Soarin' Over Your Trademarks - Keys to Monetizing Your Brands

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This presentation titled "Soarin' Over Your Trademarks - Keys to Monetizing Your Brands" was given by Knobbe Martens' Partners Susan M. Natland and Jeffrey Van Hoosear to a group of in-house counsel attending the American Corporate Counsel (ACC) SoCal Double Header.

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Soarin' Over Your Trademarks - Keys to Monetizing Your Brands

  1. 1. SOARIN’ OVER YOUR TRADEMARKS: April 24, 2012 KEYS TO MONETIZING YOUR BRANDS Disney’s Grand Californian Hotel Susan M. Natland • Patricia A. Conner • Jeffrey Van HoosearThe recipient may only view this work. No other right or license is granted.
  2. 2. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  3. 3. REACH OUT TO STAKEHOLDERS Marketing Execs Sales DesignersDomain Name ?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
  4. 4. IDENTIFY YOUR BRANDS • Identify current and future brands – Type • Traditional • Non-traditional – Value • Core • Secondary • Shelf life? Youth Against establishment© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  5. 5. IDENTIFY YOUR PRODUCTS & SERVICES • What are the relevant products, services, business lines? – Current – Future – Any Acquisitions in the works? – Potential license deals?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  6. 6. IDENTIFY YOUR GEOGRAPHIC MARKETS • Identify current and future geographic markets with estimated entry date and estimated yearly revenue • Where do you currently and plan to… – Sell? – Employees? MEXICO U.S. BRAZIL JAPAN INDIA – Manufacture? EUROPE CHINA CANADA – License? – Counterfeiting?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  7. 7. 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?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
  8. 8. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  9. 9. 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 Bags Clothing Sunglasses Watches© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  10. 10. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  11. 11. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  12. 12. EXPLOITING YOUR BRANDS© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  13. 13. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  14. 14. 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!)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
  15. 15. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  16. 16. 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?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  17. 17. 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© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  18. 18. 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…© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  19. 19. 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!!© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19
  20. 20. QUESTIONS? YOUR BRAND HERE!© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
  21. 21. Susan.Natland@knobbe.comSUSAN M. NATLAND (949) 721-2909 Jeffrey.VanHoosear@Knobbe.comJEFFREY VAN HOOSEAR (949) 721-5274PATRICIA A. CONNER Pconner@Volcom.com (949) 999-6388

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