January is a good time to make plans for the year ahead including reviewing your brand asset protection. When you are busy running a business, it’s easy to overlook key “brand life events” that can trigger a need to update trademark and brand asset protection.
In this post, I’ll review 10 Brand Life events to remind you when it’s time to review your brand asset protection and evaluate risks associated with these events.
1. New partners or investors
Investors always want to make certain your IP assets are well protected. These assets include trademarks as a brand asset. When new partners or investors come on board, there’s also a need to document that relationship with contracts. There may also be a need to form a new entity for the investors or with partners and address how that impacts brand assets.
2. Buying a company
Did you merge with or buy another company? In either case, there are typically IP assets that need to be transferred including transfers of ownership in government offices where these assets are registered.
3. New Distributors, online or off
New distributors are one of the most overlooked brand life events. Distribution agreements require specific language governing use of brand assets by distributors. It’s imperative to have strong provisions in distribution agreements, and even more so when the distributors are in foreign countries.
4. Overseas Expansion
Whether you have distributors overseas, or are selling directly into overseas markets via online sales of goods or services, international sales are a trigger to file for international trademark registrations. Here’s an article to help you understand How International Trademark Registration Works
5. Manufacturing in China
Overseas manufacturing is more common that ever. Trademark registration in China is not expensive, and can be vital to protect US brands from unauthorized Chinese knock offs. On sites like Alibaba, E bay and Amazon, many brand owners end up fighting for their lives because of fake goods. A strong registration plan can help.
6. Online trainings and courses
Our clients include coaches, and online trainings and/or certification courses. Graduates of training courses involving specialized skills are often granted a license to use a trademark indicating they are certified in a particular program. Written license agreements with graduates who will use the brand assets is required. Also, when there are a number of licensees from overseas, international trademark registration becomes imperative. It’s all too common that foreign graduates rush out to register in their home territory, which can block all ownership rights of the brand owner in that territory.
7. New Products or Expansion
The most common brand life event is the launch of a branded product or service with a new trademark and new brand asset. Our clients normally let us know about a new brand asset. However, clients sometimes fail to think about the need to extend protection to newer offerings of products or services. Registrations cover only those goods and services contained in existing registrations and don’t cover expanded offerings.
8. New Websites & Marketing
9. Non-traditional trademarks
While we tend to think only of words and logos as brand assets, these are only two types of marks that can be registered. Unique shapes and ornamentation on products, and even color can be some of the strongest brand assets of all. Some common examples: the Adidas shoe stripes, the Apple Store design, the star on the Mont Blanc pen, or the red sole of the Christian Louboutin shoes. These non-traditional marks can a valuable brand asset when it comes to tools needed to deal with fakes goods. Does your product or service have any of these?
10. Maintaining Registrations
Registrations need routine maintenance like many other assets. In the life of a US registration, there are two key time frames that require attention. Between years 5-6 following the date of registration proof of continued sales and use is required, failing which the registration will be cancelled. The same is true before the end of year 10, to renew the mark and continue it in force for another 10 years. Even with our wonderful reminder system, clients sometimes fail to act in time and are then required to file all over again!
Feel free to contact us to arrange a complimentary review of your brand assets at 888-BA3-5350.