SOARIN OVER YOUR TRADEMARKS: KEYS TO MONETIZING YOUR BRANDS

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1 SOARIN OVER YOUR TRADEMARKS: KEYS TO MONETIZING YOUR BRANDS Susan M. Natland Patricia A. Conner Jeffrey Van Hoosear April 24, 2012 Disney s Grand Californian Hotel

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 2

3 REACH OUT TO STAKEHOLDERS Marketing Execs Sales Designers Domain Name? 3

4 IDENTIFY YOUR BRANDS Identify current and future brands Type Traditional Non-traditional Value Core Secondary Shelf life? Youth Against establishment 4

5 IDENTIFY YOUR PRODUCTS & SERVICES What are the relevant products, services, business lines? Current Future Any Acquisitions in the works? Potential license deals? 5

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? Manufacture? License? Counterfeiting? MEXICO U.S. INDIA BRAZIL EUROPE JAPAN CANADA CHINA 6

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? 7

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 8

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 9

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 10

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 11

12 EXPLOITING YOUR BRANDS 12

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 13

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!) 14

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 15

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? 16

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 17

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 18

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!! 19

20 QUESTIONS? YOUR BRAND HERE! 20

21 SUSAN M. NATLAND JEFFREY VAN HOOSEAR PATRICIA A. CONNER (949) (949) (949)