A trademark audit is at its most basic an asset inventory. But instead of tracking down and counting blood pressure monitors, otoscopes and scalpels you are tracking down words, phrases and pictures (logos) that you are using to promote your business to the public. And instead of checking and noting the condition of these items and culling out those that are beyond repair or use, your trademark auditor will review how the marks are being used to be sure such use is proper and all of these marks have been searched and cleared for use. It may also find that you are using marks that no longer conform to your desired public image or Mission Statement and that such marks need to be retired.
A trademark audit should do more than just look at the marks that the business believes it owns. A trademark audit should look at all of the company’s materials that are presented to the public and review them for any words, phrases and pictures (logos) that are used to identify your company’s goods and services. A trademark audit will often identify terms that the auditor views as trademarks that the company may not realize it is using. You might wonder – how can a company not know it is using a particular trademark? This could be because marketing designed and distributed a flyer or brochure but did not review the terms being used – possibly due to a short deadline or perhaps they thought it would only be used “once”. The audit may also identify terms that have been used for a long time that have simply fallen through the cracks.
Historically, trademark practitioners would ask their clients to go through their offices, stores, waiting rooms and marketing departments and collect all advertising and marketing materials, product information, labels, packaging, etc. and ship it off to trademark counsel. With the advent of websites and on-line advertising, it is also necessary to provide the auditor with a list of all websites and files that include all electronic materials. The auditor reviews all of these materials for the purpose of creating a list of words, phrases and pictures (logos) used to promote your business, its goods and services.
This list can then be compared to a list of registered marks owned by your company, and then the auditor can develop a list of marks to be further reviewed. What should then be done with this secondary list of marks will be explored in our post next week.
A trademark audit should also include a review of the words, phrases and pictures (logos) that are being used to be sure that the trademarks are being properly used (See, Branding 101: Proper Use of a Trademark – It’s All In the Grammar). Similarly, if it is found that you are using trademarks owned by other entities, it should be determined if such use is proper. We will explore the proper use of another’s trademark in a future post.
Our Insight. Your Advantage. Over the next few weeks, we will give you a more in-depth look at what in involved in trademark audit, why it is important to have such an audit conducted on a regular basis and how a trademark audit can be used as a first step in the development of a trademark usage manual. Stay tuned!
Here are the other installments in this series: