Tackling Trademark Audits and Reviews

Halloumi cheese producers in Cyprus recently had cause to breathe a “huge sigh of relief” after the government succeeding in re-registering its UK trademark for the distinctive squeaky cheese. The mark had been cancelled following an administrative error where government officials failed to respond to a cancellation notification issued by a British company. While this incident ultimately resulted mainly in red faces for administrators, it illustrates the importance of closely monitoring and proactively managing your trademark portfolio.

A core element of that process should be regular audits of trademarks and associated trademark records. This is because the environment in which trademarks exist changes all the time. Failing to keep track of if and how your trademarks are being used, where new registrations are needed, and which official  deadlines are approaching can result in significant costs and inconvenience to the business e.g. if a mark lapses due to a missed renewal deadline, or perhaps an official action received from the office is left unactioned. Plus, we are all human and we make mistakes. Sometimes critical dates may be input incorrectly or not at all. A regular audit of records will highlight these issues and can prevent costly errors.

Broadly speaking, the two main aims of a trademark audit are:

1. To make sure that IP is adequately protected and there are no significant gaps. It is an important risk management exercise.
2. To Ensure the IP records stored in your IP Portfolio management platform truly reflect the actual IP assets of the business and that the data is free from errors and/or omissions. This will ensure key dates are not overlooked.

What to include in a trademark audit?

Review

An audit should include a review of all materials where trademarks are used, this includes everything from digital assets such as websites, online advertising and social media channels, to hard copy product packaging and advertising. The aim is to check that trademarks are being used and referenced correctly wherever they are displayed. Inconsistent trademark use can weaken brand positioning and make it more difficult to defend against infringements if they occur, as this example relating to well-known lubricant WD-40 shows.

Rationalise old marks and identify new ones

A trademark audit is an opportunity to streamline the portfolio by removing marks that are no longer being used by the business. Similarly, if marks are no longer relevant to particular categories of goods and services, they should be cancelled for those categories. This robust IP hygiene avoids trademark sprawl and ultimately makes management more effective.

An audit is also a chance to identify possible new marks that haven’t yet been registered, such as logos and straplines that are under development. It is important to work with marketing and product development teams, so IP protection is put in place before products or services go live and the risk of a new mark infringing on an existing competitive mark is minimised. An in-house team should have regular meetings scheduled with the marketing department that cover this aspect of audit, and external firms should be checking in with clients at least once per quarter to advise on protection requirements for new initiatives. 

Improve and optimise trademark protection

This is also a valuable opportunity to check that all marks are covered for all relevant territories. If the company is planning to move into new geographical markets, applications to protect IP in those markets should precede expansion.

Auditing trademark records

To underpin the verification of the scope and protection that is in place, it is also important to regularly audit trademark records themselves to check that they are accurate and complete, with the correct deadlines that will trigger automated diary reminders and action notifications. Our support and training manager Christinne, herself an experienced trademark paralegal, recommends that pending marks should be checked quarterly, as most related deadlines are six months or less during the pending period. Registered marks can be checked on a yearly basis.

Auditing trademark records can be a time-consuming process, depending on the systems you have in place and their audit and reporting features. WebTMS has multiple auditing tools to help, such as “search by action”. This allows you to flag up those crucial deadlines or internal dates that could be missing from the records, as Christinne explains: “useful searches would be all trademarks that are Registered that do not have a Next Renewal Due date listed, or all pending records that do not have any actions (deadlines or reminders). You can even get more granular and pull out, for example, all US Records that were filed as an Intent to use, that have a Notice of Allowance Date and do not have Intent to Use Deadlines. You can also check the automatically calculated dates in WebTMS against the date listed in the Actions section for a particular deadline to identify discrepancies.” 

Some IP Portfolio management systems (WebTMS included) also offer a ‘Core Data Audit’ for trademark records, this tool allows our users to automatically check the data entered into key fields against the official data we provide via business partnerships with Compumark and TrademarkNow. This offers a quick rectification for those key fields whereby the user can simply choose to overwrite the erroneous data with the official data.

In-house or outsourced trademark records audit?

Depending on the volume of trademark records that need to be checked, you may find it necessary to employ the services of a third party data service, such as Compumark or Taylor Consulting to standardise data and resolve discrepancies. This will ensure your trademark record data is as clean and accurate as possible, putting you in a strong position to manage your trademarks in future. Companies like this can use their wealth of databases and tools at their disposal to thoroughly comb the IP databases and marketplaces to ensure you are not missing any records / protection that should make up part of your portfolio.

Simon Taylor, of Taylor Consulting has kindly provided some top tips if you’re taking on a trademark records audit yourself:

• Handle your dates with care – it’s extremely important that your dates are properly formatted, especially if you have a combination of US and European dates.
• Know your terminology – when terms are used interchangeably, it’s crucial to ensure you know the headings you use refer to the same information as others expect.
• Clean dirty data – anything from duplications, to variances in company entity formats, can cause delays at IP Offices.
• Establish a clear convention – know which marks are national, and which are member states of treaty marks.
• Consistency is key – reporting on your IP portfolio in the same way minimises the risk of error. When converting, beware of changes such as the “&” symbol becoming HTML “&”.
• Clear version controlling – this is important for all portfolios, but especially those with recordal chains. Ensuring modifications can be traced and, if necessary, reversed is critical.
• One source of data – try to avoid holding your data in multiple locations, as this can lead to some being overlooked when updates are required.

Conducting regular trademark audits and reviews  is a vital activity for robust trademark portfolio management. Keeping up to date with how the marks are being used by marketing and product teams avoids gaps in protection, while checking records themselves helps avoid errors and oversights that can prove costly and cumbersome. With the tools and services available today, auditing trademarks can be a much quicker and more accurate process.

If you’d like to find out more about how to effectively audit trademark records within WebTMS, get in touch with our client team.