The end of the year is getting closer. This is a good time to review your trademark portfolio to make sure you’re in good IP health when the new year starts.
Your product and service names
- Have you registered your commercial names?
- Have you released new products or services with new names? Review the names you currently use for your products and services and make sure they are registered as trademarks.
- Do you have logos or other original figurative images that are not registered (e.g. mobile application icons)?
- Are you planning new products or services with new names or logos in the near future?
- Are you planning to update your logo in the near future?
- Are there any other commercial signs or symbols that distinguish your products and services? These could be movement, sound, or colour, to name a few. Trademarks can be so much more than just words and logos.
- Do you have old registrations for marks that are no longer in use? These could be left to expire or used for a new product or service (but make sure the list of goods and services covers the possible new use)?
Goods and services
- Do your registrations cover all current products and services?
- Are you planning new products or services that would not be covered by existing registrations?
- Are there any licensing opportunities to expand the reach of your brand? Even startups can license their brand, it is not only for large companies.
Geography
- Is the geographical coverage sufficient? Have you expanded your client base, marketing activities or manufacturing into new countries?
- Are you planning to enter new markets (including new manufacturing countries) that are not covered by existing registrations?
Maintenance
- Are you using your trademarks correctly? Using them to describe your products or services might erode their distinctiveness and ultimately lead to loss of trademark rights
- Are you using ® and ™ symbols correctly? To recap, the ® symbol is for registered trademarks, the ™ symbol can be used also with unregistered trademarks. You can read more here.
- Are there any old registrations that you can let expire to save costs?
- Do you have any old national registrations in the EU that could be linked to your EU trademark registrations through “seniority”? This will bring significant cost savings.
- Brexit is affecting the scope of EU trademarks. Make sure you know what’s happening. In short, all registered EU trademarks will be protected in the UK through a corresponding national registration. All pending applications can be refiled in the UK to keep the priority date. There is a 9 month period to do that after the end of the transition period (it ends on 31.12.2020). You can read more here.
- Do you have trademark registrations that are more than five years old? Remember to save evidence of use so that nobody can cancel your registration. Remember, this happened to BIG MAC and Ferrari 250 GTO.
If everything is in order, you’re in good shape to tackle the new year. If you need help in improving your trademark situation, we’ll be happy to help.
