Nancy A. Miller, Partner
Fogler, Rubinoff LLP
nmiller@foglers.com
January 2012
Even if your company is not Coca-Cola®, whose trademarks were valued at over $70 million in 2011, your trademarks and other intellectual property could be among the most valuable assets owned by your business. Like any other valuable asset, trademarks need proper care and maintenance, both to ensure that they can carry out the roles they were designed to perform, and to maximize their value.
With that in mind, it is important to regularly conduct a review, in conjunction with our IP team, to ensure that the following guidelines are being followed on all materials produced by your business:
- Ensure that your trademarks are always used as adjectives, not as nouns or verbs, i.e. Buy ARIELLA bananas, NOT ARIELLAS are great bananas.
- Ensure that your trademarks stand out from any surrounding text.
- Ensure that your trademarks are not used in the plural or possessive forms.
- Ensure that appropriate and accurate trademark and copyright notices are in place.
- Ensure that all licenses are in place, even among affiliated companies, and that proper quality control is exercised. Improper licensing can result in lost trademark rights.
- Ensure that all of the trademarks which you are using have been properly registered and cover the appropriate goods and services: this applies to words, designs, logos, slogans, product configurations. Where the trademark has changed or the goods and services have changed, ensure that your trademark registrations are updated as well. Without proper registration, enforcement is much more difficult and expensive, and the geographic areas you will be able to protect will be restricted.
- Ensure that proper trademark searches have been conducted before adopting any new brands, trademarks, business names, trade names or slogans. This step can save significant amounts in legal fees, re-branding fees and damages.
- Ensure that you have proper trademark use for all of your registered marks, so that they are not cancelled for non-use. Proper trademark use, for goods, requires that the mark appears on the goods themselves, or on the containers in which they are sold.
- Ensure that you own the copyright in all design marks and logos which you use. In Canada, unlike in the United States, if you hire a graphic designer to design artwork for you, such as your logo, or any other printed materials, you need to obtain a written copyright assignment and a waiver of all moral rights, or the copyright will continue to be owned by that designer.
- Ensure that all trademarks which have been acquired in past business transactions are valid and enforceable, and that all trademark assignments have been recorded. Ensure that all security interests and discharges of same are filed promptly with the Canadian Intellectual Property Office.
- Ensure that your trademarks are covered by a conflict watch service so that you are notified of the publication of confusing trademarks so that oppositions can be timely filed.
- Ensure that if infringers are using any of your brands or trademarks, proper steps are taken to enforce your rights, or they will be lost.
- Ensure that you have a program in place for the online monitoring of your brands on the Internet and on social media websites.
See a future IP Currents newsletter for tips on auditing your patent portfolio.
If you are interested in having a trademark audit conducted without charge, please contact us, and we would be pleased to assist.
Nancy Miller is a member of Fogler, Rubinoff’s Intellectual Property Group, which provides a full range of intellectual property legal services, including protecting, licensing and enforcing intellectual property.