details, including abstract of any relevant agreement terms

• Deadlines tied to docketing system

• Initiation and resolution dates

• Ability to link directly to applicable trademark record

4. Third-party agreements.

• Names of parties

• Type of agreement

• Effective and expiration dates and any maintenance dates (e.g., royalty payment dates, license recordal dates)

• Geographic scope

• Any limitations on either party’s use of mark


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5. Full searchability.

• Ability to search for data in any and all fields (invaluable)

• Report generation using any field

• Ability to generate letters or labels

6. Use in planning and monitoring worldwide registration strategy.

A trademark docketing system with a good report-generating capability is an excellent, if not critical, tool to use with the client in planning a worldwide registration strategy and in determining whether a current registration program is on track or needs expansion. Client review of periodic reports can help the managing attorney to spot situations when current registrations are inadequate with respect to geography or goods/services covered or no longer need to be maintained.

1. Docketing Deadlines

A good docketing system should be keyed to the laws of various countries, so that it automatically calculates (1) routine prosecution deadlines, such as office action response dates; (2) use requirements; (3) statements and declarations of use; (4) statutory extensions of time to file statements and declarations of use; (5) tax payments; (6) renewal dates; (7) convention limits for filing dependent applications; and (8) maintenance dates (see Section IV.B, below). For certain countries that provide window periods for filing renewals or declarations of use, the docketing system should include such information. This helps avoid submission of information before the first available filing date and the need to reissue paperwork within the deadline period. It is useful to note these deadlines in the file as well. Consideration should be given to building into the docketing system sufficient lead time to accomplish what is required by the deadline—for example, contacting the client for needed information or specimens of use; drafting documents; legalizations; transit of the documents—and for the foreign agents to prepare the filing and any necessary translations.

A docketing system should also have the flexibility to allow the user to monitor application and conflict status. For example, it is customary to receive a CTM


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registration certificate from the Office for Harmonization in the Internal Market (OHIM), which administers the CTM system, approximately 13–14 months after filing. Many countries, however, can take several years. Knowing what is customary in a particular country allows the user, with a capable docketing program, to set up an appropriate follow-up system for the user’s needs and concerns. The docketing system should have the ability to override computer-generated actions if desired and the flexibility to adapt to the particular needs of different clients and users within one office.

III. Client Communications

A. Client List

Every group of trademark practitioners, whether an in-house group or a law firm, should have a continually updated client contact list, including the current name(s) and address(es) of each client and/or information contact. It is important to know whom to ask for needed information, to ensure that the information obtained is accurate and timely and to avoid wasting time searching for the person with firsthand knowledge. A list of clients greatly aids in helping to “educate” them on the value of their company’s trademarks, the process of obtaining trademark rights, and their role in that process.

B. Requests for Information or Documentation

All requests to clients for information or documentation should clearly and concisely explain what is needed, when the information is needed, and the consequences of failure to receive the information. Frequently, it is helpful to explain why particular material is required, and it is always essential to provide a date by which the requirement should be fulfilled. Sample letters requesting use documentation from the client are shown in Exhibit 3.


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IV. Registration Maintenance

A. Use Files

It is also most useful to collect periodically from the client examples of use, usually in the form of labels or advertising exemplars, that can be used later to prove use and as evidence in conflict matters. Corporate clients should be encouraged to keep, on a regular basis, archival copies of representative labeling and advertising materials. The material can be stored either in the pertinent trademark files or in a separate “use” section of the file room. All material should be clearly labeled by date and geographic, divisional, or other distinguishing origin. One simple way to collect some of this material is to request extra examples or copies of all “evidence of use” material whenever it is requested for a particular purpose (renewal, evidence in conflicts, etc.).

Maintaining use files can save time for all involved, as needed materials often will be at hand. It is important to keep in mind, however, that for many products and services the nature or method of use of the trademark can change frequently. Out-of-date material should never be submitted to prove current use.

Periodic collection of use material also encourages more regular communication with the client. Further, on occasion, clients fail to advise trademark counsel when they change their use of a mark in such a way, either geographically or by altering the goods and/or services provided under the mark, that current registrations no longer provide adequate protection. Keeping regular use files offers another way to learn of such changes and to make appropriate recommendations. The practice of maintaining use files is equally useful for both in-house and outside counsel.

B. Renewals and Other Maintenance Deadlines

A system should be established for reviewing with a client all maintenance deadlines for any given time frame. The system chosen usually depends on the size of the portfolio. Many corporate trademark owners with large portfolios conduct annual maintenance or renewal meetings. Prior to the date set for the meeting, a list of renewal and other maintenance deadlines for the coming year is


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sent to the internal client. The client then has adequate time to review the list with his or her contacts, and has a definite date (the renewal meeting date) by which to obtain all necessary information. At such a renewal meeting, participants review the list of renewals, checking off which registrations should be renewed and which allowed to lapse. The meeting also allows a forum for discussion on whether the current coverage of the client’s marks is appropriate. Renewal meetings are but one system that may be used; owners with smaller portfolios may conduct the entire process in writing, without the need for a personal meeting with the client. Outside counsel often follow a similar procedure, notifying each of their clients of all maintenance activity required in the coming year and setting forth the requirements for meeting the maintenance deadlines.

Whichever the forum or system, clients should have adequate notice to allow early decision making, facilitate accurate budgeting, and afford the opportunity for review of the client’s worldwide overall trademark strategy and the appropriateness and completeness of coverage. The system should allow time for setting out in advance the information the client needs to gather, for mailing and for the agent to complete filings and documentation. Legalizations and Apostilles are required in many countries and often take several weeks to complete. Extra time may also be needed for recordal of any necessary changes of proprietor name or address or changes of powers of attorney.

C. Tracking Agreements, Licenses, Limitations, Coexistence, and Consents

Implementing a system for tracking agreements of all types, both in the computer database and as a means to locate the original of an agreement, is extremely helpful. Such a system makes any future assignment and licensing easier; facilitates due diligence; and helps the client track payments, obligations, and restrictions to avoid violations of any existing agreements or worldwide business plans. It may also play a critical role in prosecuting or defending litigation.


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D. Keeping Current on Political Events Affecting Trademark Practice

Trademark professionals have an obligation to keep current on political events affecting the practice of trademark law. These can involve the creation of new countries, the dissolution of countries, name changes of existing countries, new signatories to or withdrawals from conventions, and trade regulation issues that can affect the legality of doing business in certain countries—and sometimes of even seeking legal advice. This includes the ever-changing list of countries that may be subject to sanctions or embargoes. A mechanism or system should be set up for acquiring and disseminating this information within the group or firm, and between a firm and its clients with international portfolios.

With the growing global marketplace, it is even more important to pay careful attention to current political events. Doing so makes the Administrator more sensitive to the potential that sanctions could be in place or under consideration and should prompt him or her to check the list and regulations. In the United States, such sanctions programs and regulations are administered by the Office of Foreign Asset Control (OFAC) under the Department of the Treasury. Failure to comply with these regulations and restrictions in the case of a particular sanctioned country can have a significant legal impact on the brand owner and its law firm, even if the only action required is to request legal advice from local counsel in a sanctioned country.

Additionally, being aware of political changes can help the Administrator’s team stay on top of or ahead of changes that may result in the opening of new marketplaces that had previously not been available through business channels. In such cases, a portfolio review may be needed if the ability to conduct business in a new market suddenly shifts the strategy from merely maintaining a presence on the register for enforcement purposes to being able to import and sell a branded product. By spotting these kinds of issues, the Administrator can add value to his or her organization and the brand owners it services.

http://www.treasury.gov/resource-center/sanctions/Programs/Pages/Programs.aspx

http://www.treasury.gov/resource-center/sanctions/Programs/Pages/Programs.aspx


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V. Proper Use

A. Identification and Marking in the United States

Trademark owners can, and should, take a number of different steps to protect their trademarks. One of them is to place an identifier next to the mark appropriate to the trademark’s registration status in the country in which it will be used.

The designation TM may be used on any trademark for goods, registered or unregistered, but it is most frequently used and understood to connote common-law or unregistered trademarks. Use of this marking may place third parties on notice that the term, phrase, and/or logo used therewith is being used as a trademark. Similarly, SM may be used on any trademark for services, registered or unregistered, but, like TM, this designation typically connotes a common-law service mark. Use of this marking may place third parties on notice that the term, phrase, and/or logo used therewith is being used as a service mark.

In the United States, the symbol ® can be used only on trademarks or service marks that have been registered on either the Principal Register or the Supplemental Register; use of the symbol without the benefit of registration constitutes fraud against the U.S. Patent and Trademark Office (USPTO). Use of this marking places third parties on notice that the trademark is registered. Proof of regular, consistent use of the ® symbol establishes that any proven infringement was accomplished with notice of registration and, thus, was intentional.

Proof of knowledge of registration by an infringer is the key to enhanced damages and relief under the U.S. Trademark Act (Lanham Act), and prevents the accused infringer from claiming innocent infringing activity.

The ® symbol may also be recognized in many other countries. Other markings—such as, for example, Marca Registrada, used in certain Spanish-speaking countries—may be used for products and services that are marketed in other countries. The applicable laws in each country should be checked before a trademark is used in that country. (See INTA, Country Guides: Essential

http://www.inta.org/CountryGuides/Pages/CountryGuides.aspx


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Information on Trademark Protection Worldwide, for details for many countries.)

B. General Guidelines

Certain general guidelines for the proper use of trademarks hold true for all marks, regardless of the owner, the method or type of use, the party using the mark, or the mark itself:

1. Trademarks should always be used as adjectives, and should be followed by the generic name for the product or service with which they are associated.

2. Trademarks should be set off from the surrounding text by representation in all capital letters, or else a bold or italic font.

3. Trademarks should never be used as verbs.

4. Trademarks should never be used as nouns, singular or plural, or possessive.

5. Slang versions or mutilations of trademarks should be avoided.

6. The registered appearance of a trademark should never be altered, skewed, mutilated, or changed.

Proper Use

ON THE RUN® convenience store services

EXXON® gasoline service stations

Exxpol® catalysts

EnvirosynTM lubricating oils

http://www.inta.org/CountryGuides/Pages/CountryGuides.aspx


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Improper Use

on the run convenience store services

TIGER WASHTM your car

Five drums of Exxpol®

ON THE RUN'S product selection

Exxpol-ize your manufacturing

When following these guidelines or using them to help educate employees and the public, it is helpful to remember that the primary purpose of a trademark is to identify and distinguish the owner’s product or service as originating from a single source. Therefore, the mark should be clearly distinguishable as a trademark. (Also see INTA, Fact Sheet, Trademark Use; INTA, Presentation, Proper Use; INTA, A Guide to Proper Trademark Use for Media, Internet and Publishing Professionals.)

C. Tools

1. Proper Use Manual

A trademark instruction manual is written for the trademark owner’s internal use. It sets forth rules for proper use of a trademark in all communications, whether spoken or printed. Generally, it is prepared under the direction of a trademark attorney and contains basic guidelines covering spelling, capitalization, and use of the generic term, to ensure proper use of a trademark by staff, the press, and the trade. The manual may be in book, brochure, or other form appropriate to the client’s business. It should be posted on the company’s intranet.

2. Brochures or Graphics Standards Manuals

A graphics standards manual is useful for establishing uniformity in the use and display of a mark that appears in logo or stylized form. The manual provides, in

http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkUseFactSheet.aspx

http://www.inta.org/TrademarkBasics/Documents/INTAProperUsePresentation.pptx

http://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf

http://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf


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written and graphic form, a set of standards that specifies the exact ways in which each of the company’s trademarks is to be displayed in print advertising, on the Internet, on product labels, and in all audiovisual uses, including television advertising.

Reviewing internal compliance with the prescribed graphics standards can be the responsibility of the corporation’s legal department, but it is a responsibility often shared with the art, communications, and advertising departments, which are likely to be as involved as the legal department in preparing the manual. The advantages of placing the graphics standards manual on the firm’s intranet are that it is more readily available to all who need it and that the inclusion of downloadable image files facilitates proper reproduction of the client’s trademarks in both form and color. It can be helpful to reference trademark proper use guidance in this manual or have the manual fully incorporate the details of proper trademark use so that marketers and advertising departments and agencies have to refer only to one document for compliance.

3. Proper Use Advertising

Trademarks often are used—and misused—by parties other than the owner. While such use may not be unauthorized, or infringing even if unauthorized, it can frequently be improper. The owner must also police the mark to prevent it from becoming the generic name for a given product or service. The ultimate result of improperly policing a mark can be a loss of ownership rights through loss of its unique identification with the owner. The terms “aspirin,” “thermos,” “escalator,” and “cellophane” were all once trademarks. Because of improper use by the public and failure of the marks’ owners to maintain public recognition of these terms as exclusive trademarks, the marks became generic names identifying types of goods. If a trademark is permitted to become generic, it becomes free for use by everyone making a product of the same type.

A method for ensuring that a trademark is used correctly by third parties (and the owner’s employees) is periodically to place what is called “proper use advertising” in the appropriate print media. These ads are meant to serve as educational tools to make both the media and the public aware of the trademark status of a particular word and to educate them as to its correct use.


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Additionally, trademark registrations that are not used may be attacked as abandoned. Trademark owners, in educating the public about proper use, should also consider whether the actual use of their own marks is for goods and/or services within the registration so that the marks cannot be attacked by third parties raising non-use claims of abandonment.

4. Seminars and Training

Many corporations have made effective use of in-house proper-use trademark seminars and training programs. Their purpose is to familiarize legal, advertising, and marketing staff with the need for proper use of the company’s marks and to explain the required policies and procedures. Effective programs often combine presentations with audiovisual aids and question-and-answer sessions. The aim should be to enlist these departments’ cooperation in achieving the common goal of protecting the company’s marks. Such sessions should be held on a fairly regular basis. Most companies rotate marketing personnel frequently, and even those employees experienced with trademark practices will benefit from reminders of proper use.

Training sessions can also be a good opportunity to update the proper use and graphics standards manual(s) and education programs and to remind trainees of their existence and of the need for compliance with these standards, which is critical to preserving trademarks as valuable assets for the brand owner.

Marketing and sales team members, who are often in the field, are in a great position to identify potential infringers or competitors that may be getting a little too close to the distinctive assets of the company’s brand and need to be watched. The Administrator should engage these team members as his or her partners in identifying unauthorized uses of the brand and bringing them to the Administrator’s attention.

Practice Tip

INTA provides a number of resources, in the form of fact sheets, presentations, informational brochures, and practice guides, that can be incorporated into seminars and training materials for clients. These resources can be given to clients or incorporated into larger training programs and guidelines developed and customized for a client.

http://www.inta.org/TrademarkBasics/FactSheets/Pages/FactSheets.aspx

http://www.inta.org/TrademarkBasics/Pages/Presentations.aspx

http://www.inta.org/TrademarkBasics/Pages/TMBasics.aspx

http://www.inta.org/GlobalTrademark/Pages/Resources-A-Z.aspx


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VI. Trademark Policing

A. Purpose

The primary rationale behind trademark law is that where the trademark owner has established exclusive rights to use of a mark, the public is entitled to rely on that mark for the purpose of identifying goods of a certain established quality from a certain source. Therefore, the owner’s self-interest in maintaining exclusive use of the mark serves to prevent confusion or potential confusion on the part of the consumer. Accordingly, the trademark owner has the burden of preventing others from using the same or a confusingly similar trademark.

The rise of the Internet has greatly multiplied the opportunities for infringement while at the same time increasing the potential for loss or damage to marks in markets around the world. Consequently, the Internet has greatly increased the need for vigilance and vastly multiplied the potential cost of inadequate policing of marks.

Failure by a trademark owner to prevent infringers from using its trademark can eventually result in the loss of exclusive rights. Maintenance of continued exclusive rights to a trademark requires constant policing activity by the trademark owner or its counsel, and therefore can constitute a good share of the work of an Administrator.

B. Techniques

1. Internal Policing

There are two aspects of policing that must be considered. First, there is a need for policing of the internal use of the trademark by the owner itself. Second, the owner must police misuse and infringement by others and be alert to the always-present potential for trademark dilution.

In addition to using proper use manuals, graphics standards manuals, and seminars and training programs, it is useful to establish a program of regular legal department review of advertising, packaging, Internet and intranet content,


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and other trademark-related material. Besides screening such material for proper trademark use, this review can ensure compliance with laws governing advertising. Finally, such review can ensure that the trademarks are being used in the proper manner necessary to prove use of the marks and can serve as an alert to possible licensing needs (i.e., either a trademark should be licensed or an existing license should be attributed). Items appropriate for legal department review include the following:

• Print and Internet advertising (before it is published), including websites and catalogs

• Audiovisual presentations

• Online videos (e.g., YouTube)

• Radio and television commercials

• Proposed product labels

• Point of sale/purchase materials

• Any documents accompanying products (e.g., instruction manuals)

• Annual reports

• SEC documents

• Research and product development papers

• Speeches

• Stationery standards (e.g., business cards, letterheads)

• Trade literature

• Standardized responses to customer or consumer complaints regarding the products or services

Unintentional improper use of a trademark in its own printed materials can haunt a company in litigation. Documents readily available to the public can provide evidence for an opponent in litigation, particularly if generic usage of the trademark is at issue. An additional word of caution applies to research-oriented companies that frequently deal with new trademarks for ingredients or products


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created with new technologies (trademarks for processes generally are not protectable). There may be a great temptation to call an innovative product by its trademark alone, without using its companion generic term. In this way the trademark becomes a name instead of a source identifier. This practice should be avoided. It can lead to the trademark’s becoming the common or generic term for the product. Continuous vigilance in the area of internal policing of the use of a mark is essential to the protection of the company’s marks.

2. External Policing

A number of routine external policing activities can and should be adopted to identify infringing uses of the mark. Following are frequently used methods:

• Professional watching services. These may encompass the following:

o USPTO Trademark Official Gazette (TMOG) and trademark journals of other countries (for trademark applications published for opposition)

o Corporate registers (for new incorporations)

o Common-law—especially Internet—uses (see Section VI.B.2.e, below)

o Watching competitor trademark filings

• Reports from sales force, employees, annuitants (often the best source of common-law uses)

o Consider developing an infringement siting form in order to obtain complete and consistent information

o Provide training to the sales force and marketing teams to help them better spot infringements in the marketplace

• Review of the TMOG and trademark journals from other countries of interest to the client’s business

• Regular searches in a commercial trademark database (to locate newly filed applications before they are published for opposition purposes)

http://www.uspto.gov/learning-and-resources/official-gazette/trademark-official-gazette-tmog


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• Retaining local counsel to monitor periodically the relevant marketplaces in their country for infringing products (depending on the owner’s budget)

a. Trade Directories

Trade associations frequently maintain lists of trademarks owned by members of the association, and a periodic review of such lists may provide information concerning trademarks in that particular industry. These services can be particularly useful in the early stages of trademark searches. After a trademark has been in use for years, it may also be appropriate for the owner to conduct periodic searches of trade sources, such as trade directories or association lists, to identify infringing uses that may have taken place in remote geographical areas. Localized infringing uses may escape the notice of the owner’s sales force or other members of the organization. Another method for uncovering likewise remote but damaging infringing use is to screen telephone and trade directories periodically and, on occasion, conduct a full search of all common-law sources and state and federal registrations.

b. Watching Services

There are a number of reputable watching firms that, for a fee, will watch trademark publications on either a domestic basis, an international basis, or both. Most firms perform the watching service based on a renewable yearly subscription and provide images or copies of relevant citations when found. It is up to the trademark owner to pursue opposition or cancellation of a cited publication with the owner’s trademark attorney or agent, not with the watching firm.

These watching activities serve both a defensive and an offensive role in the policing of a mark. In the event of a lawsuit, they may provide the defense with evidence that a trademark owner has policed and defended a mark from infringing uses. In an offensive role, the information obtained is an early warning device for alerting a trademark owner to potential, or actual, infringing uses of a mark, so that a protest can be sent or legal action taken against the infringer at the earliest possible date. Prolonged use of a mark by an infringer can eventually undermine the trademark rights of the original owner.


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c. Clipping Services

There are also a number of firms that provide “clipping services” for a fee. These firms peruse newspapers, magazines, and other print media for possible infringement of a watched trademark and provide the trademark owner with information on the infringement. As with the watching services, it is the responsibility of the trademark owner to assess the citations received and, where appropriate, to further pursue the cited publication with the owner’s trademark attorney or agent.

Newspaper clipping services may be useful to certain trademark owners. Companies that offer clipping services sell their services primarily to marketing and advertising departments, but they may also be useful to a legal department. Typically, such a service screens print publications to identify use of selected trademarks in articles and advertisements. These clipping services can be subscribed to on a monthly or an annual basis. They can be extremely useful to a trademark owner experiencing a large number of infringements or misuses.

Clipping services, or staff, may discover unintentional misuses of a trademark in the media. Policy advises that the trademark owner contact the writers, editors, or publishers to advise them of the need to use the mark correctly. Care should be taken to tailor the communication to the level of the problem. A telephone call followed by a friendly letter should accomplish the goal of ensuring correct use of the trademark in the future. An example of such a letter is provided in Exhibit 4.

d. USPTO Trademark Official Gazette (TMOG)

This periodical, which is released on the Internet, publishes all trademarks approved by the USPTO for opposition by any party that feels that registration of the published mark would prejudice its rights. Weekly review of the TMOG is essential, because a notice of opposition to registration must be filed within 30 days of the date of publication of the TMOG (extensions may be obtained).

Commonly, an attorney responsible for trademark vigilance and policing activities will review the TMOG; however, a skilled Administrator with a thorough knowledge of a client’s business and trademarks can also identify those marks that may be likely to cause a conflict with or dilution of the client’s marks.


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The Administrator reviewing the TMOG should immediately bring any questionable marks to the attention of the managing attorney.

e. Internet

The Internet should be policed for trademark infringement. While a periodic search of the Internet may turn up infringing uses, the company must create a policy regarding how to deal with infringers on the Internet. Many companies have chosen to ignore some infringements on the Internet because of the difficulty in pursuing the perpetrators. Others are more vigilant and follow up on each infringement.

Policing efforts on the Internet should include a review of domain names as well as what is contained on the web pages themselves. This would include a review of all of the generic top-level domains (gTLDs) and possibly some of the country code top-level domains (ccTLDs).

FURTHER READING: “Brand Protection on the Internet: Domain Names, Social Media, and Beyond.”

http://www.inta.org/trademarkadministration/Documents/BrandProtectionontheInternetWinterfeldt-Final.pdf

http://www.inta.org/trademarkadministration/Documents/BrandProtectionontheInternetWinterfeldt-Final.pdf


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Exhibit 1. Trademark Database Technical Features (not specific to trademarks)

Essential for All Practices

Essential for Large Portfolios or Practices; Helpful for Smaller Portfolios

or Practices Helpful for All Practices

• Full searchability in all fields, including wild card or truncation searching (use of a specific character, usually *, that can represent any, all, or no characters; e.g., ESSO* finds ESSO and ESSOLUBE), and ability to search using multiple criteria at one time

• Ability to rank search results alphabetically or numerically by any field

• Report generation using any field, including use of wild cards or truncation, and ability to generate reports using unlimited multiple criteria

• Ability to rank report data alphabetically or numerically by any field

• Limitation of number of users with editorial clearance

• Ability to copy data from one record to another

• Ability to make global changes affecting large numbers of records

• Ability to view and copy trademark images

• Ability to generate reports with images, and, in particular, ability to export into a spreadsheet

• Compatibility and export capability with word processing, spreadsheet, email, or other programs

• Ability to print individual records • Linkage of primary and all secondary

or dependent records • Ability to create default entries • Ability to save PDF copies of

important documents in the record (e.g., registration certificates, renewal certificates, recorded assignments, name change, consent agreements, settlement agreements, license agreements)

• Ability to associate individual records with a particular parent brand or business division or unit

• Ability to generate correspondence (for email or mail)

• Record of date and person making any editorial change to any record


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Exhibit 2. Trademark Database Fields

A. Basic Trademark Record

Essential for All Practices Essential for Large Portfolios or Practices; Helpful for Smaller Portfolios or Practices Helpful for All Practices

Trademark Trademark image

Country Country laws

Case or record number

Owner • Owner contact information and/or official corporate address or domicile

• Assignment history • Client or business unit (essential for all law firms,

regardless of size) • Client or business unit contact information

• Payment responsibility • Cost tracking

Responsible attorney • Agent • Agent contact information

Status of application or registration Status date

All application and registration particulars

• Registration on which subject application or registration is based

• First use date and ITU (intent to use) indicator • Original registration number (for countries that

change number at renewal) • Priority and seniority claims/dates

Publication data

Next renewal date Renewal decision for next renewal and a renewal notes field Last renewal date

Classes and goods and/or services Inclusion of standard goods and/or services descriptions

Associated marks

Remarks


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B. Actions or Docket Record

Essential for All Practices Essential for Large Portfolios or Practices; Helpful for Smaller Portfolios or Practices

Helpful for All Practices

Linked to applicable trademark record

Automatic generation of certain routine deadlines

Ability to override automatically generated dates

Ability to docket follow-ups and reminders Indicator as to priority of action (reminder, due date)

Responsible attorney

Party responsible for completing action, if different from responsible attorney

Action type (office action, statement of use, opposition)

Specific action required Field for other party name and mark in conflicts or when cited in office actions

Due date Date action taken

Remarks


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C. Conflicts and Agreements



Linked to applicable trademark record(s), displaying, at a minimum, mark and country

Conflict or agreement type (opposition, cancellation, settlement, prior rights, consent, etc.)

• Conflict or opposition number • Direction of conflict (by/vs.) • Expiration date (for agreements)

Other party’s name and mark Other party’s mark’s registration or application number, class, goods and/or services

Cross-reference to other records involving same parties and/or marks

Dates initiated and resolved Status (filed, resolved, etc.) Current detailed status (opposition filed by _____,

decision in _____’s favor, appeal by _____, settled by agreement, etc.)

Remarks Checklist summarizing main terms of agreements. For example: • Other party’s goods

limited • Our use limited

geographically • Parties agree to

coexist • Other party

amended mark • Always use with

house mark


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D. Licenses and Registered Users



Linked to applicable trademark record

Licensee or registered user name Licensee or registered user contact information Changes of licensee or registered user name or ownership

Designation whether party is licensee or registered user

License date Expiration date

Status (active, expired, cancelled) Recordation status

Remarks Summary of royalty terms


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E. Special Considerations for International Registrations (IRs) and Community Trade Mark (CTM) Registrations



Display of all countries covered For IR records, indication if filed under Madrid Protocol or Agreement

Ability to search by a particular country and retrieve all coverage for that country (national, CTM, or IR)

If display of covered IR countries is by individual record, linkage of those records to primary IR record

Ability to add new countries that join European Economic Union or sign Madrid Agreement or Madrid Protocol

Seniorities claimed for CTM registrations


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Exhibit 3. Sample Correspondence Requesting Use Documentation

A. Standard Letter to Client

[Date]

Dear [Client],

As you know, we have filed a U.S. trademark application for the [insert MARK] mark for the following goods and/or services:

[List goods and/or services]

The U.S. Patent and Trademark Office has approved the application and will issue a registration as soon as we file a Statement of Use and proof that the [insert MARK] mark has been used in interstate commerce in connection with the goods and/or services listed above. Please advise whether the mark has been used, and if so, please provide the following information and documentation:

• Confirmation that the [insert MARK] mark has been used in connection with all the goods and/or services described above. If the mark has been used only in connection with some of the goods and/or services, please let us know which ones.

• Date of first use anywhere.

• Date of first use in interstate commerce, if different. If these dates vary for different goods and/or services, please identify which ones and provide first use dates accordingly.

• Name, address, and title of the person with firsthand knowledge of the use of the [insert MARK] mark who will sign the Statement of Use.

• Two specimens showing the mark as it is actually used (labels or photographs showing the mark on the goods as sold are good proof of use). These may be in electronic form.

Our deadline is [insert due date]. If the mark has not yet been used, please confirm that you still have a bona fide intent to use the mark, and we will prepare a request for an extension of time for your signature or the signature of the same person who will sign the Statement of Use.

Thank you for your help, and do not hesitate to call me if you have any questions.

Sincerely yours,

[Name] [Title]


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B. Standard Letter to Sophisticated Trademark Client

[Date]

Re: U.S. Trademark Application No. xx/xxx,xxx Mark: [MARK] Goods/Services: Class No.: [List goods or services] Deadline: [Statement of Use first deadline]

Dear [Client],

A Notice of Allowance issued for the application detailed above. Please provide us with the following information so that we may prepare the Statement of Use:

• Confirmation that the [insert MARK] mark has been used in connection with each and every item of goods and/or services described above. If the mark has been used only in connection with some of the goods and/or services, please let us know which ones.

• Date of first use anywhere.

• Date of first use in interstate commerce, if different. If these dates vary for different goods and/or services, please identify which ones and provide first use dates accordingly.

• Specimens showing the mark as it is actually used (labels or photographs showing the mark on the goods as sold are good proof of use). These may be in electronic form.

If the mark has not yet been used, please confirm that you still have a bona fide intent to use the mark, and we will prepare a request for an extension of time for your signature.

Thank you for your help, and do not hesitate to call me if you have any questions.

Sincerely yours,

[Name] [Title]


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Exhibit 4. Sample Letter Requesting Correct Trademark Usage

[Date]

Editor [Publication] [Street Address] [City, State, ZIP Code]

Dear Editor:

The article titled “[Article Title]” in the [date] issue of [Publication] referred to our product [TRADEMARK + Generic Term] as though the name were the common designation for all different brands of that type of product. Actually, “[TRADEMARK]” is our trademark for ____________________.

We realize that with all the trademarks in use today it is impossible for anyone to recognize all of them. On the other hand, our allowing use of our trademark as a common term could ultimately result in the loss of our rights to the mark.

We are enclosing a current list of our trademarks for your reference. We would appreciate it if, whenever one of these trademarks appears in future issues of your magazine, your proofreaders could check the list to verify the mark’s correct spelling and use.

Thank you for your consideration of our request.

Sincerely yours,

[Name] [Title]