Strategic Trademark Portfolio Protection:
Playing Offense and Defense
Palo Alto
November 13, 2015
Susan L. Heller
Greenberg Traurig, LLP, Shareholder
Chair, Global Trademark & Brand Management
[email protected]
310.586.6568 or 949.732.6810
Cynthia Lock Tregillis
Western Digital, Senior Director
Global Brand Protection & Trademark Law
[email protected]
949.672.7727
© 2015 Greenberg Traurig, LLP & Western Digital
All Rights Reserved
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Trademark Strategy
A trademark strategy has a significant and direct impact on
the growth of your company.
Strategy is paramount, requiring offensive and defensive
positioning and proactive measures in order to protect and
monetize critical brand assets on a global scale.
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Trademark Strategy
The ultimate goal is to have a global TM strategy that fits your
company, furthers its business goals, and promotes its marketing
objectives and sensitivities.
Streamlined trademark processes will allow you to:
● act quickly and aggressively when challenged with high-stakes threats
● react to, and get ahead of, significant changes in IP laws throughout the
world
When significant industry changes occur, consider conducting a
review of your current portfolio and filing and enforcement policies.
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Best/Recommended Practices
There are some sacred cows but most
details of the portfolio planning (from
clearance onward) depend heavily on the
specific company.
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Audit: Periodic Assessment of the Portfolio
Strategic assessment of what marks to register
May need different strategy for different marks:
• House/corporate marks
• May need broader country & class coverage
• Coordinate with enforcement activity
Product or service marks
Product or technology features
Taglines/slogans
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Audit: Periodic Assessment of the Portfolio
Strategic registration of marks
• Classes of goods
• Emerging markets/growth of income
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Audit: Periodic Assessment of the portfolio
Get a realistic picture of the current state of the portfolio
 Identify holes in coverage (in certain countries, classes,
etc.)
 Identify extent of rights of the trademark assets
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Portfolio Strategy
Factors influencing registration
• Strength of marks
 Is the mark truly a source identifier?
 Descriptive mark
 How many other registrations for similar marks?
• Opinion of local counsel of likelihood of
registration
• How long mark will be used
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Portfolio Strategy
Ownership
 integrating acquired marks into portfolio
 update records in all countries
• Chain of title clean-up (address and
ownership)
• Security interests
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Portfolio Strategy
Quality Control
 Sufficient diligence on potential licensees
 QC Provisions and Standards
o External QC: Reviewing Marketing Materials,
Monitoring Licensee's activities
o Internal QC: Training Employees on Usage of Brand,
Social Media, TM and ® Symbols
Avoid letting marks becoming generic
Police third party uses and competitors using similar mark.
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International Filing Strategies
When to run a clearance search
• Stakeholders have narrowed down potential list to 5 or 6
choices
 Consider strength of marks
 Do initial free search on public search engines (Google, Yahoo!,
Bing)
• Lead time depends on how many countries and whether
searches are conducted in-house
 May also want to consider time to consult with local counsel on
questionable hits and to obtain risk assessment
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International Filing Strategies
Where to run a clearance search
• Company headquarters
• Countries where product or packaging will be manufactured or
assembled
• Countries where sales or distribution anticipated
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International Filing Strategies
Where to register worldwide
• Factors to consider
 Countries where company manufactures, prints or
assembles
 Countries where company sells – brick & mortar and
online
 Countries where company provides customer service or
has return centers
 Countries which generate revenue
• Consider historic and forecasted revenue 3-5 years out
• Revenue level depends on the company
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International Filing Strategies
Consider Counterfeit markets
• Where are counterfeits manufactured
• Where are counterfeits sold (online, brick & mortar)
• Customs recordation strategy
• Countries bordering counterfeit markets
• Transit or distribution points for counterfeit products
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Enforcement
• A comprehensive strategy will help align the many moving
parts of the portfolio.
• Early and constant vigilance is key.
 It is very hard to go back and clean up a register/diluted
use of a mark.
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Enforcement: Defensive Strategies
 There are enormous benefits to prompt registration of
important marks in strategic markets.
 Recommended practices include the use of
TM and ® symbols as much as practicable.
 Use best efforts to maintain use of underlying marks,
and cure non-use where it exists.
 Strive to take care of all deadlines as early as possible.
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Enforcement: Defensive Strategies
 Try to consistently monitor the relevant marketplaces
(online and off).
 Use watch services to monitor marks in your space
(protect against dilution).
 Monitor the use of advertising, internet presence and
marketing, social media and networks to
support/protect your marks.
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Enforcement: Offensive Strategies
 Appeal PTO refusals
 Oppose/cancel applications and registrations
 Cease and desist demand letters
• Write for the internet
o Be prepared for the “Trademark Bully” label
o Be prepared for letter to be posted online
o Strategize about potential social media pushback
• Different strategy for different offenders
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Enforcement: Offensive Strategies
 Educate your consumers, resellers, developers, vendors,
distributors, manufactures, etc.
• Genuine products and legitimate uses of the mark
• Use guidelines how to use/misuse the marks
• No “friendly fire” – no selective enforcement of a
mark
• Use your sales, IT, marketing, customer service folks
o They are on the front lines and can help spot
infringers misusing or diluting your brands
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Enforcement: Offensive Strategies
 Watch notices
 Use advertising, internet marketing, social networks to
enforce and further monetize your brands
o Audit of use/misuse of marks on the internet and
in website content
o Use domain name watch services
o Use online brand protection services or hire in-
house specialist
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Enforcement: Offensive Strategies
Serious challenges to trademark clearance and
enforcement in the evolving world of advertising,
ecommerce and social media
Set up internal review processes in App store
marketplaces
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Thank you!
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