The word “audit” sounds like something for big companies. Small companies do need audits, right? Wrong. With a trademark audit, you can make sure that you know what assets you have, and that they are protected, exploited, and maintained correctly. You can also identify gaps in your portfolio and even save money.
What is a trademark audit?
A trademark audit is a review of all your trademarks. It should not only focus on the trademarks that you have, but also include trademarkable assets you have but that you have not protected for one reason or another. These could be product or service names, logos, or slogans you use without having registered them.
The main purpose of a trademark audit is to make sure that your assets are properly protected. This is not limited only to making sure that your trademarks are registered, but also going deeper and assessing whether the registrations reflect the current use of the mark. If you have introduced new products or services, it may be that the old registrations do not cover those. Also, if you have expanded to new territories, it may be that the geographical scope of your rights is not sufficient.
A trademark audit can reveal gaps in the protection. It may reveal that you have unprotected assets, or that your current trademarks are not up to date. Conversely, it may reveal that you have trademark registrations that you no longer use. If that’s the case, you should consider if it is possible to put them to use again, sell them, license them, or let them lapse. By taking action, you can save money or in the best scenario even make money. An audit can also reveal overlapping registration. You can for example have the same trademark registered in France, Italy and the EU. Since the EU covers France and Italy, there is an unnecessary overlap. European trademark law contains a useful mechanism to eliminate this overlap (see Seniority – a useful tool to streamline a trademark portfolio).
You should also be aware that if you have trademark registrations for marks that are not in use, the registrations may be liable for cancellation.
A trademark audit helps you ensure your trademark portfolio is in top shape. It will reduce your operational risks and protect your business.
How to do a trademark audit?
When you start a trademark audit, you should list all commercial names, signs, and symbols you use. For each of them, you should list all goods and services for which they are used. In addition, for each name, sign or symbol, you should check all the countries where they are used, or where you plan to use them.
Next, you should review your trademark registrations to see whether they correspond to the list you made. If there are gaps, for example, a product name is not registered in an important country or the registration does not cover the products for which you use the name, you should close this gap by filing a new trademark application(s).
You should also list all trademarks that have been registered for more than five years (or 3 years, depending on the country). If a trademark has been registered for more than 5 years (3 years in some countries, especially in Asia), it can be canceled if the mark has not been used. Because of this, it is important to document the use of your trademarks so that if somebody tries to cancel your registrations, you can defend yourself. Also, in some countries, like in the United States, you need to be able to show use of the mark just to keep your registration in force.
Conclusion
A periodic trademark audit keeps your portfolio up-to-date and your business protected. Keeping the portfolio up to date can also save you money. As an added bonus, if an investor comes, it is always a positive thing if you can show what you own and that your portfolio is up-to-date, relevant from a business perspective, and does not contain excessive weight.
See also
Trademark pyramid
