soarin' over your trademarks - keys to monetizing your brands
DESCRIPTION
This presentation titled "Soarin' Over Your Trademarks - Keys to Monetizing Your Brands" was given by Knobbe Martens' Partners Susan M. Natland and Jeffrey Van Hoosear to a group of in-house counsel attending the American Corporate Counsel (ACC) SoCal Double Header.TRANSCRIPT
SOARIN’ OVER YOUR TRADEMARKS:
KEYS TO MONETIZING YOUR BRANDS
Susan M. Natland • Patricia A. Conner • Jeffrey Van Hoosear
April 24, 2012
Disney’s Grand Californian Hotel
The recipient may only view this work. No other right or license is granted.
2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
TAKE YOUR BRANDS ON A R.I.D.E.
• Reach out to key stakeholders
• Identify current and future brands, goods/services and geographic regions
• Determine gaps in protection
• Exploit your brands
**An effective POLICING program is mandatory
**Proper TRADEMARK USE is critical
3 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
REACH OUT TO STAKEHOLDERS
Execs
?
Designers
Marketing
Sales
Domain Name
4 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
IDENTIFY YOUR BRANDS
• Identify current and future brands
– Type
• Traditional
• Non-traditional
– Value
• Core
• Secondary
• Shelf life?
Youth Against establishment
5 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
IDENTIFY YOUR PRODUCTS & SERVICES
• What are the relevant products, services, business lines?
– Current
– Future
– Any Acquisitions in the works?
– Potential license deals?
6 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
U.S.
• Identify current and future geographic markets with estimated entry date and estimated yearly revenue
• Where do you currently and plan to…
– Sell?
– Employees?
– Manufacture?
– License?
– Counterfeiting?
IDENTIFY YOUR GEOGRAPHIC MARKETS
CANADA
INDIA EUROPE
CHINA
MEXICO
BRAZIL JAPAN
7 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
DETERMINE GAPS IN PROTECTION
• Review existing trademark estate
• Are there deficiencies based on initial filings?
• Is present geographic coverage adequate?
• Is the claim of goods/services in initial filings broad enough?
• Are all marks of interest being protected?
• Are there any issues in your chain of title?
8 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOIT YOUR BRANDS
Do you have the protection in place to allow your business teams to use and MONETIZE your brands?
• Fill in geographic gaps of protection!
– Especially core marks, important product marks & other long term marks
• Protect key non-traditional marks in regions where it makes sense
– File applications in relevant regions prior to discussing license or distribution or manufacturing agreements
– European Community Trademark Registrations do not cover all of “Europe”
– Consider filing applications utilizing the Madrid Protocol as appropriate
9 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOIT YOUR BRANDS
• Expand scope of existing protection to cover additional goods/services as appropriate!
• Pay close attention to additional Classes of goods/services & new business lines/acquisitions
Watches Sunglasses
Bags Clothing
10 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOIT YOUR BRANDS
• Expand scope of existing protection to cover additional goods/services as appropriate!
• Pay close attention to additional Classes of goods/services & new business lines/acquisitions
– Consider multi-class versus single Class countries
• Canada has no Class system
– Utilize broad filings with keen focus on the future
11 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOIT YOUR BRANDS
• Mitigate against vulnerable existing rights!
– Ensure record owner is up to date
– Understand that non-use can trigger cancellation
• Retain evidence of use
12 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOITING YOUR BRANDS
13 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
EXPLOIT YOUR BRANDS
• Mitigate against vulnerable existing rights!
– Ensure chain of title is up to date
– Understand that non-use can trigger cancellation
• Retain evidence of use
• Re-file in important countries where existing rights may be vulnerable to non-use cancellation action
– Ensure license agreements are appropriately recorded
14 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
PROPER TRADEMARK USE
• Build and maintain brand equity
• Determine whether proper trademark use and notice is being made and cure deficiencies
• Prepare and distribute Trademark Usage Guidelines
• All promotional materials, websites, press releases, product packaging, etc. should be reviewed and approved by Legal prior to launch
• Avoid inconsistent use of your brand (unless you are Google!)
15 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
TRADEMARK POLICING PROGRAM
• Maintain the strength of your brands
• Articulate the scope of protection around each brand
– Consider trademark search
• Watching services
– In tune with articulated scope of protection to pick up problematic marks
– Types (e.g., trademark apps; industry journals; domain names; Google alerts; grass roots; Internet crawlers)
– Timely review is crucial
• Appropriate enforcement is imperative – SHUT DOWN infringement
16 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
TRADEMARK POLICING PROGRAM
• Record key registered marks with relevant Customs
– e.g., U.S., EU, China (covers importation and exportation of counterfeit goods), etc.
• Effectively manage License Agreements
– Know scope of existing License Agreements
– Ensure quality control terms are in place and licensee’s use is consistent with QC
– Do any license agreements need to be renegotiated?
17 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
DON’T FORGET DOMAIN NAMES
• Review your Domain Name estate
– Should any domain names be added?
• New marks
• Negative domain names (e.g., “sucks”)
• Snap back services
– Create and implement domain name enforcement protocol
• Monetize obsolete domain names
– Auction/sell
18 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
ALL IS WELL UNTIL…
• Inability to market your goods/services
• Inability to enter into a favorable brand sale or license
• Unnecessary conflicts with third parties
– Costly
– Negative publicity
• Lost or weakened brand rights
– Allowing third parties to enter the marketplace under the same or similar marks
• Inability to acquire domain names during Sunrise periods
• Often it is too late to fix deficiencies…
19 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
TIMING
• Regularly (e.g., annually)
• When you first join a company
• To prepare for the sale of your company or a division
• As part of due diligence
• Should never be an “after-thought”!
**All of this is to ensure a smooth R.I.D.E. for your brands!!
20 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
QUESTIONS?
YOUR BRAND HERE!
SUSAN M. NATLAND
JEFFREY VAN HOOSEAR
PATRICIA A. CONNER
(949) 721-2909
(949) 721-5274
(949) 999-6388