Sections
Fact Sheets
Español Português 日本語 中文网站
Close login
 
 
About INTA
Fact Sheets
Selecting and Registering a Trademark





Trademark Portfolio Management Strategies


Updated, February 2015

An intellectual property (IP) portfolio is a collection of IP assets belonging to a business enterprise. The portfolio can include different forms of IP, such as patents, trademarks and copyrights, as well as other intangible assets, such as licenses, exclusive distribution contracts and valuable business relationships.

IP portfolio management involves periodically assessing the status of the assets in the portfolio, which can be done through an IP audit, as well as developing strategies that address how IP rights are acquired, exploited, enforced and maintained, in order to maximize their value to the business.


Inside the Trademark Portfolio

A trademark portfolio may comprise registered trademarks and service marks, as well as marks that are in use but not necessarily registered. As trademark rights can be acquired through licenses or assignments as part of franchise agreements, co-branding agreements and other commercial transactions, these will also form part of the portfolio.

A trademark portfolio can also include registered domain names, which usually are trade names or word marks combined with a generic top-level domain (gTLD) or a country code top-level domain (ccTLD) (e.g., yahoo.com, airfrance.us, google.com.jm). Domain names can operate similarly to trade names and trademarks if properly used and registered as such, and they often are regarded as secondary marks in the same “trademark family.” Domain names can provide businesses with an exclusive online advantage and, where they embody trademarks, with an opportunity to attract consumers and extend their reputation and goodwill into cyberspace.

See also Domain Names Fact Sheet
Differences Between Trademarks and Domain Names Fact Sheet


Steps in Managing Your Trademark Portfolio


1. Secure the appropriate or necessary rights.
Develop a protection or rights acquisition strategy. Determine which marks are important and develop a strategy that governs how, where and when you acquire and protect your trademark rights. Determine which jurisdictions are important from a business and marketing perspective. Once your trademark attorney, agent or counsel has conducted the necessary trademark availability searches and cleared your mark for filing, you should proceed to file immediately or take other actions appropriate to the overall strategy.

See also Trademark Searching Fact Sheet
Filing a Trademark Application in the United States Fact Sheet
Filing a Trademark Application Outside the United States Fact Sheet


2. Note important dates and take appropriate action. The timing of an application for registration is critical, because in most jurisdictions the first party to file takes priority over subsequent filers in respect of identical or similar marks.

You should also note the registration date and the date by which the trademark registration must be renewed. Most countries protect a registered trademark for an initial period of ten years from the date of filing and allow for that registration to be renewed indefinitely at subsequent ten-year intervals on payment of the requisite fees. If you miss the renewal deadline and any subsequent grace periods, you could lose your registration.

See also Maintenance and Renewal Fact Sheet


3. Use the marks.
A critical aspect of managing your trademark rights is to ensure that the rights do not lapse as a result of non-use. A registered trademark can be removed from the register, that is, be revoked or cancelled, if the proprietor fails to use it for a certain number of years after registration, with no proper reasons for non-use. In many jurisdictions, ownership rights to a mark may be lost if the mark has not been used for a period of three to five years. It is important to implement programs that ensure either continued use, seasonal use or rotational use of the marks in order to guard against cancellation.

The manner in which trademarks are used enables them to acquire, or maintain, their distinctiveness. Trademarks that lose their distinctiveness and become generic lose their value as trademarks, and the rights become eroded. It is, therefore, important that you ensure correct usage of your marks.

See also Trademarks vs. Generic Terms Fact Sheet
Proper Use Presentation


4. Monitor the use, misuse and infringement of your trademarks.


a. Enforcement Strategies

Critical to maximizing the value of your trademark portfolio are being vigilant and taking swift and appropriate action when an infringement occurs. One highly publicized action can prevent several infringements and put infringers on notice that you are taking protection of your rights seriously. Proprietors must therefore be prepared to take action against infringers in order to maintain their rights, and should determine which strategies—both defensive and offensive—to employ if and when an infringement occurs.

Defensive strategies may save on costs. They include:

  • Prompt registration
  • Securing registered trademarks in important markets
  • Use of TM, SM and ® symbols
  • Monitoring expiration and renewal dates to ensure timely renewals
  • Consistent marketplace surveillance
  • Monitoring competitors’ activities (in advertisements and promotions)
  • Monitoring trademark applications (in trademark journals/gazettes)

More offensive enforcement strategies include:

  • Appealing or opposing applications or registrations (e.g., trademarks that are identical or confusingly similar to yours)
  • Issuing cease and desist letters
  • Publishing warnings to infringers
  • Subscribing to third-party watching services
  • Educating the consumer and resellers on how to identify the genuine product (and thus readily locate the counterfeit) and alerting them to infringing activities
  • Identifying distributors, manufacturers and financial sources of infringement or counterfeiting
  • Registering marks with customs and border control agencies

Your trademark agent, attorney or counsel will help you to determine which infringements to pursue and whether to initiate civil, criminal and/or administrative action where available. Your counsel will also assist in initiating civil proceedings against infringers, organizing police raids for criminal action against counterfeiters and prosecuting offenders through criminal proceedings.

See also Trademark Infringement Fact Sheet
Counterfeiting Fact Sheet


b. Internet Strategies

The Internet has become a haven for infringers. Trademarks have become fair game for cybersquatters, who rush ahead of trademark proprietors to register domain name addresses comprising well-established trademarks in order unduly to profit from the reputation and goodwill of the mark.

Depending on the value of your trademarks and the extent of possible infringements on the Internet, you may wish to employ the services of trademark and domain name watching services. Internet strategies are important for businesses with or without an online presence. They involve:

  • Periodically auditing the use and misuse of your marks on the Internet
  • Checking for conflicting domain names and trademarks on the Internet and in website content
  • Using your trademark as your Internet address (domain name)
  • Ensuring you have registered trademark rights in your domain names
  • Employing technological protection measures

See also Domain Names Fact Sheet
Differences Between Trademarks and Domain Names Fact Sheet


5. Periodically review and assess your trademark portfolio (trademark portfolio planning). A trademark audit is a useful tool for determining and reviewing the status of a business’s trademark portfolio. The audit will help not only to identify IP assets but also to determine the status of the rights affecting those assets and the procedures being employed in the recognition, protection and management of the assets.

The audit can reveal unused or expiring trademarks or disclose defects in the rights so that remedial steps may be taken (e.g., by registering, renewing or using the mark). It also can identify trademarks that are no longer aligned with the business and assist it in determining the appropriate action to take (e.g., to shed or license the asset). It is useful to update the portfolio and to ensure that the portfolio management strategies are aligned with your overall business strategy, competitive intelligence and market analysis. Finally, a large trademark portfolio may necessitate the enlistment of a dedicated legal or IP management team for its management.

For more information on trademark audits, see Susan M. Natland, “The Importance of Trademark Audits,” INTA Bulletin, vol. 63, no. 5 (March 1, 2008).

Please give us your feedback on whether this fact sheet was helpful or if you have suggestions for other fact sheet topics.