Five Reasons to Do a Trademark Audit

In a recent interview, in-house counsel for a major company stated that what keeps him awake at night is wondering what he has missed ' what might happen that he has not foreseen. Conducting regular trademark audits (as well as audits for other intellectual property assets such as patents) is the best way to prevent that scenario for brand assets.

A trademark audit, in the broad sense, is simply intended to focus attention on the existing and potential trademark resources of a company. It can range from a yearly review managed internally to a full-blown comprehensive audit conducted by an outside law firm. A trademark audit allows a company to review, manage and fully exploit the value of trademark assets. It will generally include review and analysis of:

• the existing trademark portfolio, including federal and state registrations and applications and the status of internet domain names;
• strategic plans and business goals, with particular attention to new products or services or extensions of product lines;
• internal procedures to identify and protect marks;
• potential third-party infringements;
• enforcement activities; and
• identification of licensing opportunities.

Many companies choose an initial comprehensive trademark audit conducted by or with the assistance of outside counsel with a view toward managing the audit functions internally once an audit program is put in place. The key to successful management of trademark assets is simple ' the company must shift from a reactive position to devote singular attention to its trademark portfolio on a systematic basis.