Soarin' Over Your Trademarks - Keys to Monetizing Your Brands

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


REACH OUT TO STAKEHOLDERS

Execs

?

Designers

Marketing

Sales

Domain Name


IDENTIFY YOUR BRANDS

• Identify current and future brands

– Type

• Traditional

• Non-traditional

– Value

• Core

• Secondary

• Shelf life?

Youth Against establishment


IDENTIFY YOUR PRODUCTS & SERVICES

• What are the relevant products, services, business lines?

– Current

– Future

– Any Acquisitions in the works?

– Potential license deals?


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


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?


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


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


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


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


EXPLOITING YOUR BRANDS


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


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!)

http://www.google.com/search?q=eric+carle%27s+the+very+hungry+caterpillar&hl=en&ct=spring09&oi=ddle







http://www.google.com/comicsthemes


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


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?


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


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…


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!!


QUESTIONS?

YOUR BRAND HERE!



SUSAN M. NATLAND

JEFFREY VAN HOOSEAR

PATRICIA A. CONNER

[email protected]

(949) 721-2909

[email protected]

(949) 721-5274

[email protected]

(949) 999-6388

mailto:[email protected]

mailto:[email protected]

Soarin' Over Your Trademarks - Keys to Monetizing Your Brands

Education

Transcript of Soarin' Over Your Trademarks - Keys to Monetizing Your Brands