. Making senseof the law The TrademarkAudit: What Is It? BY GEORGEGOTTLIEB,ESQ. rand names are found virtually everywhere in all aspectsof modernsociety.Everyproducttodaycarriesits own brand-- technicallya trademark- which distinguishes one productfrom anotherand identifiesthe product's source. Examplesare endless-- televisionsets,silvertractorsandvegetableoil all carry ware,shoes,sunglasses, distinguishingbrands. Even genericproductsfound on supermarketshelvescarry the brand nameof the supermarketor the global producer.Also, todayeveryservice hasa brandnameof its own -- technicallya servicemark -- which distinguishesone serviceproviderfrom its competitionandrefersto its source.Examplesareall around: retail stores,airlines,radiostationsanduniversitiesall uticanreadilyfind themand lize servicemarkssoconsumers distinguishthemfrom othersin the samefield. While brand namesare important and valuablecompany assets,managementoften does not pay the attention requiredto evaluateandprotectthesetrademarks;hencethe needfor a trademarkaudit. Tfademarkaudits will enable responsiblepersonnelin a companyto focus on the taskof keepingmeaningfulconffol of theseassets.A consffuctive andproductiveffademarkauditconsistsof a simplebut efficient threestepapproachto the process:(a) find them;(b) evaluatethem;and (c) registeror maintainthem. George Gottlieb is a founding partner of the New York City intellectual property firm of Gottlieb. Rackman & Reisman,P.C., and afrequent lecturer on patents, trademarlcs, copyrights, and trade dress issues. Finding Your Company'sTbademarks (if theyare Thebestway to find thecompany'strademarks not alreadylistedin a cornpanydatabase or if sucha databasehasnot beenrecentlyupdated)is to conducta careful review of all of the company'sproducts,servicesand relatedliterature. Trademarkscan be createdterms,e.g., thephotographicindustry'sgiant,Kodak@,andthe carpet cleaners,StanleySteemer,or they can be words of the ordinaryEnglishlanguagewhichhavebeenbecometrademarksdue to their associationwith specificproductsor services,such as Life@ magazine. Furthermore,trademarkscanbe phrasesand slogans,logosanddesigns,and evenunusualcolor combinations,packagingor displays, which serveto distinguishthe productor serviceto which they are applied. Thesetrademarksmay be found on the productsthemselves,on boxesor displaysfor the products,andin advertisingandpromotionalmaterials. The Evaluation Phase list is madeof all of thesetradeOncea comprehensive marks,it may well be foundthat someof thesearealready registeredastrademarksor servicemarkson behalfof the company in the United States Patent and Trademark Office. This is partof theevaluationprocess.Is thetrademarkregisteredat all? Is the term in currentuse-- exactly the sameasthetermwhichhasalreadybeenregistered? Or are there somevariationsof the original being used? Are the goodsor serviceson which the term is currently usedidenticalto the goodsor servicesfor which the mark is registeredin the United StatesPatent and Trademark Office? If thereis anyquestionon any of thesepoints,an evaluationshouldbe madeas to whethernew initial or additional trademarkfilings should be submittedto the U.S. Patentand TrademarkOffice. A trademarkattorney shouldbe consultedfor this purpose.Thetrademarkattorney will determineby various meanswhethera given phrase,slogan,unusualcolor combination,logo or display qualifies for a potential trademarkfiling. The trademark attorneyshouldalso give an evaluationof all of the items list of trademarks. on the comprehensive The Registration and Maintenance Process This leads to the third step, which is the possible registration of new trademarks and the maintenance of trademarks which are already registered. The trademark attorney will recommend whether it is necessaryto conduct a searchto determine whether or not a trademark which is being used might conflict with a previously registeredor used trademark of another company. Since many companies are already sophisticated in this area, these companies will routinely contact their trademark attorney prior to adopting any new trademark. However, it often happensthat a company,without knowing better,simply adoptsand starts using a trademark and only later realizes that it should be cleared for use via a searchand then registeredas a trademark in the United States Patent and Trademark Office. All of thesevariations should be taken into accountduring this third step of filing trademark applications and registering them, and maintaining prior registrations. We often hear companies ask: "Since my company has used this trademark for many years and no one has bothered me, why should I bother to registerit for the first time now?" The reasonsare several. First, once a trademark is registered, its status as a registered trademark is readily available through searchesconductedby other companies, and theseother companieswill automatically avoid implementing the use of a trademark which is "confusingly similar" to the registeredmark. Furthermore, once a federal registration is obtained, its coverage is nationwide; a trademark which is simply used by a company, but is not registered,is only protectedin thoseareasin which its reputation has become known (usually those areas in which the product to which the trademark has been applied is regularly shipped). Third, once a trademark is registered, it has a high evidentiary value in a court of lhw, one which will make stopping another company from using the same or a similar mark a much easierfeat to accomplish. One present advantagewhich should be consideredis frling the trademark application for a given trademark in the European Union (EU). The primary value of this procedure is that it will enable a single filing covering the fifteen (15) countries of the European Union in one administrative procedure, thereby eliminating the significant cost of filing in each foreign country separately. The EuropeanUnion covers all of the major countries of commercial importance in Europe. Otherwise, the trademarks will have to be filed separately in the other countries throughout the world. A similar system to the European Union, called the Mercosur, servicesLatin America. As a benchmark,if a company sells at least $10,000 worth of goods and services in a country annually, it already becomesimportant to file a trademark application in that country to protect that trademark. Furthermore, in virtu"first ally all foreign countries, a to file" rule is in force: this meansthat whoever files a trademark application in a given country will be the owner of it even though they may be aware of the prior rights of another company in a different geographic area. Thus, many companies file foreign trademark applications in anticipation of an expansion into a foreign market even though they have not used their foreign trademarksyet in those countries. In summary,the advantageof a trademark audit is to focus on all of the brand name activity of a company. In a company that is not too well organizedin this area,namesmay be adopted by advertising and promotional personnel or production personnel without approval from executive management. A trademark audit will find these trademarks, evaluate them and determine whether or not they should be registeredin this country or abroad. Reprintedfrom: rF Think About Foreign Filings Once the foregoing stepshave been taken, careful consideration should be given to filing one or more of these trademarksin foreign countries which may be of commercial importance to the company involved. Drcn*rneR0lxuARv 2oor IABLEWARE TooAY TI{E TABLEWARE SOURCE