Review Your Portfolio Every Which Way


WARNING: major trademark nerd content to follow… only those seriously interested in quality assurance need read on!

Seriously, we’re here to share a tip that may help you spot anomalies in your trademark portfolio, thus saving money… and heartache… and priority battles… later on. Here goes: We all know that it’s important to generate and review docket reports listing upcoming filing deadlines. (We like weekly meetings for that purpose.) But it’s often a good idea to add the following to the mix: produce and review a spreadsheet that lists your active registrations and applications in alphabetical order by country, then by mark. Like this:

Country Name Trademark Name Class Trademark Status Application Number Filing Date Publication Date Registration Number Registration Date Next Renewal Date
Australia DRINKER BIDDLE 45 Pending 123456 10/30/15
Benelux DRINKER BIDDLE 45 Registered 789101112 10/30/15 789101112 10/30/15 10/30/25

…and so on. Depending on how large and active your portfolio is, you may want to do this at least quarterly.

Why? It helps you detect patterns: “Hmm, all those applications were filed in country X on the same day, but only one remains pending. Why?” You might need to ask local counsel that question. In so doing, you might be able to preserve an application that could have inadvertently lapsed.

Reviewing the spreadsheet will also help you spot gaps in coverage (“Why is that mark registered in India but not even pending in Pakistan?”).

If you only review deadline reports covering the next few months, you might never notice these issues.

As a QA double-check, consider generating a separate report listing only inactive registrations and applications. Your review of that report will help ensure that no registrations and applications were inadvertently marked as lapsed. And who knows – maybe you’ll think of a way to bring back a once-beloved brand!

This entry was posted in Branding, Trademark Portfolio Management and tagged by .
Date Published: June 28, 2016
Jennifer L. Dean is a partner and vice-chair of the firm's Intellectual Property Practice Group, and the chair of Drinker Biddle's Trademarks practice team. The World Trademark Review 1000 survey has described Jennifer as the “smart, fast and practical” chair of a “proactive, extremely knowledgeable and timing-sensitive” group that provides “incomparably good” service. In addition, Managing Intellectual Property has repeatedly named Jennifer among the “Top 250 Women in IP,” and identified her as an “IP Star” on numerous occasions. Jennifer's practice encompasses trademark clearance, registration and enforcement, focusing in particular on brand selection and management, and on litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues.