Top Twelve Trademark Transfer Tips (For Portfolio Intake, That Is)

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Congratulations!  Your company just acquired a batch of trademarks from a third party.  There are a lot of minutiae to manage, so how do you decide what to do first?  Here are some suggestions for actions you may want to prioritize.

  1. Notify local counsel in each jurisdiction where you acquired marks. It can be dangerous to delay notifying local counsel of your new ownership.  You might miss out on learning about proceedings filed against your registrations and applications.  If you are pressed for time, consider sending a single email BCCing all the law firms handling your trademark portfolio.  If you don’t have full information about the transferred marks, or if there is significant enforcement action in a given country, it is sometimes helpful to explore whether the transferor’s local counsel can continue to handle the acquired marks.
  2. Confirm filing deadlines. You wouldn’t want to overlook a renewal deadline, or a deadline to respond to a refusal.  Cross-check any deadline reports supplied by the transferor vs. the deadlines generated by your docketing software.  Check public records to address any discrepancies. Bonus tip:  ask local counsel for a courtesy report on upcoming deadlines, and a summary of pending proceedings.
  3. Develop branding and enforcement priorities.  Your list of high-priority markets may differ from the transferor’s.  If so, assess whether you can abandon superfluous registrations and applications, and gracefully exit any ongoing proceedings in lower-priority markets.  You may also want to amp up your enforcement activity and file new applications in key jurisdictions.  (See here, for starters.)
  4. File a new power of attorney with the United States Patent and Trademark Office. This will route correspondence to your preferred U.S. counsel.
  5. Record the transfer with all relevant Trademark Offices. It’s best to do this promptly after the acquisition, before the transferor changes its name or address, or dissolves.  If your address will also change, plan for that as well. Otherwise, expenses can increase exponentially, as discussed here.
  6. Record licenses. Some jurisdictions’ laws require trademark owners to record their trademark licenses with the Trademark Office – otherwise, use of a mark by a licensee may not benefit you, rendering your registrations vulnerable to non-use attack by an adversary.
  7. Analyze and catalogue trademark agreements.  It’s helpful to maintain a running list of agreements affecting your newly acquired trademark rights. Plus, before you send any cease and desist letters, check to make sure that the transferor hadn’t entered into a coexistence agreement with the adversary!
  8. Implement a watching service. Ask the transferor whether they implemented a trademark watching service, and if so, for which marks.  Find out if you can have the service transferred to you, especially if there is time remaining on a paid-for subscription.  Analyze the parameters of those watches to ensure that they are consistent with your branding priorities.  If you’re starting a watching service from scratch, learn more here, and also consider pursuing #9.
  9. Conduct a diagnostic search. If not done as part of due diligence, consider conducting a comprehensive trademark search to assess the scope of protection for your new brand.  This will help inform future enforcement decisions.
  10. Trademark Clearinghouse. Make sure your new “crown jewel” brands are signed up for the Trademark Clearinghouse, to help alert you if potential squatters register domains that incorporate your new brands.
  11. Record your trademark registrations with Customs.  This can help block importation of infringing goods, as described here.
  12. Update branding guidelines.  Preserve your investment by ensuring that your team uses your new brands properly.

If you find that you don’t have the resources to deal with all these details, call your favorite Faegre Drinker trademark lawyer!

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.

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About the Author: Jennifer Dean

Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.